All right.
All right, so welcome to day two VIPers.
So good to see all of you.
We are digging deep right now.
We're going to go into a trademark application.
What I want to do first, though, before we do that, is I want to take maybe one or two questions to kind of get us, you know, get our juices flowing, getting things moving.
And then we're going to jump right into a trademark application.
So let me start out with the Sozo's.
Hello.
Hey there.
Hey, how are you?
Good.
My question was before it was on the last one.
Can we file for our C Corp to own the trademark or should it be us personally?
That is a great question.
Okay.
So here's the legal answer.
It depends.
Let me tell you what it depends upon.
Okay.
All right.
So if you own intellectual property as an asset, right, it's an intangible asset.
So it's like if I own a cell phone, right, like there's an actual object that I can grab.
A patent is it's like an object that I can grab a trademark that I can grab, but it's intangible.
Right.
So the question is, do you want it in your name or do you want in your company's name?
Right.
There's certain perks to doing it in your name and there's certain perks to putting in the company's name.
And there's certain negatives on both sides as well.
So let's go through them.
All right.
And all of you should pay attention to this because as you're filing for copyrights and for trademarks and for patents, this is a question you're going to have.
Like, when do you want it in your name?
When do you want it in a company's name?
So if you're part of a company where there's a board and there's multiple members that actually have ownership of that company, then you're going to want to think before you assign anything to that company.
Because the second that you assign a right title and interest over the company, you lose ownership rights.
It's gone.
So let's say that you have a trademark and the name is Schlumberger.
So you have the trademark and then all of a sudden you start to work for a company and they say, we love that name.
We want to own that name.
We'll actually pay you X amount if we could own the trademark.
And you assign a right title and interest to the company.
They now own Schlumberger.
And you can't do anything about it.
It's gone.
That means you can't stop them from selling it to another party.
It means you can't stop them from using it in a way that you don't want them to use it.
Like nothing.
It's gone.
Okay.
So that's the first part.
For ownership purposes, maintaining it in your own name tends to be the way to go.
If you want to maintain ownership, right?
Now, if you have like a sole proprietorship where there's only one person that owns the company, then who cares, right?
Because it's sole proprietorship.
So you can actually assign it to the company.
But here's the thing.
As an owner of a company, you have an obligation to do what's in the best interest of the company.
So let's say that somebody comes along and they want to buy your company.
If you assigned a right title and interest to the company for the asset to the company, and now you're thinking, well, oh, man, I want to maintain ownership, right?
So let me assign it back to me.
Then you're acting in a manner that is contrary to the best circumstances of the company.
You're acting in a manner that's the best circumstances for yourself, not the company, which is a violation of your obligations as an owner of a company.
So that's a long way of saying don't assign all right title and interest to a company unless you're okay with losing ownership rights, meaning you're okay with not being able to control it.
They could sell it.
They could do whatever you want.
Now, what's one of the benefits to assigning it to a company?
If you own the company, then obviously it's a business expense.
Any of you guys here, anybody here, how many people here own a startup?
Raise your hand.
Entrepreneurs, do you own a startup?
There's a lot of you.
Okay.
This course is education.
That's a write-off.
The training that we did here, you should be talking to your tax people and saying, hey, this is further education.
This is a write-off.
I should be able to ‑‑ I'm not a tax person.
I don't play what on TV.
All right?
So you speak to your own accountants.
But you realize legal expenses, those are also expenses of the company.
Right?
So when you file a trademark application, that's an expense of the company.
All those things.
or things you should be listing and bringing
to your accountant at the end of the year,
and they should be utilizing that to offset your profits
so that you don't seem to make more
than you actually did make, right?
So, but having the asset assigned to the company,
then for the company, it's listed as an intangible asset
and you get a write-off.
Now, if it's a sole proprietorship, like I have,
I'll tell you about it on Thursday,
but I have an entity called A to E Challenges.
So when I do a mastermind and the interest
of the mastermind is like, it's a $50,000 mastermind,
it's actually further education
on behalf of the company, right?
