Okay, day two VIP in the house.
Here we go.
All right, we got one, two, three, four, five.
I think a bunch of people are taking a bio break.
Sorry we went long, guys, but I could feel that people had certain really important issues
that I want to make sure I covered for you, so I figured I'd cover that.
And if you need to take a break or eat or whatever, feel free to do that while we're
jumping in.
Larissa, you said you want to mention something?
Go ahead.
As we were just talking to Kay and you mentioned, you have a referral network of lawyers.
Do you refer people out?
Yeah, but that's coming Thursday.
I'll mention that on Thursday.
Yeah, that's coming.
This is a VIP.
This is like family.
That's true.
The VIP does find out about everything before everybody else.
It's true.
So I do have a personal network.
I have attorneys literally in every country of the world, every area of law you can think
of.
I've been doing this 25 years.
And so I've picked up certain very powerful and connected friends in different places.
And so, yeah, that's one of the things that I actually offer.
And you'll see on Thursday, there's an offer I'll be dropping for everyone to help them
out.
And in that included is access to my network, which is invaluable.
I've had people that are one gentleman actually was manufactured in China.
And there was another company that took his trademark before he filed in China.
And they ended up starting to use the trademark and tried to extort him, basically blackmail
him because they knew who he was.
And so I had my guys out there handle the matter.
David Zhao was out there is a law firm who's one of the firms that I use and just demolished
the guy.
And he just gave up the trademark.
But, you know, if you don't have the right context, it could be very difficult.
So that's one of the things that I actually offer.
So let's see.
I think we can get started.
I think other people will jump in after because we went long.
So let me cover ownership of IP first.
And then I'm going to do the example of a trademark application filing.
OK, that's a lot of fun.
So everybody will learn every single part of a trademark application.
And and then I'll take a few questions.
OK, let's see.
Let me start out with.
Hold on one second.
Let me start out with ownership of IP.
OK.
So we're talking about trademarks right now and tomorrow we'll talk about copyrights and then we're going to go into other things.
We'll talk about patents.
Hey, Nathan, we'll talk about other things like that as well.
The question is, who should be holding the IP?
Right, who should be holding these assets?
Should it be you as an individual or should it be your company?
All right. Now, I touched base on this a little bit yesterday.
I just want to go in a little deeper here because this decision can be.
It can be pivotal to your entire company if you do this wrong.
So I want to make sure you understand this. OK, if if you're bringing a product forward.
And the product is in your name. And you're offering it for sale to other people.
When somebody does an analysis, let's say somebody gets hurt using the product.
Right. Which hopefully will never happen in front of you. But let's say it's something like that happens.
Then they look to see who do they sue?
When I look to see who they sue, they look to see who owns the IP.
That's typically the first thing that they'll look at. And so when that analysis, they'll say, oh, hold it.
It's owned by, you know, Ray Carter. Congratulations, Ray.
And so all of a sudden they come after Ray. But then Peter comes in and saves the day.
So, Ray, don't worry. So. But the whole point being that they they look to see who's named on the IP.
OK, so if you have it in the name of your company, then that doesn't guarantee that you're not going to get sued as well.
But it makes it hard to get at you because the company protects you.
Right. A well-formed company should protect you and your assets.
OK, so that's why a lot of people will sign a right title interest for trademarks, copyrights, patents, even trade secrets over to a company.
as to keep themselves separated, right?
But here's the problem is when you assign a right title
and interest, you lose ownership rights.
So now the company could do whatever they want with it.
Now, if it's a sole proprietorship, if it's just you,
then who cares, right?
Because you're the one who's going to make all the choices.
But if it's not just you, if there's a board,
you may have just given away your IP.
You may have just given away your trademarks, your patents,
you know, your trade secrets or your copyrights.
That could be a big deal.
So you want to figure that out now.
Do I want it in my name or not?
The other thing is that if it's in the name of a company,
all the expenses you're paying for a lawyer,
those are all business expenses, right?
So you're using the business account to pay for the lawyer
and then that's a business expense.
So you should be telling your accountant that
so they're reducing that from your actual, you know,
how much you're making in gross.
You need to look at all these factors beforehand.
So I just want to touch base on that
because a lot of times people hear about IP,
they get all excited
and then they keep it in their own name
or they send it out,
but they didn't kind of think of
what was their business plan?
What exactly am I trying to do?
What you could do is you can license the trademark
to your company, all right?
Or an example for Kay,
if Kay goes that route of doing a franchise,
she's gonna have the trademark in one entity's name,
then she's going to license it to all the other parties,
right, while maintaining ownership.
But when you license a trademark,
you have to make sure they're using it
the same way that you are.
They can't change it.
So if you have the trademark for Kleenex
and you license it to a paper company
and they go on, they start making toilet paper, right?
You're like, well, hold it, Kleenex is for tissues,
not for toilet paper.
It's messing up your brand.
They have to use it the same way
that you tell them to use it, right?
It's up to you to monitor that.
I just wanna touch base on that
before we start jumping into all this other stuff
because you're learning about IP.
Many of you are gonna start filing things.
Many of you are gonna start fixing things.
And then you're gonna think,
well, what do I do with it now?
Do I put it in my name or the company's name?
So just keep in mind, if you assign it to the company
and the company has ownership rights
and you don't have the decision rights for the company,
you may lose what you spent the money on.
So if you're gonna assign it to the company,
you might wanna use the company's assets
to pay for the lawyer.
