How to Register Your Trademark

What does it really take to register a trademark? Tune in for an overview of the entire trademark registration process from choosing what mark to register to getting that shiny gold-sealed registration certificate.

Registering a trademark is the only way to truly own your brand. We're running two trademark specials this Black Friday! Preview our Black Friday deals here.

Key Takeaways

• The trademark process takes an average of 13 months. If getting a registered trademark is one of your 2023 goals, jump on it now!
• Choosing classes and writing class descriptions is key to make sure your registration actually protects your trademark for the type of services you offer
• Prioritize your trademarks by registering the one thing you want people to think of when they think of your brand. For some people, it's their business name, but it also might be your course or your podcast!

Resources Mentioned

• Preview our Black Friday Sale (sale runs Nov. 21 - 28)
• Learn more about trademark registration services
  
• Follow Amy on Instagram @artfulcontracts

Next Steps

Thank you so much for listening! If you enjoyed this episode, please reach out and let me know by sending me a DM on Instagram @artfulcontracts

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• Leave a review on Apple Podcasts
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Episode Transcript

Happy November. It was 75 degrees this weekend. And I live in New England. I was in Maine and it was still 75 degrees the first weekend in November, and that has never happened as long as I can remember. So that was fun. So despite the weather, it is November, and that means Black Friday's coming up.

I'm gonna do a whole rundown next week on the podcast of all of the specials that we have going on. It's very exciting. I've never done Black Friday this way before, so I'm actually very excited for it. But two of the deals that we have are going to be around trademarks. So we're gonna talk about trademarks today. We're gonna do a little run through of the trademark process so you have an idea of what it takes. Let's do it.

Hey, I'm Amy Nessheim, licensed attorney for online business owners and founder of my own business, Artful Contracts. You're listening to Legal Made Easy, the show that makes the legal aspects of online business easy to understand and implement so you can grow your business with confidence knowing you've got it all covered. Let's dive in.

The first step of the trademark process is obviously choosing what you want to trademark. Usually when people come to me, they already have an idea of that, but sometimes I do help people prioritize. So first, if you have no idea what I'm talking about, a trademark is a symbol, a word, a phrase, something that people see when they see your brand that makes them think of you. It's a word, symbol, phrase, or design that identifies where a good or service is coming from. That's the definition.

So what that means is things you can trademark are things that identify your brand. So that might be your business name, your logo, your slogan, catchphrase, the name of a product that you have or a service that you have. So that might be a course name, the name of your podcast, the name of your signature service if you have a catchy fun name for that. There are so many options.

So the first step is obviously to choose what you want to register. And if that makes you think, wow, I have a million things I could register, here's my general advice that I give people when they are trying to choose or prioritize. What is the thing that you want to be known for? You want people to recognize you for. So for some people, that will be their business name because they have a bunch of products under their business name. For other people, and especially for personal brands, the thing that they register might actually be their signature course. So for example, James Wedmore registered James Wedmore's Business by Design because that's his signature course, and his the name of his business is just his name. So he didn't feel the need to register that.

Amy Porterfield did the same thing. Digital Course Academy is a trademark. Uh, she actually has a bunch, like all of her products are trademarks, but she doesn't have one for her name. Marie Forlio actually did register her trademark for her name, so that is also an option if you if you have maybe a common name that you want to make sure no one else is gonna do use for the same thing, then you might want to do that.

So think about the thing that you want when they hear this phrase, when they hear your business name, when they hear your course name, what is the number one thing you want people to think of when they think of you?

Once you've decided what mark you're going to register, the next step is going to be a trademark search. A search is the first step that we go through in my Done For You Trademark registration service. And it's super important because it tells us if, number one, if there's anyone else who's registered the same thing, or if there are, if there's anything that's similar that's registered, that's going to be a roadblock for your registration.

Then we can decide if it's worth moving forward. So that means what you're looking for is something that is going to be the same or very similar, similar enough that it is likely to be confusing for your audience. And also something that is in the same category of goods or services as you. So I talked a lot about this on the podcast last week about what's too similar and what to do, you know, if your search comes up with something that's close.

So I'm not going to dive into that a ton right now, but just we do the search so that we can find out basically green light, you're good to go. There's not going to be no problems with your application. Yellow light, there's something similar. And then we talk through strategies on what to do, and and that's what last week's episode was about. Or red light, you find out that someone else has already registered the exact same thing, and you can't move forward with the application, and you potentially have to rebrand everything.

So we do the search so that we're not wasting money and time on the application process because there's no reason to go forward with it if somebody else has already registered the same thing and you know that you're gonna be rejected, right?

