How to Apply for a trademark (part two)

Welcome to our seventh blog in the How to Make Money with Trademarks series. In our last blog, How to Apply for a Trademark, we talked about the actual questions that you will need to be prepared to answer when completing your federal trademark application. In this blog, we will continue our discussion on How to Apply for a Trademark by sharing more questions that you will see within your federal trademark application.

How to Apply for a Trademark

In our last post, we discussed the following elements to the federal trademark application:

  • Ownership of the mark
  • Contact Information
  • Information regarding the Mark

In this post, we will talk about three more questions you will need to be prepared to answer in your trademark application.

What is the Filing Basis? 

Your federal trademark application will require that you specify your “filing basis.” The filing basis let’s you tell the government if you are filing to register a mark that you are currently using in commerce or for a mark that you plan to use in the future. For example, if you already have a website and are actively promoting your goods and services, you would likely want to list your filing basis as “in use” since you are already using the mark. On the other hand, if you are registering a mark that you haven’t started using yet, you would want to use an “intent to use” filing basis.

Keep in mind that it is not enough to say that you are currently using the mark. You will have to provide the government with actual dates as well as an example, or specimen, of your actual use of the mark in the application. We will discuss the requirements for a specimen further in this article.

How are you using the Mark? 

Filing to register your trademark with the federal government does not give you unfettered rights to use your mark (name, logo or slogan) in any way that you want. Instead, you have to file for ownership of the mark within different “categories” which the government refers to as international classes. In your federal trademark application, you will need to list specifically which goods and services you are using (or plan to use if it is an intent to use application) with your brand.

This step is very important because you will not be able to go back and add additional goods and services unless you pay an additional fee. Whenever we are meeting with clients, our firm undergoes a detailed legal analysis to determine exactly which international classes would provide our clients with maximum legal protection based on their current and anticipated use of their mark.

What is your Specimen?

One of the last components to your federal trademark application will be submitting a specimen for the government to review with your application. A specimen is an actual showcase of the mark being used “in commerce.” A specimen cannot simply be a digital rendering or mock-up. For example, a t-shirt company would need to submit an image of an actual shirt featuring the logo of the brand that they are trying to register. A 3D image or rendering of the photo in Adobe Photoshop likely would not be sufficient. In the event that you are filing an “in use” application, the government wants to see an example of how you are actually using your mark in commerce as proof in support of your claim for ownership.

Now that we understand what applying for a federal trademark entails, we will continue our series by discussing how to license your trademark in our next blog.

Applying for a Trademark

There are several things you should know before applying for a trademark. We’re in the fifth installation of our How to Make Money with Trademarks series. Our first article was How to Make Money with Trademarks.  The second article in our series was What is a Trademark & How to Make Money with Them. In the third article we discussed How to Create a Trademark that Makes Money. In the fourth article, we learned How to Own a Trademark. Now, we’re going to talk about things you should know when applying for a trademark in order to protect your legal rights in the name, logo or slogan you created.

The 3 Types of Federal Trademark Applications

What is the TEAS Plus application?

Generally speaking, you will have the option of using one of three different types of applications when you apply for a federal trademark. The first type of application we will discuss is the TEAS Plus Application. This application is the least expensive application. In fact, the filing fee was recently reduced to $225 (it used to be $275). The reason this application is less expensive is because you have less options when it comes to describing how you will use your mark. For example,  both applications require that you describe the goods and services that you are currently using in association with your mark. However, the TEAS Plus Application only lets you choose from the goods and services that are predefined in the government’s Acceptable Identification of Goods and Services Manual (ID Manual) instead of being able to create your own descriptions as with the TEAS Regular application.

There are also a few other requirements in order to get the discounted rate due to the TEAS Plus application which are:

  1. Your application must be complete when you file it since most of the fields in the TEAS Plus application are considered mandatory.
  2. You have to identify the goods and services associated with your mark using the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual).
  3. You have to pay for all of the international classes associated with your mark when you file the application.
  4. You must file the application as well as any future responses electronically using TEAS.
  5. You must consent to e-mail communication and submit a working e-mail address.

What is the TEAS Reduced Fee (RF) Application?