Instead of using your own money to pay for the lawyer
and then assign it to the company,
use the company's money to pay for the lawyer
so it doesn't come out of your pocket directly, okay?
Especially if you're gonna assign it to the company.
So something to think about
as you're building your company up, right?
All right, and with that,
I'm gonna jump into a trademark application
because this is really important
and this is probably the biggest thing
that people register for
because they wanna know, well, what are all the parts?
So let me go through
all the parts of a trademark application.
We did, but we didn't do a registration.
So I'm gonna walk you through a filing.
Now, again, the reason why I'm showing you this
is so that you can get everything together
to give to your attorney,
not so you can go filing things on your own.
If you go choose to file things on your own,
that's up to you.
I never told you to do that.
And you, by all means,
should not be doing it for your clients.
I've had a few coaches call me up and say,
I don't feel right
about filing a trademark application for my clients.
I said, good, you shouldn't
because you just picked up all the liability
if anything is wrong.
Like if you as a coach file a trademark application
or you do a search for another party
and something's wrong,
they could potentially come after you.
You don't want that liability.
Trust me, I know as a lawyer.
I mean, I've been blessed not to run into those issues,
but you don't want this problem.
So let me walk you through
how a paralegal or an attorney
files a trademark application
so you understand all the parts.
Then you can put everything together
and present it to your attorney
and they can make sure everything's done right
before they file, okay?
All right, so I showed you earlier how to register
with the USPTO website.
I'm already registered.
So since I'm already registered,
I'm gonna go ahead and sign in,
but I'm gonna stop sharing for a second.
So nobody has my login information.
So hold on one second.
So Peter, just to clarify,
people have to create a login in order to just search it?
That's a definite?
Not to search the search is free to file, okay
Yeah, when you're filing they ask you to create an account
I don't think I've ever seen anybody try to file without having an account
I mean you want to have an account because you want to be able to check on things and you want security
Okay, let me wait till I get
Okay, I'm just gonna show you something that just happened. So everybody knows about this
So you see right here on the screen a two-step authentication
So when I put in my username and password it then sends you an email
So now I go over. Let me stop sharing again. I look at my email grab the code
Here's the code copy it put it back in here
Right click paste
Now I can share with you again
Okay, so I typed in the code and I click verify I would click on this remember the browser the 24 hours
just makes your life easier if you have to go back in and click verify and
You are in
You
Okay
Now this looks really complicated. It's it's not too complicated. All right now on
The top left most of you are gonna see when you do this. You just see file an application
It's under trademarks. You click file an application file a tease application
And
You're in this is the screen that you should see
Trademarks search mark, you know service mark application principle register
Okay now down here
These are the two options I was talking about that your attorney is going to look at there's two options
One is a tease plus application where you're using
You're gonna type in words and then the United States Patent Trademark Office website
Is gonna tell you the international class and give you a list of different goods and services to select from I'm gonna show you how
To do that. The other option is a standard form
It's more expensive. But in this one, you can type in your own words for the description of goods or services
So as an example Nike for footwear, right?
You may decide well, I don't want to just select the class and type in the word footwear. I want to say
Therapeutic shoes for the elderly
There's no class
Description that says that so it's important to you if it is important to you to say that instead of just saying footwear
Then you're gonna have to check off the standard and then type in your own words
That's what the attorney is gonna do but it costs more money. See it's $350 per class
Versus
$250 per class. The reason why is because if you choose the t's plus option
then under t's plus
You're going to select the services or goods
That are given by the USPTO. So it's already approved. It's their language
So they don't have to review the language
Because the language is already approved. They've given you the language
But if you put in your own language, it's making them do more work
So for that reason they charge you more money. Does that make sense?
So if you want to have a situation where it is
You can type your own words. It's gonna cost you more money if you want to select
Their words it costs you less money. So I'm gonna go through the t's plus which costs less money
Now you're not gonna be an attorney. Obviously your attorney will be you there so they'll select yes, but for now
I'm gonna say no here
All right, so you'll see it says we recommend you review the materials on trademark basic web page before completing your application
You can legally file your own trademark application again. I don't suggest it when you're starting out because
You make a mistake. You can't fix it. That's the problem
And then you have to file a whole new application, but they do have a page that gives you some ideas of how to file
All right, so now let's go down here I'm gonna move you guys over to the side on my screen and
This button here you don't have to worry about
This is in case you actually started creating a trademark application before and
then
You stopped and saved your work
You can actually save your work if you do that
Then you can actually save the file and you would choose the file and upload the file. You're not doing that. So
You could continue
And here we go. We are in
the app form so now you
You, the first field is the owner of the mark.
So for me, it's going to be like A to E challenges, the name of my company.
So I put A to E challenges LLC.
It could be an individual as well.
All right.
If it's an individual, then I would collect individual here.
If it's, but since it's, since it's instead a corporation, so you notice
how, when I collect individual, it actually knew something's wrong with the name.
It's pretty intelligent.
So it says, if an individual use the following format, last name,
comma, first name, middle initial.
Right.
So obviously this was a corporation.
So I'll go back to corporation and there's a corporation.
Okay.
If you have a DBA doing business as you can list that here, if you don't
know what a DBA is, don't worry about it.
All right.
Your corporate law attorney should actually let you know what a DBA is.
All right.
So now this is a corporation.
It's a limited liability company.
So I come over here and I can select LLC, right?