So that's an investment on behalf of the company.
So I list that as an item that I can write off.
But for you, for tax purposes,
if you have it listed as an individual,
you have the ownership rights, which is great.
If your company owns it, it's a write-off.
I'm not sure how it works if you're an individual
and it's not associated with a company,
I don't know that you can get a write-off.
I would talk to your own accountant to find out.
So, but then there's one other aspect
and then we'll jump in, I'll jump into one more question.
One other aspect, liability, okay?
You own a trademark and somebody believes
that trademark is infringing
upon their federally registered trademark,
they're gonna come after you, right?
Actually, let me stop that.
I'm not gonna will anything on anybody.
Let's say somebody does that,
then somebody may have somebody coming after them, okay?
We'll put it that way.
But the point being that if it's owned by the company,
they usually go after the company.
It's owned by the individual,
they usually go after the individual.
Now, somebody, that's so awesome, I love that, Allison.
Yes, that's exactly where I was going with all this.
I'm like, we're not talking about that.
That's not happening.
So the whole point being though,
somebody who is wise, who's done litigation for a long time,
sues both.
So they'll sue the company
and they'll actually sue the individual, right?
I had a client of mine who received a cease and desist letter
from a Taiwanese organization that was harassing my client.
So I went to my client and I said, hey, Whit,
he's the president of the organization.
And so I said, Whit, do you think you're gonna end up
in a battle with these guys at some point?
And he says, absolutely.
We're gonna end up in litigation sooner or later.
I said, okay, how would you feel
if I could make them come to New Hampshire
in February from Taiwan?
He said, I would love that.
I said, okay, we're gonna file
a declaratory judgment action against them.
So we filed what's called a DJ action.
They became the defendants because they threatened my client.
So I called their bluff essentially
and I threw him into court.
But the whole point of this,
the whole point of why I'm mentioning this is,
I sued not only the company,
but I sued the president of the company.
The reason why I sued the president of the company
is because I wanted the president of the company
to realize that it was his own neck on the line.
Cause he was, I found out that he was the one
that was pushing for those nasty grams to come out.
So I named him as a defendant.
Now, since there's a company, he's protected, right?
But I tried to get behind that.
I tried to basically pierce the corporate veil
to try to get to the president himself
so that he'll settle the case as soon as possible.
So it may be the case,
I'm telling you all this to basically say,
it may be the case that you were signed into a corporation
thinking that it protects you
and hopefully it does protect you, right?
But don't be surprised if somebody actually lists you
as a defendant, just make sure your lawyers know how to
make sure that you're not in court.
It should be the corporation alone.
So that's a lot of information I just gave you,
but basically there's three big issues.
Number one is you wanna be able to make decisions,
keep it in your name.
Number two is liability, get in the name of the company.
You minimize your own liability, right?
And then number three is if you wanna be able to,
well, yeah, I kind of say number three is there too,
but if you wanna be able to sell it at some point
and do other things with it,
it kind of matches with number one with ownership rights.
So there's pluses and minuses.
You have to determine in your circumstance
what you wanna do.
Does that help?
Yeah, okay, good.
All right, all right.
With that, I am going to walk us through
the trademark application filing, all right?
So let me just, just to elaborate upon
what I just talked about,
if you are a solo entrepreneur and you have a startup
and you're controlling all the assets of the company.
company, like myself, I assign all right title interests
to the company.
But I know I'm going to remain the only owner,
so I don't have a problem with it.
But if you're concerned that at some point
other people are going to come along, what you can do instead
is you can license it to the company.
You don't have to assign it, you can license it.
So if you have a really valuable patent or trademark
or copyright, instead of selling it to a company,
just do a non-exclusive license or do an exclusive license.
Maintain ownership rights yourself,
and then you can do whatever you want.
But the company can use the name,
because it's been licensed over to them.
All right, with that, let's jump in.
USPTO.gov.
OK, let's go to, let me just look real quick at the screen.
Yes, DJ is declaratory judgment, that's right.
OK, I was just looking at comments here.