The second type of federal trademark application is the TEAS Reduced Fee (RF Application). The TEAS RF is similar to the TEAS PLUS application but has less requirements:

  1. You must file the application as well as any future responses electronically using TEAS.
  2. You must consent to e-mail communication and submit a working e-mail address.

In exchange for meeting these two requirements, the filing fee for the TEAS RF application is only $275. It is a little more than the TEAS PLUS application but not as much as the TEAS Regular.

What is the TEAS Regular application?

The third and final type of federal trademark application is the TEAS Regular application. The TEAS Regular application is the most expensive federal trademark application of the three applications. The filing fee for the TEAS Regular application is $325. The reason this federal trademark application is the most expensive application is because it gives the applicant the most flexibility as it relates to their filing. The TEAS Regular is the most flexible because it allows the applicant to get a filing date and submit an application while meeting the following minimal requirements under 37 C.F.R. §2.21(a):

  • The applicant must include their name and address
  • The applicant must submit a clear drawing of the mark
  • The applicant must list the goods and services associated with the mark
  • The applicant must submit a filing fee for at least one class of goods or services.

Although we always recommend that our clients submit as much information as possible in order to avoid any delays in the processing of their application, the TEAS Regular application is a good option for individuals that want to at least get an early filing date even though they may not have everything else together.

Now that we understand the three different types of federal trademark applications, we will continue by discussing the components of the Federal Trademark Application and how to successfully apply for a trademark in our new article How to Apply for a Trademark.

 

How to Apply for a Trademark (part one)

Welcome to the sixth blog in our How to Make Money with Trademarks series. In our last blog, Applying for a Trademark, we talked about the three different types of federal trademark applications and the requirements of each. Now that you understand the different types of applications you can use to apply for a trademark, we’re going to dive into how to apply for a trademark.

The government has the tough job of reviewing trademark applications and deciding if they should approve the registrations. The way that they decide if they will approve the application is by asking questions in the trademark application. They assign an examining attorney to your file and they review the responses to see if your application meets the criteria that the law requires for trademark registration.

Trademark Application Questions

Let’s talk about some of the questions that you will have to answer within your trademark application:

Who Owns the Trademark?

One of the first things the government will want to know is who is the owner of the mark. The mark can be an individual, several individuals or even a business. Whenever we are filing a federal trademark application for a client, one of the first things that we do when discussing the application is to conduct a legal analysis to let our clients know if it is in their best interests to own the mark (e.g., the name, logo or phrase they want to register) as an individual or for their business itself to own the mark. In some cases, listing yourself as the owner may expose you to more liability. In other cases, there may be tax benefits for letting your business own the name or it may increase the value of the company when you sell. Either way, we recommend having an attorney conduct a thorough analysis of your individual situation before you make this decision.

How Can They Contact You?

The government needs to know the best way to reach you if and when they have questions. An important part of the review process is that the government will assign an examining attorney to your file that will oftentimes have additional questions which need a response by a specific deadline or you risk losing your application altogether. Some of the applications will offer you a discounted rate if you agree to receive and submit all of your communications via e-mail. You can learn more about the 3 types of trademark applications by reading our blog Applying for a Trademark. Either way, you will need to provide contact information that you check regularly so that the government can communicate with you. Another benefit that our clients get when hiring us to do their trademarks is that all of the communications from the government come directly to our office. We always forward them to our clients so that they have a copy. However, this makes us responsible for receiving and responding to them by the deadlines and keeps our clients from having to worry about missing an important e-mail from the government and having their trademark application terminated.

What is the Mark?

You get to chose between registering your mark as a “word or phrase” or by registering an actual illustration (logo, etc.) representing the mark. Most people immediately want to register the logo of their brand. However, there may be drawbacks to doing this because sometimes protecting the words will allow you to have greater and broader legal rights in association with the mark

These are just a few of the questions you will need to answer in your federal trademark application. Check out our next blog to learn about the remaining items you will need to be prepared to address within your application.

Contact Us

If you have additional questions or concerns about the federal trademark application process, or if you would like to schedule a free consultation to learn more about owning your name, logo or slogan, please feel free to contact us.