When I select LLC, it reloads with LLC information.
And now I can select the state in which it was incorporated.
Delaware.
Right.
Or if you're in a foreign country and you're filing, then you can select,
you know, you can say if it's another country, you can come over here.
And let's say as an example, I know there's a lot of Canadians
that come into this program.
So you can send that Canada.
And now you have lights flashed.
There's a storm overhead just in case we get disconnected.
Hopefully that won't happen.
Protect the means of communication, please.
All right.
So I'm going to go back to the United States because most
people are going to be doing that.
So I'll say Delaware.
All right.
Address.
Very simple.
That's my home address.
Just realize that if you click on this and it populates, it populates strange,
meaning that it pushes your mailing address up.
So you have to come over here, cut it and move it down.
Paste.
Okay.
That's if you have autofill.
So there's your address and then the state you select your state.
And then your country and then your zip.
Now this one's going to be zero, five, six, four.
All right.
You don't have to worry about this one.
Your phone number.
Let's talk about phone number.
If you put your phone number here, then people can call you.
So there's a lot of people that don't actually want to put their phone
number because they don't want to get called, but if you don't list your
phone number, then your examiner can't call you to actually tell
you that they need something.
So I tend to list my phone number.
All right.
If you have a business number, it's better to list the business number
and then you put your email address.
So let's just put it on.
Whatever.
Say the guy at hotmail.com.
Let's do that.
And then you click continue.
You can put your website.
You don't need to see how it tells you.
You didn't put your phone number.
It tells you, cause I didn't enter it.
So you can enter it or not enter it.
If you don't enter it again, the examiner is not going to be able to
call you if they want to make a quick change to your application.
So putting the phone number is beneficial for that reason, but
I'm not going to list it here.
So I'm just going to click continue.
Now we get to the more interesting stuff.
This is when it starts to get to be fun.
All right.
Remember how I told you there's different types of trademarks.
There's a, somebody's happening to chat.
What are the two different types of marks?
Let me see.
Word and design.
Very good.
Yep.
That's right.
So there's word marks and there's design marks, right?
So you see word marks fall under standard characters.
Design marks fall under a special form.
Okay.
That's for a design mark, special form.
And this is just for a normal word mark.
All right.
So if you select special form, it's going to ask you to send a picture of your logo
because they need to see your logo, right?
So you're going to have to attach a picture of your logo.
So that's why you click over here and then you get a PDF.
You upload it there.
Um, if there are any words.
in your logo, you're gonna have to write the words in here.
So, you know how it says like,
let's see, like Burger King is in the logo
and then there's the word Burger King there.
You know, so there's like the burger thingy
and then there's, or let's say like McDonald's
there's the golden arches.
Or not the golden arches, where are the golden arcs?
And so, you know, there's the golden arches there.
Well, those there, you have to type in McDonald's
underneath it, you have to do McDonald's, right?
And then you'd have to attach a picture
of the logo with McDonald's in it.
And if there's color, that's part of your mark,
you have to describe the color here.
So you have to say, it actually,
it does a good job describing it for you.
It says, if claiming color as a feature of the mark,
list the colors below, including black and white
if actual colors within the mark, okay?
Now, I'm gonna tell you something
cause you're in VIP, all right?
I'm gonna save you a lot of pain.
If you have a color mark,
check this with your lawyer, right?
Just to confirm that it'll work for you.
But if you have a trademark that's in color,
if you file it in black and white,
it gives you all the colors.
If you file it in color, you only own that color.
It's a lot more powerful to file
a black and white trademark
cause it gives you all the colors.
Talk to your lawyer about that before you do it, okay?
Just make sure in your situation it makes sense.
But that is a way, that is a secret to the system.
People make that, they always file their logos in color
and then they claim color.
And then later somebody uses something not in that color
and it becomes more difficult to argue confusion.
But you see right here, check this box
if you are not claiming color as a feature.
That's what I would do.
Not claiming color as a feature.
Even if it is in color, I'm not claiming color as a feature.
That's what I would do, all right?
Now, you do, you talk to your lawyers,
you figure it out, right?
But that's very powerful to remember.
A lot broader coverage for black and white.
All right, so that's actually for a logo.
And then you have to describe the logo.
So in my case, I have like, you know, the three rings
and inside the three rings, there's like,
it looks almost like leaves in my logo.
It actually makes a flower.
I had to describe that in detail.
Right here in this field, right over here,
you describe what your logo looks like.
So for Burger King, it might be like a bun
with a yellow and orange bun with, you know,
a brown patty with an orange bun underneath with,
I don't know what else is around the Burger King logo.
I have no idea, right?
So you just have to describe it in detail there, okay?
All right, now let's go back to just normal characters
because a lot of people aren't going to follow on logos.
They'll just follow a name.
For names, it's different.
Just type the name.
Like it's simple, just Burger King.
Burger King, that's it, done.
It's a lot easier, right?
And if you want to see what it looks like,
just click the preview.
Burger King, there it is, all right?
And some people ask, is it case sensitive?
No, it says right here, the entry can be in capital letters,
lowercase letters.
I would write it the way you want it to appear personally,
just in case they mess something up.
So if I were Burger King, I would do like Burger King.
That's the way I would do it.
But it says here that it's not a big deal.
I just, for some reason, don't trust the system.
Okay, so there are additional statements you can use.
I'm not going to teach you on that.
Like that's going to take you too long.