Make sure I don't lose anybody.
Yeah, that's right, Poppy, that's
exactly why I have LLCs.
I have two LLCs right now, intentionally for that reason.
And then I do, right, you did it right, that's good.
All right, let me share my screen.
Bam, boom.
All right, here we go.
Trademarks.
So for those of you that have not yet registered
with the site, just go over to that My USPTO and register.
But I have registered, so since I have registered,
I'm going to log in.
Let me stop sharing so everybody doesn't see my login.
Login.
So once you get registered, they're
going to ask you for multiple levels of authentication, OK?
So when you actually log into the system,
you'll see they're going to ask you for all sorts of stuff.
So I'm just double-checking it now, making sure we got in.
Perfect.
Done.
There's a USPTO website, the authentication code.
Copy and paste.
I'll share this with you so you can see what it looks like.
OK, so I'm entering my code right now.
It's a little bigger.
There you go.
And verify.
You can click on this Remember Your Browser
so you don't have to keep doing this over and over.
And then click on the button.
And it's going to show you what it looks like.
Click Verify.
And you're in.
OK, this is the USPTO portal.
So any of you who have not seen this before,
this is what it looks like, OK?
Now, we are going to file a trademark application.
So you just go right over to where it says File an Application.
Click on that.
File a TEE application.
And here we are.
All right, so we're going to walk
through the filing of a trademark application.
Again, I'm prefacing this with don't do this on your own.
The reason why I'm saying don't do this on your own
is because I've seen people do it, make mistakes,
and they can't fix it.
Like, you can't get broader recitation of goods
if you do an improper recitation of goods.
You can't change a trademark.
Like, you can't.
There's a number of things you can't fix.
So if you make a mistake, you can end up
wasting $275 or $350 for no reason.
So at least the first time you're doing this,
make sure you get somebody who knows what they're doing
to work with you.
All right, so now, scrolling down, you have two options.
There's the TEES Plus application,
and there's the TEES Standard application, OK?
Those are two different options, OK?
One of them is less expensive, $250.
That's the TEES Plus.
Standard costs $350.
Now, let me explain what this all means.
The TEES Plus application, what you'll do,
and I'm going to walk you through a TEES Plus application.
What you will do is you will type in certain words.
When you type in certain words in the search bar,
it will tell you.
What goods line up or what services line up or what you typed and I'll tell you what the international classes, then all you do is you select the ones you want.
And so it costs less money because you're selecting from USPTO
Certified
Descriptions
This other one over here, this T standard application.
You will actually type in whatever you want.
And so it actually costs the USPTO more time and money to review an application.
Where you're typing in whatever you want because you may type in something that doesn't line up with what they allow to be in a specific international class.
As an example in jewelry. There may be something that says like gold jewelry. But what you say is instead, you know, metallic objects assembled on an elongated rope, resulting in a glimmering object that may be fastened around your neck, right, I mean,
Could have just said gold jewelry. Right. So USPTO would have rather have had that. But now they're reviewing everything that you typed in.
Since it takes some more time, they cost more money. So I'm going to show you the example of the T's plus because it costs less money to do. Is an attorney filing this? I am an attorney. So I'm saying yes, you would obviously say no.
And then click Continue.
Okay, now you get to the owner of the mark. Alright, so for the owner of the mark, you just type in the owner of markets, right. So let's say Peter any of us.
Now, if you have an LLC, you just click on LLC. When you click on LLC. Look what happens. Select the state in which you were incorporated.
Like you come over here and you say, Oh, I was incorporated in Georgia. So now you select that. So LLC, Georgia. Right. If instead, you have like an LP, then you again you collect you select what whatever it is that you have, you just select the button you type in the state. That's all very straightforward. There.
Going down your mailing address. That's pretty straightforward.
But here, here's where we run into problems. Okay. And, and 90% of you would have run into this issue had I not walked through this thing here because I still run into this issue.
If you click on something that you had previously, it puts it into the internal address. It doesn't belong in the internal address, you got to cut it and move it into the mailing address.