The next step is choosing classes. Trademark registration only applies in the category of goods or services that you use your mark for. And this is the place that people get the most tripped up when they do their application on their own without any guidance, because classes are the way that they're organized is pretty, it's not intuitive. It's hard to figure out unless you have somebody experienced who's telling you, you know, this aspect of what you do is in this class, but this aspect of what you do is in this other class.

So, as an example of that, class 41 is for education and entertainment. So that means online courses, podcasts, your social content, YouTube content, all the things where you're teaching fall into that. But class 35 is the business consulting marketing services class. So if you are a digital marketer, you probably have things that fall under class 41 for education, teaching about marketing, and you probably also have things that fall under class 35 doing the marketing or consulting about marketing. So that would be like a business coach, an ads manager, a digital marketer of any kind would probably fall under both of those things, but that's not something you're necessarily gonna know without a little extra guidance.

As another example, digital download products are in a separate class from printed products, and that's something people mix up a lot. So if you sell printable things, that's gonna be in class nine, but if you sell printed things that you ship physically printed, then that's gonna be class 16. And if you do both, you have to register in both classes.

Now, just a little bit of clarification. When I say you have to register in certain classes, it's not mandatory that you register in all of the classes that could potentially apply to your business. You can prioritize, but what registering in a class does is you only get protection for your name in that class. If you do need to prioritize on classes and limit the number that you apply in, it does not mean that you can't do the other things in other classes. It just means that you won't have protection there. So someone else could register in a different class, potentially in the very class that you chose not to register in for the same name.

As an example, Dove for Chocolates registered in the food class, right? And Dove for soaps registered in the personal care products class. They both exist, they both have trademark registrations, and the reason for that is because they're in very different classes. So when you choose your classes, you want to basically the goal is to cover everything that you do, be as broad as possible so that you get the broadest protection without including anything that you don't do because that's not allowed.

You can only register in classes where you actually provide the good or service that the class is for. This also means that you have to be pretty clear on what your offering is, what your services are before you file your trademark application. You have to be able to describe your service really well, which I surprisingly, that's something I found that my clients have some trouble with. I'm trying to get clarity on what they actually do so I can get the right class, and they don't always have a good um, like overall outline of everything that they do. So it really helps to have a good understanding of what your services are and which services are the most important to your business if you're looking to prioritize. Because each class comes with a class fee.

The USPTO does their their filing fees based on the number of classes that you apply for, so it's not free to you to do all of them. It is a it does cost extra. The classes themselves, like the number 41 or 35, are pretty broad. So you also have to write a class description that describes everything you do within that class. And then you also have to be able to submit proof that you do everything that you described. And most of the time, this is just gonna be a screenshot of your landing page or your services page or your even just your home page or a sales page. It can even be a screenshot of a social post or of your podcast page on Apple Podcasts. It's not something super complicated or fancy, but it does have to exist. And your trademark has to be visible on that page.

So in choosing your classes, you have to actually do the thing that you say you're going that you're doing in the class, and then you have to actually be using your trademark in association with that thing that you said you're doing, and you have to be able to prove both of those things. All right, that's choosing classes, and honestly, it took me a long time to explain because it is probably the most complicated part of the process, because you can't you can't fix it. Once you submit the application, you can make the class descriptions more narrow, but you cannot make them more broad. So you're kind of stuck within the confines of whatever you wrote in the class descriptions. And like I said before, this is where a lot of people get tripped up if they write their own description because they don't know how important it is going into it on the front end, and they make it too narrow, and then you aren't covered in everything you do, you're only covered in one tiny piece.

All right, once you have your class descriptions and your specimens, the proof that you do the thing that you say that you do, then the application is easy. The application is the next step, and you basically just plug all of your info into the application system. It's an online application through the USPTO website. They have a portal for it. So you put all your info in there, your business entity, your address, your contact info, and then the mark information. So what is the trademark you want to protect? And then you input the classes and the specimens, and then you sign a statement that says, I swear that I'm using this right now.

So when you submit the application, you have a choice of I am using this currently, and here's the proof, or you can file what's called an intent to use application, which means that you're not using it currently, but you have a bona fide good faith intent to use it within the next year or so. So you can preemptively apply for a trademark, but you have to have a good faith intention to actually start using it.

Once the trademark is filed, there is a six to eight month waiting period. A lot of my clients right now are looking at nine-month waiting period before anything else happens. And what we're waiting for is for the USBTO to assign an attorney to examine the application. They're called an examining attorney or an office examiner. And they're just looking at the application, looking at the class descriptions, looking at your specimen and making sure that it's all good. They also do a search to make sure that no one else has already registered the name. And then they're gonna come back with once that time period goes by and they're assigned, nine months later, they're gonna come back with either approval of your application for the next phase or an office action. And an office action is just an official letter that says, I've identified X, Y, and Z problems with your application. Please fix them. And you have six months to respond to that letter.