But basically, let's say you have a trademark
that is very similar to what you're filing for.
You can click on this button here.
Now, all these options are going to pop up, you'll see.
All these other options.
And then you can say, oh, I have a prior registration,
you know, and just type it in,
the registration number there.
If you have a prior registration.
That's too complex.
Don't worry about that for now.
So let's just assume people
don't have additional statements.
Let's assume it's just a basic trademark application.
So you got your name there and you selected a wordmark.
Now you click continue.
Now on.
Here, this is when it gets to be real fun.
Remember how I told you, you had two options.
You could type in the goods and services yourself,
or you could type in like one word and have it searched
or like multiple words and have it searched
by the USPTO website, right?
We chose the option to have them search for you.
Remember, we chose a TEAS application,
which is less expensive.
So what you do here is you just click
add goods and services.
When you do that, you get to this screen right here,
search for.
So now you just got to figure out what are you filing for?
So let's have some fun here.
Let's take somebody here
who's filing a trademark application.
But what I don't want you to do is don't tell me
what the actual word is.
We're just gonna have a situation where you can tell me
like what the goods and services are, okay?
So anybody who wants to volunteer right now
to have some work done on their own thing
without paying 600 bucks an hour,
raise your virtual hand and we can look
for one of you guys.
See if anybody pops up.
If not, I'll just do one theoretically.
I can't find my hand on here.
Was that you, Anders?
I think that was Addison.
I don't see my hand.
Oh, Addison, if you go into reactions,
you can click on the raise hand.
Is that Addison?
Yeah, Addison.
Addison, we can work through, that works.
Yes, sir.
Reach higher.
Educare.
Say it again.
Childcare.
I'm sorry, childcare.
Childcare.
All right, let's try that out.
Let's see.
Childcare.
Let's click go.
See what pops up.
And we get POW.
Look at this.
All these things that have childcare on it.
How many popped up?
Wow.
It's not that bad.
It's not too bad.
I've seen like over a hundred pop up before.
So it says it's only found 20.
Well, here's a good thing is that when you look,
you'll see like childcare, childcare services,
providing childcare centers,
providing family childcare services.
So you got to look at these and see
what pertains to your situation, right?
So very likely childcare,
because you said look up childcare.
So I'd say that's one of them.
So click the box next to that.
Childcare.
Are you thinking like providing childcare services?
Yes, sir.
All right, so let's click on that one.
For family.
Would it be like a childcare center that you'd be running?
It is.
It's right next to a school.
Like on that one too?
So let's see.
Providing family childcare services.
Family childcare services are daycare centers
that are located in the home of the childcare provider.
These services are classified in 43.
I mean, it gives you really good explanations
right underneath it.
Providing home-based childcare services,
in-home childcare, daycare centers
that are located in the home.
Short-term drop-in childcare services.
It's probably that one, right?
Short-term drop-in care services
where they leave the child.
Right.
Yep, so there's one there.
So basically you go down the list
and you find the ones that are similar, right?
And I mean, this is so easy to do.
Now you've got all those and you say,
insert the checked entries.
That's it.
Now all the entries that you had show up.
Okay.
That's part one.
Part one is figuring out
what are the services or goods.
It's part one.
Okay.
Part two is you have to assign a filing basis.
That means, is it an actual use application
or is it an intent to use application?
Which one is it?
So in this case, Anderson, Addison,
is this something you're already doing
or you're going to do?
We're already doing this.
There you go.
So then everything here,
let's use you as an example.
So would it be a section 1A or 1B then?
I would say section 1A, right?
Actually using the mark in commerce now.
You see that?
And I taught you about intent to use,
no use of the mark yet.
Okay.
So this is actual use.
So you see these check boxes,
you got to make sure that these check boxes are on.
Okay.
If they're not on,
then when you click select section 1A,
then they will not all.
assigned that. But let's assume that you're doing all of these except this one right now. Let's say
you're doing the first three, child care, child care services, and providing child care centers,
but you're not providing short-term drop-in child care services yet.
So you would just check the first three and then select 1A.
And watch what happens. It now asks you for a specimen to show that you're actually using it.
This is, again, where your lawyers are going to be important because they're going to have
to tell you what kind of specimen to provide. Then describe the specimen.
And then the data first use anywhere and the first use in commerce.
So once you have all that, I'm just going to grab any specimen.
I'm just going to grab an image of anything. Choose a file. Let me just grab anything I can find.
Here, there's me. There's me at Grant Cardone's event. So let's attach that.
It's all there. Now return to the form.
And there we go. One file is already attached. And then I describe it. I'll just say I'm going
to make up something because in your case, I would have to say, let's say, a digital image of web site
illustrating services with trademark Veron. There you go. And then my first use date.
I'm just making stuff up. There we go. And assign the following basis.
And you see how on the right-hand side now it says 1A. You see that?
Yes, absolutely. Yeah, it's all there now. See,
but one of them, one of these is not like the other. Do you guys remember that when you were
kids? One of these is not like, I don't know how the song goes, but in any case, you want to grab
the last one here and you say, well, that's a 1B because I'm not doing it yet. So I select the 1B.
Now the beauty of selecting a 1B is that you can't provide any kind of specimen because you're not
doing it yet. Right? So it makes it a lot easier, but you do have to check this box over here
because it's saying to you, you need to understand that if your case gets allowed,
it will not be registered until you change your intent to use application into an actual use
application. It will not register into them because they're not going to give you the legal
rights to your trademark until you start using it. Okay. But you do get a filing date. That's
the important part. You need the following dates so nobody can file before you and take your legal
rights. So you're going to have to check this box telling them, yes, I understand that I'm going to
have to change it to an actual use later. And you click assign following basis and watch what happens.