All right, because the internal address is more like, you know, like the suite number, your PO box. Right.
Actually, no, you should put your PO box here. I believe. Let me double check. Oh, here we go. Enter address is publicly viewable blah, blah, blah. This address must be compatible receiving mail and maybe a street, street address PO box, blah, blah, blah. So you may actually have maybe like your suite number, my PO box, but it doesn't belong in the mailing address.
It might be under the internal address. So, but in any case, you, what I always do is I tell people put all the information on their mailing address. You can't go wrong if you put it there.
Under state, just put it in your state.
Then your country zip, throw in your country, your zip.
You don't have to worry about this domicile address. None of you are going to run into that problem. You put it in a phone number.
Let's see. So three, two, five, nine, 10. Okay. And then a fax number. If you still use fax machines and then an email address. Right. So let's say
thepatentguy4 at hotmail.com
And you can put in your website if you want. Just keep something in mind here. Just so everybody understands. It's for a second.
I want to look at, I want to look at all of you as I'm saying this.
Everything you put in here, public record.
Okay.
I'll make sure you understand that. Everything you type in here, public record.
Don't go giving your personal cell phone number if you don't want people having it.
Don't give your personal email address if you don't want people having it. Why? I guarantee you the second after you file it, you're going to start getting emails from lawyers, you're going to start getting emails from other companies, you're going to get phone calls.
So it's beneficial to use a phone number that you don't mind sharing.
You know, when filing for more than one thing, but same business. Can we put all the classes? Yeah, we're going to go through that, Allison.
You just got all the right questions today, don't you?
We're going to go through that. That was a perfect question. Well done. All right, so let's just click continue.
Poppy, just ask,
So they can skip it? Can they skip putting in an email or phone number?
Yeah, you can. But see, the issue, though, is if you don't put an email or phone number,
yeah, I'll go back. Oh, no, you actually do have to put an email because they have to
communicate you in some fashion. So you do have to put an email. But you know what? You can create
a Hotmail account or create a Gmail account or create some other, you know, account on your own
and just use that. So continuing from there. Oh, what do I do? Take the multiple windows? Yes,
I'm aware. Let me just see if it works. Continue. See if it'll let me continue.
Yep. Seems to be working again. Okay. All right. Let me go back.
That's another thing. If you go back, then what happens is you can lose some of the things that
are on your screen. So just keep that in mind. If you go back to look at something, just make
sure everything that you filled out is still accurate. I don't know why the USPTO website
has that issue, but they do. So, all right. Now, we are filing a trademark, right? So
somebody unmute themselves and give me a name that nobody has. Or actually,
you can give me any name. Just make sure it's not yours. All right. So I don't want your actual
trademark. Don't do that. Okay. Just give me a trademark. Let's see. Anybody got one?
Just unmute and say something. I heard fly high. And what was the other one?
Chess store. Chester? Chess store. Chess store. All right. Let's do this.
How about I'm going to combine them? Fly store. Okay. There you go. Fly store.
Fly store. This is where you go before you go on a flight. Okay. So it's called fly store.
All right. Which may actually be argued to be descriptive, by the way.
But in any case, we'll just go with fly store. So standard characters means it's a word mark,
right? Now, if it was a design, let's say like a logo, that would fall under special form.
So I'm just going to show you the example of doing a word mark. Okay.
So now we're going to you're not going to have any additional statements.
So additional statements, basically what that means is let's say you had a filing in another
country and now you're filing in the U.S. off of that foreign filing. You can click on that and
see other conditions that you can list. Or let's say you have another trademark that's similar and
you want to cite to it. You can click on that button and you can cite to it. There's a bunch
of different things that are available. Like, oh, here it says it right here. Claim of prior
registration. So if you have another registration that's similar, you can list that. There's a bunch
of different things that fall under that category. So I'm not going to go through that because
it's pretty detailed and confusing. So I just click continue. All right. So now this is the
main screen for entering the goods and services. Okay. So all you're going to do from here is I
just click add goods and services. Okay. So this is the screen you're taken to. Remember how I told
you that you need to type in words that describe what the goods and services are. So we just created
the Fly Store. That's the name. We just said Fly Store is the name of the company. That's the
trademark we're using. So let's talk about some things that might be sold in Fly Store. All right.