In the majority of cases, you're going to get an office action. If you do it yourself without help from a lawyer, 99% of the time you're gonna get an office action. Most of them are very easy to resolve. They're super picky with application. So there's always generally there's always going to be something that they want fixed, or just like the wording of the class descriptions changed a little bit, and that it's all fixable for the most part. The only things that are difficult to overcome are if they decide that your mark, your trademark, is too close to someone else's, that is hard to overcome. But I can write like an argument, a legal argument that says here's why it's not too close. And the other thing is that's hard to overcome is if they decide that the mark is merely descriptive.

So if your trademark just describes the thing that you do, you can't get registered on the principal register, but you can still get registered on the supplemental register. So you get like a lower level of protection. So it's still worth doing. Um, but that you always try for the principal and sometimes they'll knock you down. So that's actually what Amy Porterfield had to do for Digital Course Academy. It's merely descriptive because the trademark literally describes what she sells. So she got an office action and got bumped down to the supplemental register.

Other than those two things, everything else is pretty easy to overcome and you just need to actually respond. And again, this is where most people who file without a lawyer or who or who file with a service that only covers the application, this is where they get stuck. They get the letter, they don't know what to do, and they just give up on it.

Once all office actions are resolved, the next phase is the publication phase. So your trademark and all the details associated with it are your classes and your specimens, are published in what's called the trademark gazette. It's like an online magazine that lists all of the pending applications. And anyone has 30 days from the date of publication to come forward and object to your mark. This is pretty rare unless you are like unless your name has similar features as a mark that of a huge company. Like if they have attorneys on payroll where their only job is to watch the trademark is at and object to anything that's remotely similar that comes through, which that that does happen, and then they object basically for the purpose of giving themselves more time to figure out if it's a problem, and it's usually not a problem, or you wouldn't have gotten through to that phase.

As an example, uh, I had a client whose last name is Ford, and she registered a trademark with her name in it. And I told her up front, Ford Motor Company files objections to every single mark that comes through with the word Ford or the name Ford in it. And most of them they drop because it's not relevant to cars or what they sell, but they file it just to get the extension of time. So I told her up front that that was a possibility. But that's basically the only time that I've seen issues at the publication stage.

So once those 30 days go by, anyone else, anyone, everyone in the world is deemed to have waived any objection to your mark being registered. So that means they are out of luck. If they find out later that you're registered, you got to it first, you win. Once the publication phase is over, then there's like four to six weeks of just processing time, and then you are registered. You get an email notification from the USPTO that your trademark has been registered, and they don't send paper copies of your registration anymore, but you can request one for free.

So I always do that for my clients and put in a frame because it's a really fun moment to be able to hang that on your wall. It's been a whole process, and it's just really exciting because at that point you own your brand and you can stop anyone else from using it in your classes. That whole process at the moment, the average is around 13-14 months from start to finish. And that's if you respond to office actions in a timely manner, and if you are not using not filing an intent-to-use application, an intent to use application takes a lot longer and also depends on when you're ready to file the proof that you're using the mark.

So it is a long process, a lot of it is just waiting, just patience and processing time. But that means if you're thinking about it, if it's one of your goals for 2023 to have a registered trademark, you gotta get on that now. Because we are basically at the deadline. You might be able, if you file now or if you start the process now, you might be able to get a trademark in January 2024 with the way that the timeline works. But don't let that discourage you because as soon as you file your application, you've saved your spot in line. You are before anyone else who files after you. They have to wait until your your application goes all the way through that process. If somebody else files an application for the same thing, they have to wait until you're either approved or finally rejected to get their mark done. So there is a, you know, whoever files first wins kind of thing.

So, like I mentioned at the beginning, we have two trademark specials going on for Black Friday. I'm actually increasing the price of my trade trademark registration services on December 1. But if you book your consult call with me before then, during Black Friday week for the month of December, you get locked in on the current 2022 price. And if you're not ready for the done for you service, I also have a course that walks you through the entire process with like over-the-shoulder videos. You actually watch me do an application.

I hand out industry secrets that other lawyers probably wouldn't want me to share. I walk you through writing class descriptions and choosing classes and doing the search and evaluating the search and filling out the application, grabbing your specimens, the entire process. So if you have a bunch of trademarks and it's gonna cost too much to have it done for you, or if you just aren't ready for the investment of the service, then that is a really good option, and that's gonna be on sale during Black Friday too.

So I have a Black Friday preview page up right now, and I'll put the link in the description so you can see all of our Black Friday deals. They don't start until November 21. The sale goes live on November 21, but you can take a look now and figure out you know your priorities, plan it out a little bit. So go check out that Black Friday page, it is linked in the show notes below. And thanks so much for listening. I'll see you next week.