You see the right side now, I got a 1B and I got a bunch of 1As. See that? So I've got an intent to
use and I got a bunch of actual uses. Now the good part is that they're all in one international
class. Since they're all in one international class, I'm only paying one fee. But what if,
what if I click add more goods
and Addison is like so popular that everybody and their mother wants a thermos
with his name on it. Everybody, they all want that, right? So I'm going to go look up a thermos.
Let me turn this thing stuff over here. Go thermos.
And after the hamsters are done running,
there we go. You got thermal pots, electric, electric thermal pots, thermoelectric compressors,
thermohygrometers. Clearly this is not the thermos that we were thinking of, right?
You see that? Did you guys hear that? There's like lightning strikes going off and everything.
All right. So, wow. All right. So now what I would do instead of that would look up like,
let's say insulated storage.
device or maybe even insulated cup or something like that. You have to play around with the words
to find what you're looking for. Nothing comes up there so now you're gonna have to look up let's
say insulated cup let's see if that provides anything. Now the beauty of the other application
is you could just use the word thermos right but since you chose the cheaper version you have to
find which class and which description covers what you're saying. So here's drinking cups for
children and parts of fittings they're in namely drinking cups for children sold as a unit with
non-insulated lids then insulated sleeve holder for beverage cups. That might be right
might be right who knows but in any case let's say it was this one
we'll just just for purposes of moving forward so we got that insert the checked entries all right
now what you're seeing here is that I now have another international class do you see that
that means I'm now following in two classes you pay the same fee for every single class
it's multiplied so if you've paid 275 for the first class you're paying 275 for the second class
okay so that means in this application I'm paying for two international classes class 21 and 43.
I could have many different things in 43 I don't get charged for four times for 43 it's all in 43
so it doesn't matter as long as it's all in the same class you can list as much as you want okay
but in this case 21 is a different is a different class so I'm going to get
charged double got it because there's two international classes so now what happens
now I have to somebody unmute and tell me what's the next step I need to do here
you're using it or not using it exactly and to use it are you using it that's exactly right so
now I have to assign the following bases right you see the 1a and 1b on the bottom
but if I select right now 1a then every single thing that's checked here is going to change
so this is where you got to be careful so what I would do is unselect everything I would just
select the one that you're looking at and then I would select what you want okay if you select
everything you end up messing everything up and you have to start all over don't do that
been there done that like don't don't make that mistake so unselect everything select
the one that you want and then you can select your 1b status as an intent to use application
click on that box and then assign the following basis and now what happens on the right
bam 1b see it so I've got one class that's an intent to use application
I've got another class that has three things as actual use and one thing that's intent to use
you see that you've got them all covered so now all you do is you click continue
now everything's in there now you can enter a docket number if you have an internal docketing
system you already have one email address you can add another one if you want you don't have to
continue from there
and here's the fee see how I told you it's going to be two times
see there it is two it's 250 times two because there's two classes class 21 and 43
now it's going to ask you to sign this declaration saying that you didn't steal
the name from somebody else or the logo from somebody else it's your original logo
you're going to have to sign a sworn statement to that okay and so you're going to click different
boxes here you can read that part yourself and then you sign it when you sign this is how you
sign this is how the lawyers assign slash the name I'm just going to do let's say I'll do my name
and then slash that's how you sign you click over to sign and it gives you the date then you type in
your name as normal your position and that and then you click validate I'm not going to validate
there's a whole other step that lawyers will do under validation okay
That's how you double check your work. Everything that you entered in is you validate it. All right.
Those are all the parts for filing a trademark application that your lawyer is going to go
through. So you now understand all the parts that they're going to need. The specimen,
the date of first use, the company name, there's a DBA or not, where it's incorporated.
If there is a logo, they're going to need an actual image that shows the logo.
Okay. You have to give them your recitation of goods and services and your international class.
Here's the beauty. You now know how to look up the international class yourself.
All right. Lawyers spend a lot of time looking this stuff up or paralegals looking this stuff up.
You can take all the time you want doing it yourself now because you know how to do it.
You have the replay so you can look it up and watch it and do it a few times. Practice this.
Practice it so you learn how to do all this stuff. Then you give them a complete package.
Then all I do when I get it is I'm now going to go look and make sure everything's consistent. Yep,
specimen is good. The application data is correct. The recitation of goods and services,
I agree with that. I'll double check with you and see, hey, are you sure this is the recitation of
services that you want to use? Thank you, babe. My wife. Thanks, man. You can use all of that
information and then give it to the attorney. They're just going to double check it and
done. Your application should cost maybe 800 bucks or less versus I've seen people charging
1600 bucks for a trademark application. I don't understand it. I do not understand it.
I'm an electrical engineer and I've written patents on rocket science. This is not rocket
science. I know what rocket science is. I've written patents on the type of technology,
BAE technologies. I've written patents for them and others, MIT and others. It's not that difficult.
You should be able to get most of this stuff together and keep your costs low.
Is that helpful? Does that help you guys? Yeah? Good. We walked through a basic filing. Now,
there's some other stuff you can do. You can make it more complicated, but that's basically
90% of the time, that's what it's going to be like. If it's a case where you had prior
trademark applications, you may have to file an additional statement. If you're filing off
of some foreign case and now you're filing in the US, you have to file an additional statement.