So somebody type in the chat something that might be sold at the Fly Store.
Head pillows. Head pillows. Okay. Let's go for that. So let's type in. I wonder if you can do
the head pillows. Head pillows. Let's see. Go. Head supporting pillows. Who knew? There actually is a
class for head pillows. Look at that. So there's head supporting pillows, head positioning pillows
for babies, head supporting pillows for attachment, blah, blah, blah. That may be attached to. So I'm going to
select this one here. And then I'm just going to select insert checked entry. Boom. Look at that.
It's right there now. See that? See how this is not that difficult. All right. This part is
not that difficult. I see somebody type luggage. Somebody has a sweet tooth. Sylvia wants candy.
Masks. We got water. Okay. Let's go with luggage and candy. I like that. Let's go with luggage and
candy because we all need luggage and candy. So let's select. We're going to add another one.
here. See what else we got. That one. Let's see if we can add some more. Let's type in candy.
Go. Let's say medicated candy. What? Let's say we just did candy. Insert checked entries.
Okay. So now we've got, do you notice how we have, how many international classes do you see right now?
Two, right? Because candy is international class 30. Head supporting pillows are in class 20.
So now let's say that we also want to add luggage. So you go add goods and services.
Come over here. I just type in l-u-g-g-a-d-y-g-e. If I go,
I click that, look at all the luggage items here. So let's say I just say, you know,
I want carriers for vehicles. No, let's just do something simple. Luggage. Click.
That's enough. So now I just say insert checked entries. So now I have three categories. I have
class 18. I've got class 20 and I've got class 30. Three different classes, right?
Here's what that means. Since I'm falling in three international classes, I'm going to be charged
three times. So that $275 is going to be three times $275. You get that $825. Okay. I'm not
going to be spending $275 because there's three different classes here. Now you pay per class.
Okay. So now this is what I have to do now though, is I have to specify,
am I using these products already? Like, am I using a trademark on these products already
in interstate commerce or am I thinking of using it? And I'm still not using it yet. I'm not sure,
but I wanted to actually own it now. So let's say that, yep, we're doing luggage and we're
doing, yep, we're selling candy. Yep. We got that one, but we haven't quite done the pillows yet.
So that means since these two are in actual use, I select section 1A
for both of them. So section 1A, multiple, yes, I'm aware of that.
Same class, separate 1A, I'm aware of that. Yep.
Really? All right. They changed the site. Well, that's not nice. Okay. All right. That's fine.
They want to do that. That's fine. So the USPTO must've run into a lot of problems where,
let me explain this in a simple way. Every time that you file an application in a specific class
and you're saying that you actually use it, you have to show them a specimen, a data-first use.
And so since you have to give them a specimen and data-first use,
you actually can't select multiple classes and then say, make that your,
you can't file for both of them at the same time. You have to show them a data-first use.
You can't file for both of them at the same time, or you can't select them both at the same time
because you have to add specimens. And since they're different goods, they're going to be
different specimens. What do I mean by that? If the goods are candy, right? Here's a candy.
This is just organic ginger, right? That's an organic ginger candy. Let me stop my share for
a second. Okay. So this is, it just says organic St. Clair's. See on the top, St. Clair's.
Okay. So that's a trademark. St. Clair's is a trademark, right? So if I want to submit a
specimen for St. Clair's candy, I just take a picture of the box. That becomes a specimen.
Okay. That's it. Done. Simple. Like, cause it's actually used on a product, right?
And then for luggage, got a bunch of stuff here, but I don't see any luggage. I do have a bag over
there that says Targus, right? And so what I would do is take a picture of the product showing the
trademark on it, and I'd submit that as a specimen. But if you click both of those,
luggage and candy, the USPTO website can't list specimen for luggage, specimen for candy. They
want to do it one at a time. So for that reason, you can't click them both and assign a one A or
one B basis at the same time. You got to do them one at a time. So that's basically a long way of
telling you select one class, then select,
I'll go back to the screen here and show you.