How to Own A Trademark

Have you ever wondered how to own a trademark? This is the fourth blog within our How to Make Money with Trademarks series. In the first article, we talked about  What is a Trademark & How to Make Money with Them. In the second article we discussed How to Create a Trademark that Makes Money. Now, we’re going to talk about how to legally own the rights to the money-making trademark that you’ve created.

What are Common Law Trademark Rights?

Let’s clear one thing up. Technically, you don’t have to file with the government in order to own the legal rights to a mark (e.g., name, slogan or logo) that you created. You simply need to have been the first person to begin using the mark “in commerce” to acquire ownership of the mark.  These rights are called “common law” trademark rights.

Why Should I Apply for a Trademark?

You’re probably wondering why you should even bother investing your resources hiring a trademark attorney to apply for a federal trademark if the law will automatically protect your ownership in the name. Well, the answer to this question is simple – registering your federal trademark gives you certain legal benefits that you won’t have otherwise.

One of the main reasons you may want to strongly consider registering your name as a federal trademark is that relying on common law rights may not be sufficient to prove your ownership. For example, someone else can hear the name and claim that they created it and started using it before you did. At this point, you may have to sue them in court in order to enforce your “common law” ownership rights. However, without having a properly registered trademark, it may be time consuming and expensive to hire an attorney and provide enough evidence to prove that you were in fact the actual owner.

Instead, you may be able to save yourself money and time by investing in a federal trademark up front. Here are some of the benefits.

What are the Benefits to Registering a Trademark?

  1. Ownership. One of the benefits of having a federal trademark is that if someone wants to use your trademark, they will need to ask for your permission (unless they want to use it for a reason covered by the “Fair Use Doctrine” which is a different topic). This means that you can feel confident investing in building a brand around your name (website, social media accounts, business cards, merchandise, etc.) knowing that the law presumes that you are the legal owner of the name.
  2. Make Money Licensing the Name. Owning a federal trademark also means that you can charge people for the right to use the name (license). This means that if an apparel company wants to use a slogan that you own the federal trademark for, you can charge them a percentage of their gross annual revenue each year for a license to use your slogan on their t-shirts, hoodies, and other merchandise. Not only does licensing build awareness for your brand, it also generates income for you!
  3. Make Money from Lawsuits. When you are the legal owner of a federal trademark, you also have the right to legally sue individuals that use your trademark without your permission (trademark infringement) for money damages.
  4. Make Money Selling Your Trademark.  If you have ever considered selling your business or company, one of the first things business brokers will advise you is that you need to make sure that you own all of the intellectual property (trademarks, logos, slogans, trade secrets, etc.) associated with your business. Otherwise, investors may not want to by something that they feel they may be sued later for since your trademark was never registered.
  5. Make Money Internationally. Another benefit to owning a federal trademark in the U.S. is that it gives you a legal basis (in some instances) to apply to own the trademark in other territories and countries. This allows you to also own the name abroad and make money licensing the name in other countries.
  6. The Right to Use the “®”. When you legally register your federal trademark, you can announce to the world that you are the registered owner, and further protect your legal interest in the mark, by using the the “Circle-R” or “®” registered trademark symbol.  This symbol offers legitimacy to your brand and puts others on notice that you are the registered owner of the mark. The federal government also has penalties for individuals that use the symbol when they are not a registered trademark owner.

These are just a few of the reasons why it may be beneficial for you to register your federal trademark. Check out the next blog on Applying for a Trademark within our How to Make Money with Trademarks Series to learn the steps you need to take in order to legally register your trademark.

How to Create a Trademark that Makes Money

This is the third blog in our How to Make Money with Trademarks series. In our previous blog, What is a Trademark & How to Make Money with Them, we talked about the definition of trademarks, how they are different from patents and copyrights, as well as the four-step process to making money with trademarks. In this post, we will dive into the details of the first step to making money with trademarks which is Creating a Money-Making Trademark.