Your lawyers will know what to do. We know that stuff real fast. We can do that. You shouldn't
have to worry about that because if you do that wrong, you lose the filing date. You don't need
that. All right. Let me take a few questions. See if anybody has a question on what we've covered
so far. Yes. Go ahead, Kay. Hey, Peter. I have two questions. The first one is, let's say we
definitely know the service class and we want to add products, like you used the sippy cup example
or the cup example, but we don't have it right now yet. Do we do separate filings for that or
do we just do it now, all income passing filing? Great question. I'll get to part two in a second,
but that's why I went through the example that I did today because you'll notice I filed certain
things as actual use, others in a different class as intent to use. You can file them all in one
application. You can file your actual use and your intent to use. Now, technically, you could
separate them if you want. I just think it's kind of a waste of time because if you separate them,
you're going to have to enter all the information again, right? And the only real plus to
separating them is that you can get a registration faster with not having to wait for other classes
to get registered. You can just get your application completely registered at once, right?
So that is, if you're looking for a registration certificate as soon as possible, then by all means
file separate applications if you want. It's going to cost you a little more with your attorney because
they have to refile everything. They have to enter all the data again, right, which it takes a little
time, okay? But if that's not the case, like you don't need your registration certificate.
immediately, then you could, you could file one application with
everything in it. And then when you and then when your actual
use portion of the case is ready to issue, you could separate,
you could file a petition to separate your case, right to
split your case. And then then you'll take your actual use and
separate it out from your intent to use and get your registration
for part of it, and not other parts of it. So there's certain
certain tricks to the trade that we know as attorneys. So but what
I would say is, if you want to get a registration certificate,
nice and clean and fast, you can file them separately, it'll cost
you a little bit more, it shouldn't be much though, okay,
because, I mean, you, it's not a lot of work, you know, but if
you do that, Carrie says, Does that mean that none gets
approved until already? All right, can separate it out
after? Right? Yeah, that's it. You can separate it out after.
Yeah. So you can file it. And then you can add make a request
to separate your case, and then get to registration. So you can
do that. Or you could say, well, I'm already using it. So I'll
file my intent to use application separate. You could
do that too. You know that I've seen people do that. And then
they get a quick registration. Right? So it's up to you. You
can either file petition to split later, or you can file
together now. I mean, or separate now, it's up to you.
What was part two?
By part two is, let's say we're ready to trademark something
now. And we know like the basics. So what is the process
of, you know, working with an attorney, like, let's say with
you, like, you're here now, you're like an IP attorney, and
the cost of that? And how do we go about starting that process?
That's a great question. Alright, so let me talk a little
bit about working with an attorney, right? What happens?
So first thing, I would never ever, ever search the internet
to find a lawyer. I just wouldn't do that. It's just what
you do is you find at least you find a lawyer that either you
know, is competent or a lawyer who knows somebody who's
competent, right? You don't go looking on Google for a lawyer.
It's just a bad idea. Okay. In general, it's just it's not a
good idea. So now let's say you find a lawyer that you like now
you've got to do what's called a conflict check. Every good
lawyer is going to do a conflict check. That means the lawyer is
going to check internally to see if they have any clients that
potentially conflict with your trademark or your services.
Right, that might take a day or two for them to do a conflict
check depending on how big how big the law firm is. All right,
then they'll come back to you and they'll say, Nope, we don't
have a conflict. Or if they say they do have a conflict, then
they'll tell you, I'm sorry, we can't take care of you. And you
should ask them, can you recommend another law firm? In
which case, it costs you nothing to ask them that. And then you
get a referral. The reason why I always say to work with a
referral from a lawyer is because then that lawyer is
held accountable. Right? If, if you call me and you asked me for
a bankruptcy lawyer, and I send you a bankruptcy lawyer, and
they stink, I expect you to call me up and go, why in the
world did you give me the name of that guy? He has no clue what
bankruptcy is, you know, so I don't know why you gave me that
number. So I'm not going to refer to you somebody who
doesn't know what they're doing. Because that's going to be a
poor reflection on myself. So that's the first thing I would
do when hiring a lawyer, I would make sure that you're working
either either you know, somebody from personal experience, like,
obviously, the training here, you know, I know what I'm doing
or somebody else, you know, that they're doing, they know
what they're doing. Or you call a lawyer who knows somebody, and
then hold them accountable. All right. Now you've got the
lawyer, they do the conflict check, they're going to send you
an engagement agreement. The engagement agreement is going to
give you some of the basic information, like the billing
rate, what your responsibility is going to say, you know, if
you change addresses, it's your responsibility to tell me where
you've gone, I'm not going to go looking for you. You know,
because I can't be held liable because you've moved right to
Malibu, like I can't do that. So that that's all in the agreement,
right? You sign the agreement, you send a retainer, most law
firms are going to ask for retainer why they've never
worked with you before. And unfortunately, there are times
when people get hired, the law firm does the work, and then
they don't pay. And it costs a lot of money to legally enforce
all this stuff. So they want to get at least some of it up
front, right? So they'll ask for a retainer. Now, the other thing
that I would be asking if I were you was exactly what you just
said, okay, how much does it cost? Like, give me an idea of
cost. You have no idea how many people call me up and never ask
me what the cost is. Like now, if they know of
me or they know me, I accept that because they know I'm not
going to rip them off. They know I'm honest, right? But if I've
never met you, and you know nothing about me, you should be
asking, well, what's this thing going to cost? Like, am I paying
for a limousine here or a Pinto? Like what exactly is going on
here? Right? That's a basic question. How many of us by a
show of hands, saw a house and purchased it without asking for
the price? All right, Sherry did. Gotcha, Sherry. Sherry did.