You select one class, like this one here,
this is the one I'm gonna do now, luggage.
And then I went ahead and I said, add section 1A.
Now I've got to add a specimen.
So I click on add specimen.
I look for the file, choose file.
Let's just add something simple.
I attach the file.
They're not gonna take that file
because it doesn't fit within their parameters.
Okay, so you're gonna have to find a file
that actually fits within their parameters.
I grabbed one real quickly,
so this one is not being accepted by them.
I bet if I grab, let me see,
let me see if I have pictures.
I bet if I pick this one over,
of course, because Jesus always works.
There you go.
I love that.
I tried adding a random image, they don't take it.
I take the picture of Jesus, boom, it works.
All right, there you go.
So I'm following a trademark application
for Jesus apparently.
All right, so then I described the specimen.
I'm actually described, so basically,
let's say it was a picture of a bag
with the trademark on it.
Then all I would do in here is I would just say,
digital image of luggage.
Having trademark there on, whoops.
Trademark there on, that's it.
I mean, this is so simple.
And then finally, I put the date of first use.
Let's say that's when I first use it.
So you have to list both your date of first use
in interstate commerce and your date of first use anywhere.
So if you were using it internally,
that would be a different date from the date
that you started actually offering for sale to others.
So let's say this is the date
that I started offering for sale to others,
but within my company, I started using on that date.
And then I just assign the basis.
Okay, and here it is, it's done.
See that?
1A, it's already assigned.
So now this, I'm just, for purposes of making this quicker,
I'll just click these other two here.
I think you can do a 1B for more than one.
Let me just see if that works.
Yep, they'll let me do a 1B.
The reason why they'll let you select more than one
as a 1B is because you don't have to provide any specimens.
So for that reason, boom, there it is, 1B.
So if you have multiple trademarks
that are not being used yet,
you can select multiple of them
and then select section 1B
because you don't have to provide a specimen.
But if you do select one
that actually is being used already,
you have to submit a specimen
so they won't let you select multiple at the same time.
So you got to do those one at a time.
So when I click continue,
now I've got to enter, since I said I'm an attorney,
I'm going to enter my attorney information,
bar number, yeah.
Other attorneys, no.
I'll just throw that there.
For purposes of discussion
or just so that we all understand how this works.
Year of mission, 1998.
That's all fine, fine, fine.
It's just an example, so I don't care.
Email address, sure.
Continue.
Okay, so now it's saying there's an error.
So let's see.
That's fine, that's fine.
Oh, okay.
So attorneys have to check this box
that says you're in good standing.
So do you actually think that an attorney
who's not in good standing would check a box
or would feel bad about checking a box
that actually says they're in good standing?
Probably not, so.
So anyways, then you actually have to enter
So anyways, then you,
I'm not going to go any further than this,
but now all the information here you've got to confirm.
You give an email to confirm and then you click continue.
And now once you get past this screen,
it's going to show you everything that you entered.
All right, I don't want to go past that
because obviously I'm not going to submit
a trademark application for Jesus under my bar number.
But let me stop here just for a second.
I know we covered a lot, okay?
And it's pretty hilarious that Jesus is the answer.
So it wasn't working, but when I used this picture, it worked.
So I'm just saying, you know, that's all.
So does anybody have a question right now
with what we did?
Yeah, April, go ahead.
So my question is,
is if you have multiple things that are in the same class,
like how specific do you have to be?
Like, can you just say apparel
or do you have to specify?
That's a great question.
And I'm gonna do hats and I'm gonna do,
like how much of that do you have to do
if they're in the same class?
Love that question.
All right, so,
I'll tell you the way I do it.
The way I do these applications is I start broad
and then I have narrow next to it, okay?
So what I'll have is I'll say,
let's say that it's sports apparel.
I'll say sports apparel, then I'll say namely,
and I'll mention different things, right?