How to Create a Money Making Trademark

If you visit the United States Patent and Trademark office website, you will see thousands of listings for trademarks. Some of these trademarks represent logos, slogans, phrases or company names for all types of products and services. All of them may be trademarks – but not all of them are money making trademark. If you want to create a money-making trademark, you will need to make sure it has two things:

    1. It must be distinctive
    2. It must be marketable

Let’s talk about the first component of a money making trademark which is distinctiveness. A distinct trademark is one that is different. A trademark that stands out. The best and most distinctive trademarks are words or phrases that you create yourself. Distinctiveness is important because other companies and individuals may not be willing to pay money to license or purchase your trademark if it is not distinctive – or does not stand out – from other trademarks in the marketplace. Distinctiveness is important because the more distinctive your trademark is, the more likely it is that you will be able to legally own your trademark. This is important because if you pick a phrase, word or logo that is very common, the government may not be willing to let you register and own the mark. If you are unable to prove that you are the legal owner of the mark and that you have a registered federal trademark, it may be very challenging to sell or license the trademark to someone else. They will want to know that you actually own the mark and have the right to do business regarding the mark before they invest money in the mark.

How to Create a Distinctive Trademark

So, how can you make sure that your mark is distinctive? You can do the following things:

  • Try to think of a name or phrase that is catchy.
  • Try using an alternative spelling
  • Try to invent a word altogether (e.g., Twitter, Pinterist)
  • Try thinking of a name that describes the goods or services in an unconventional way (e.g., Paperless Post)

How to Know if Your Trademark is Distinctive Enough

Not sure if your mark is distinctive enough? Create your own focus group. A focus group is simply a group of people that represent your target market that can give you their feedback and insight before you spend a lot of money on a particular mark or brand. You can accomplish this by simply asking a few close friends for their opinion as it relates to your mark. Another way to know if your mark is distinctive enough is to see if anyone else is using your mark or something similar. You want to know if anyone else has ever used it or is currently using it because this will let you know if it is really as unique as you think it is. We will get into details about having a Comprehensive Name Search done by a trademark attorney before you begin spending heavily to register and own a trademark. However, a very simple way to at least start seeing if anyone else is using the name is by doing a Google Search for the phrase or names using quotations. Take a look at the results of your search to see if the mark is being used in a similar way with similar products and services as the ones you envisioned using it. If there are already a lot of results for the name or phrase, it may be best to try something else. The less search results relating to your name or slogan – the more distinctive your mark!

How to Know if Your Trademark is Marketable

The last aspect to creating a money making trademark is to come up with a trademark that is marketable. You can invent the most iconic word or phrase, but if there is not a market that would be interested in licensing or buying your trademark – it may not be a “money maker.” The way to create a marketable trademark is to think of your intended buyer or audience when creating it. Instead of just creating random words or phrases and hoping someone is willing to license them, try to focus on one specific market or industry that you would want to potentially pitch your trademark to. It helps if it is an industry that traditionally spends a lot on branding, marketing and advertising. An easy way to identify these types of industries as well as specific companies is to make a list of the current companies that are advertising heavily via social media, television commercials, etc.

Now that we understand how to create a marketable trademark, check out our next post on How to Own A Trademark.

 

What is a Trademark & How to Make Money with Them

Thanks for checking out the second blog in our How to Make Money with Trademarks series. In this blog, we will learn exactly what is a trademark and discuss the steps to making money with them.

What is a Trademark?

A common question that we hear asked is what is a trademark? It’s hard to learn how to make money from trademarks if you don’t fully understand what they are. To put it simply, a trademark is a mark that is used to represent a brand. A trademark lets the public know that one brand is different from other brands in the market. A trademark is sometimes called a “service mark” when it is used to identify a service instead of a product. A trademark can be a word, a name, symbol, logo, phrase or several of these things all combined. The most important thing to know is that a trademark differentiates a brand from other providers of similar offerings in the marketplace.

What is the difference between Trademarks and Copyrights?

How do I know if I have created a trademark or a copyright? Generally speaking, copyrights are used to protect literary and artistic works such as songs (music, lyrics, studio recordings, live performances), artwork, poems, books and manuscripts, etc. while trademarks are used to own a company name, logo for your business, or slogan or phrase that you use in the marketplace to identify your business.

What is the difference between Trademarks and Patents?

A patent is used to legally protect an invention. There are three different types of patents: design patents, utility patents and plant patents. An example of something you would need a patent application for would be if you invented a new pharmaceutical drug or a mechanical device. Patents are beyond the scope of this blog but are helpful ways to legally protect your inventions.