She bought it right away. She's loaded. We're going to your
house next week, Sherry. So I mean, that's, you know, that's
kind of different. You don't do that in with houses. So why
would you do it with lawyers? Right? So you asked, like you
just said, so now a trademark application, typically, if
you've gone through my training, and you're providing me with a
complete package, it'll typically be in the order of
somewhere around 800 bucks, usually around there, because
I'm going to double check everything, make sure
everything's right. Now, it could cost less, based on how
much time it takes to do that, right. But if in the review, I
look at the recitation of goods and services and a specimen and
the specimen makes no sense whatsoever, and the goods are
just wrong. You know, descriptions make no sense. Now
I've got to go and start making phone calls, and looking at
websites and trying to find the right things. That's what brings
up the cost. That's why I do this training, so people can
understand. But in general, probably around 800 bucks is
where you're looking, right? If you knew nothing, it'll
typically be in the order of 1200 to $1,500. I've seen people
charge 1600 bucks for trademark applications. I think that's
insane, personally. They're not that difficult. But I've also
had clients that could not get me a good specimen, and it's
taking me five hours to finally get a good specimen. That
application cost them like 2500 bucks, because I couldn't get a
good specimen from them. We just kept going back and forth, back
and forth. So after you file your application, then after the
application filing, you're going to go through an examination
process, right? So now it's going to take about nine months,
eight to nine months to hear from the United States Patent
Trademark Office. And they're going to say, yes, it's allowed
or no, it's not allowed. Here's a rejection. If you get an
office action, that's the rejection. You're going to have
to respond to that office action. Ask that same question
you just asked, ask the attorney again. What does it cost for the
response to the office action? If it is a likelihood of
confusion rejection, it's typically in the order of 1500
bucks to 2500 bucks, depending on the complexity of the
rejection. If it's just an allowance, cost you a couple
hundred bucks to go through the process and get your
registration. So it depends upon what happens. It's like, it's
kind of like I've had somebody before say, hey, I want to file
a patent application, can you give me an estimate? That's when
I asked them, okay, am I filing a patent application on a, you
know, on a, on a fishing pole? Or is it a nuclear weapon? Like,
what exactly am I filing? Like, I need to know before I can give
the estimate, right? It's not that it's not that way with
trademarks. trademarks are pretty straightforward. So
you're not going to get like what a patent you may pay, I
filed a patent application for $29,000. All right, it was a 200
page application for a client. Most applications are like 18
pages. But this technology had to do with artificial
intelligence. And it was way out there, like way out there. And
it's, it's, it's incredible technology. And so I had to
bring all that back to earth so that the examiner can
understand it by talking about neural networks and all this
other stuff. And by the end of the day, it was a 200 page
patent. The client was deliriously happy. They're
like, that's like the best patent I've ever seen. I was
like, I'm glad you feel that way. Your bills almost $30,000.
They said, Okay, I don't care. Because they had funding for
millions for that technology. So but trademarks? No, trademarks
should be typically like 1200 bucks. You know, if you're going
over 1200 bucks, you're going too high, it should be less than
that. And if you've been through this training, and you're doing
it right, usually around 800 bucks, if not less. Sherry, go
right ahead. Take one more question. And then we're going
to end for today.
Sorry. Is it okay if I ask the question I had earlier? Yeah,
good. Okay. So
So you were talking about description earlier descriptors and how how
descriptors like blue shoes or whatever wouldn't count as a trademark so but I
was talking to you yesterday about Confident Kids and I was talking about
Confident Kids Academy is is mine or is what we were you have been using and but
isn't Confident Kids like as just by itself it's not a descriptor? Well if I
if I answer that that's legal advice so I can't give you that specific scenario
if that's legal because that is legal advice so I can't tell you that but I
can talk to you about what is something that's descriptive and what's something
that's not descriptive so it let's use a different trademark so I'm not gonna
tell you exactly what what what happens in that scenario so let's say I want to
file a trademark application for let's say brilliant inventors right I'm
providing I'm providing a service and my service is I'm doing challenges and
inventors come in and they're smart but my focus is to make them even smarter
right so I call it brilliant inventors
it depends upon the international class that I'm filing the trademark in if I'm
filing it in class 41 in class 41 that has to do with training education right
so brilliant inventors is that really descriptive of the training that I'm
doing I could see an examiner coming back and saying yes you're you're the
people that you're training are gonna end up brilliant so therefore I believe
it is a descriptive trademark my argument back to them would be no class
41 is for the training itself not for the people that are trained so I'm
getting into legal analysis here so if I lose you that it's because you asked
this question so I have I'm like telling you how it really works and so I would
say since class 41 is for the training you can't say that the training the
description of the training is brilliant inventors because the training is not an
inventor and it's not a brilliant inventor it is the result of using my
training that results in the brilliant inventor so therefore if my application
is in 41 for educational services brilliant inventor is not descript is
not a description of my services it's a result of my services it's not a
description of my services but that's a legal argument that has to be made to
the United States patent trademark office by a really good attorney to get
that registration to go through right and it can be difficult so what I would
say to you is if the results of the service that's being provided is the
term that's being utilized I tend to tell people to stay away from it because
it's an uphill legal battle which results in a lot of cost a lot of money
right and so that's different from something that's suggestive right a
suggestive mark which is what I gave everybody example of earlier in in the
challenge it's supposed to make you think of something but it's not
descriptive something that's suggestive is not descriptive descriptive is those
are the words that I would be using to describe the service but I have seen
many times examiners come out and say well the result of the service are those
words in which case I now have to fight a legal battle to make them understand
no it's not descriptive of the service it's descriptive of the result of the
service and therefore I should get the registration again that's an uphill
battle and you may win you may not win so I tend to tell people try to find
something that's not descriptive of the goods and services or the result of the
goods and services now that's different from suggestive like you know if you're
trying to say the result of this services is this is getting really thick
legally so I don't want to confuse people by going into this too deep
but there's a difference between suggestive and descriptive.