So I'll say namely sneakers and, you know,
running shoes and headbands and whatever else.
So I'll do both, right?
And there are multiple reasons for that,
but one of the main reasons is that when you file it,
it's not uncommon that the examiner
is gonna come back to you
and say they want you to be more specific, right?
So when you file an application,
as an example, if you file an application
for like automobile parts alone,
then chances are very high,
the examiner is gonna come back and say,
well, what are some of the parts?
Like, that's just what they do.
But feel free to file for something broader, that's okay.
You can do that and just see what happens.
You're not gonna hurt yourself.
Would it be better to do that as a standard
rather than the plus,
if you're gonna enumerate a bunch of different things
or does it not matter?
I mean, it really doesn't matter if you're,
I mean, when I do applications
and I know it's really complex,
like I have a number of clients
that have like 80 words plus
in a recitation of services or goods.
I do my own standard, I don't do plus.
I rarely do plus just because
I want them to have the freedom
to list whatever they want.
You don't need to use exactly the words
that they want you to use, right?
But what I will say is that
they do a pretty good job
of listing many things that are available.
Like if I go add goods and services here,
let's say I use,
let's say automobile parts.
That's what we said.
So let's just look at automobile parts.
So now under automobile parts,
there's a number of things.
I don't know that these help.
Let me try something else.
How about helmets?
I wonder if helmets will give you
multiple things underneath it.
Yes, all right, perfect.
This is a great example, helmets.
So you see how helmets can fall
into a lot of different things.
Like you can have umpire helmets,
all these other types.
So I'm gonna say bicycle helmets
and I should probably do motorcycle helmets,
driver helmets and helmets for bicycles.
Isn't that the same thing as bicycle helmets?
I don't understand that.
Helmets for motorcyclists.
Isn't that the same as motorcycle helmets?
So here's an example where you have multiple things
that are listed for the same thing.
So auto racing helmets and let's,
you could even do protective helmets for sports
if car racing is considered a sport.
So you can select all the ones you want.
And then once you select all you want,
you can just say insert checked entries.
Now, the reason why I did this
is because I wanted to show you
there's multiple in the same class.
You see that?
Three, four, five, six things in the same class.
When I click insert checked entries,
all these are in class nine.
So what that means for us, let's turn these off
because all these three already have an assigned basis.
These three here, all these one, two, three,
four, five, six, seven,
that I'm only gonna be charged one fee for that
because it's one class.
So I can specify a lot of different things in that class.
But to answer your question, you can just say helmets.
But if you file for helmets,
I'm pretty sure the USPTO is gonna come back to you
because it's been segregated in so many ways.
I'm pretty sure they're gonna come back to you
and they're gonna say,
hey, you need to specify what exactly are those.
And if you only have motorcycle helmets
that you can provide a specimen for now,
you can do 1A on that.
And then the bicycle helmets and the auto racing helmets
are the 1B, because those are coming too.
Absolutely.
Very well said.
Thank you, that's super helpful.
Absolutely, very well said.
That's perfect, well done.
So if I say, well, hold it,
like after I review with my team, they say, well, hold it.
You know, we've been selling bicycle helmets.
It's like, where have you been?
Like, we've been selling them for two years.
And you go, oh, well, sorry, I didn't know.
So then you click on that one there
and you change it to section 1A.
Cause, well, actually you got to get rid of the 1B.
Ooh, ooh, this should be interesting.
Remove check goods and services
because I'm going to have to remove.
I've actually never had to remove
cause I always do it right.
So let's do this together.
Let's find out how to remove items.
Do you have to remove the item?
Really?
I want to change the assigning basis.
I don't want to remove.
Let me see, remove check goods and services.
Helmets for bicycles.
I guess I could do that and then add new one.
So helmets for bicycles, just add that now.
Insert.
Now that it's there, I can uncheck everything
and then check for bicycles and then go to 1A.
It should be an easier way to do that.
I don't know how to do that.
And then you have to put in your specimen,
describe it, give your data first use and assign it.
So let's just do that real quick.