How to make money from Trademarks

Now that we understand what a trademark is and how it is different from copyrights and patents, let’s talk about what we need to do in order to make money from them. Many of the largest brands and companies have trademarks that are worth millions. How do they do it? Here is our proprietary three-step process that we help our clients with in order to position them to make money from their trademarks:

  1. Create a Money-Making Trademark
  2. Legally Own the Trademark
  3. Market Your Trademark
  4. License Your Trademark & Make Money

Step One: Create a Money-Making Trademark

The first topic that we will cover will be how to create a money-making trademark. There is a difference between trademarks that do not have value in the marketplace versus trademarks that are able to command substantial royalty income when licensed. In the future posts in this series, we will discuss exactly how you can create a money making trademark.

Step Two: Legally Own the Trademark

This is an important step that unfortunately many people skip. In order to command top dollar for your trademark, you need to legally own it. Companies will not want to license something that may be subject to a trademark infringement lawsuit. The future posts in this series will go into detail regarding the steps you need to take to legally own your trademark in order to increase its value.

Step Three: Market Your Trademark

Once you own the trademark, it is time to get the word out that it is available to be licensed. I will discuss various strategies you can use that are low-cost and will not take much time, but that could provide your trademark with the attention it needs to attract companies and individuals that may want to license your trademark.

Step Four: License Your Trademark & Make Money

In this section of the blog series, I will go into detail as to how to structure licensing deals to make money from your trademarks. We will first discuss what licensing means and how it works. We will also talk about the common terms you will need to negotiate and how to negotiate them. We will address how much you should charge, how often you should get paid as well as other clauses and details that need to be included in order to legally protect you and your brand when you’re making money licensing your trademarks. The goal is to show you how to create a passive stream of income entirely generated by the creative trademarks you create!

Now that we understand the definition of a trademark and the blueprint for making money with trademarks, check out our next blog post on How to Create a Trademark that Makes Money!

 

How to Make Money with Trademarks (Series)

Welcome to our new legal series on how to make money using trademarks. That’s right. Trademarks can be used to make you more money with minimal effort. Why? Because they don’t cost you anything to create and can be turned into a money-making machine with very little investment. Most of us have thought of a catchy name, slogan or phrase but did not know how to monetize it and use it to make money. I’m sure you’ve thought of the “KEEP CALM AND…” brand before and thought to yourself that you could have thought of that.

Is it really possible to make real money with trademarks?

Of course it is! You can ask the owner of the phrase “Let’s get Ready to Rumble” who has made well over $400 million in licensing revenue according to ABC. And there are countless other companies, brands, and entrepreneurs that profit from trademarks. In fact, the internet has made it easier than ever to market your trademarks in order to make money from them. Now, I’m not promising your name will earn you millions. What I am saying is that with the proper information and effort, you too can legally protect and market your trademarks in order to make money.

So, why don’t more people make money from their trademarks?

Well, if they’re so easy to do, why aren’t we all millionaires from our trademarks? The answer to that question is really quite simple. For a very long time, trademark attorneys have been the keepers or guardians of information regarding trademarks. In order to register trademarks and legally protect them, you would have to pay thousands of dollars at a high-rise law firm. For those that could afford to register and legally protect their trademark, they were still missing the critical information regarding how to make money from their trademarks once they owned them.

Our Trademark Series

Our firm has decided to do something different. We are going to share practical steps to build a business around your trademarks free of charge. We are going to give you steps that are easy to understand in order to help you turn your creative words and phrases into profitable businesses.

In this series, we’re going to discuss several things:

  1. What is a trademark and how to make money with trademarks?
  2. How to create a trademark that makes money
  3. How to own a trademark
  4. Applying for a trademark
  5. How to apply for a trademark (part one)
  6. How to apply for a trademark (part two)
  7. How to market your trademark for big bucks
  8. How to license a trademark

This legal series is completely free. All I ask is that if you enjoy it, please share it on social media so that it can help someone else.

So, let’s get started!

Check out our second blog post in the series What is a Trademark and How to Make Money with Them.