Talk to your lawyer.
Your lawyer will be able to take your specific scenario
and say, yes, you can do this, or no, you can't do that.
We can't do that here in a challenge
because that would be legal advice.
And we can't give legal advice
because then I could be liable
and I am not gonna be liable for 95 bucks.
There you go, cheers.
Okay, let me take one question from Kerry
and then we're gonna close.
Remember, we've got three more days together.
Three, three more days.
It's very quick.
It's just actually about what you're talking about.
These classifications,
you said that they're the two different kinds.
There's the 250 where you go in
and you use the system to find what it is
you're looking for, or you can make up your own.
Right.
It sounded almost like that might have been preferable.
I mean, is there a time,
it seems to me like you want it to be as wide as possible,
but is there a case where you want it to be really specific
so that someone can't go and argue,
well, it's too generic?
Yeah, so in the application that,
let me share my screen again.
Share.
In this application here, if I go back,
go back and go back,
childcare is really broad, right?
That's very broad.
Now there's childcare centers
and short-term drop-in childcare services,
but childcare is really broad.
So you can, what I tend to tell people is like,
or the way I file applications,
I start filing by the broad term
and then I provide more narrow language after,
separated by like a semicolon.
That's the way I do it.
So then I have really broad,
then I have a little more narrow,
a lot more narrow, very narrow,
but I have the broad term in there.
So if somebody is using that broad thing,
I got them.
That's the way I do it.
Yeah, it's a good question.
Yeah.
Thank you.
So let me elaborate.
So if you file that other one, that's $350,
it's not an easy way out.
It may seem like an easy way out,
but it's not because what typically happens
is the examiner will come back and reject
your recitation and goes to services
and they'll say, this is not acceptable.
Now, sometimes the examiner will come back
and give you a suggestion and say,
what I would suggest you use instead is the following,
in which case you can adopt what they give you
and then modify some of the language a little bit,
which is pretty cool.
There's some really cool examiners out there
that are like, I don't want to spend all day and night
on something this simple.
Let me give it to you.
Now you just fill in the blank here.
I gave you the rest.
I love those examiners.
Matter of fact, when I filed my trademark application
for Challenge Whisperers, Challenge Whisperer,
I got a call from the examiner and the examiner said,
I think your recitation of services needs to be modified.
And the reason why is he didn't know what a challenge was.
He thought challenge meant like I'm running into a challenge
you know, like something that's challenging.
He didn't think it was like, you know,
a training, an online training.
So he came out and said,
oh, this language needs to be modified.
Now I thought to myself, hmm,
first of all, I'm an attorney.
Do I tell him that?
Because if I tell him that
he's going to be on defense immediately.
So I said, let me not say that.
I didn't tell him anything.
And then what I saw was by using the word challenge,
it was a little descriptive.
So I decided instead of doing that
to use the language that he gave,
which actually was broader than my word challenge.
I knew that because I knew the law.
So then I said, you know what?
That's a great suggestion.
Let's take what you say, Mr. Examiner.
Thank you for so much for, you know,
imparting your wisdom upon me.
This is amazing.
Thank you for the phone call.
And he was all ecstatic.
He's like, that's great.
All right, I'm going to register right now.
You're going to go through.
And he paused and he said,
you're an attorney, aren't you?
And I said, yeah, I am.
He says, I should have known you agreed way too fast
and you knew that it was broader coverage.
I said, yeah, but you're really nice
for giving me broader coverage.
He says, well, it was nice talking to you, Mr. Davis.
I said, you too.
And that was it, so.
All right, so with that, I'm going to close for tonight.
You guys have your homework.
You can do that today or tomorrow.
Peter was a suck up.
Yeah, I can be good at that every once in a while.
Yeah, it's like, hey, you know what?
Honor, here's your lesson for today.
Your spiritual lesson for the day.
Honor results in favor, okay?
When you honor those in authority over you,
you tend to see favor follow.
Don't honor the people just to get.
favor because that's called manipulation, right? And the enemy's manipulation is not going to be
utilized in the kingdom. It'll mess things up. So, honor, step into favor, okay? So, and with that,
I just want to honor all you guys. That's a great aside. You see how I did that? Just like,
whoo, right in there. I want to honor you guys. Great job. You're doing an awesome job. I will
see all of you tomorrow when we'll jump into copyrights. And I'm going to jump off now,
Larissa. Yeah, I'll catch up with you guys later.