Choose the file.
Let's do that one.
That's so funny.
Return to the form.
Description.
Let's just say digital image of helmet of,
was this the bicycle one or the, yes.
So a bicycle helmet having trademark thereon.
Cause you have to show it actually being used
in your state commerce.
You can come up with whatever dates you want
and assign filing basis.
And there it is.
So how many, somebody tell me,
now that we have all these listed here,
if you can all see it, hopefully you can see it.
Let me make it a little bigger.
How many, how many classes?
First, tell me how many classes are here.
Somebody just unmute themselves
and say how many classes are here.
Four.
Four, correct.
Now that means that you're going to have to spend $250
times four.
Okay.
Was it 275 or 250?
275.
So 275 times four.
That's going to be your cost.
Okay.
So if you're in the middle of this and you're going,
oh, I can't afford to do all this right now.
You know, let's just get rid of this stuff here.
So you come over here and you delete it.
Remove check goods.
Gone.
Now you have three.
See, that's what you do.
That's how you can, how you can work with the system.
What do you do to add more later
if you want to add more to it?
Sure.
Yeah.
So let's say we file today and then next week,
or let's say a year from now, you say,
oh man, you know, I really,
I want to add another class,
which is what happened to one of my clients.
Like they sell wallets and then they wanted to add more.
And I said, well, what do I do?
I said, well, you got to file a new trademark application.
That's the way the process works.
So you have to go through this whole process again,
filing another one for another international class.
What if it's something that you already have in that class,
but you've now added,
we didn't think we were going to do in motorcycle homelets,
but the demand was so high.
So now a year later, we've decided to roll those out.
These are great.
So April and I are going to hit the road
because all of her questions are perfect, quite frankly.
So they're like prefacing everything
that we should be talking about.
So, yeah, so you actually have to file
a brand new application for that class,
but then list the new goods.
So like I had a client, I still have a client,
they own it for wallets, right?
But what happens was that they had a situation
where all of a sudden they started doing some new products.
And so we were getting ready to file.
And I know how creative this guy is.
Like he's a multimillionaire, he's brilliant.
I said, you're not ready to file.
And he says, what do you mean I'm not ready?
I said, you've got way more things.
Go back to your team.
I am not going to file an application
for that one thing you want me to do.
And then find out in two weeks,
you've got like seven other things.
Go back to your team, find everything that you have.
And then let's set up a meeting.
And he did, and he came back with like seven other things.
And so he says, boy, you just saved me a lot of money.
I said, yeah, because if.
we'd have done it the way that you wanted to do it, then every
time you call me, it would have cost you because you're not just
paying the USPTO fee, you're paying the attorney's fees on
top of that. I mean, you you it's not uncommon to spend 1500
bucks on a trademark application. It's not uncommon.
Because people will go back and forth on specimens that go back
and forth on recitation of goods and services. So you're going
back and forth, back and forth, back and forth. By the time
they're done, the total fee ends up being like 1500 bucks. You
know, so I mean, unfortunately, but this is why I'm walking you
guys through this. So you understand this. And you know
what, it costs you nothing to learn this now. I mean, well,
obviously, it costs you money to be here to learn this. But the
whole point being that you can make mistakes, you can learn,
you can ask questions, you've got we're together three more
days, you can ask questions now. And it's really important when
you learn something to have to have a structure to be able to
ask questions. It's really important because, you know, you
can you can obtain tremendous, tremendous knowledge. But at the
end of the day, if you can't make sure that what you're doing
is accurate, you can get a lot of trouble. And I've seen it.
I've seen people file things that are wrong. Then they
realize, oh, no, I meant to do this. They call the examiner and
examiner says, Oh, well, file another application. That means
now you're spending another 1500 bucks. You know, it's just
it's a waste of time and money. So I much rather you guys don't
run into that. Terry, was that your question? I heard a voice.
No, my question is, I have, of course, my board game. And then
I have my board game is one name, but then I have the name
of my business, which is a LLC. And then I have an actual event
that I put on when I a game day, basically, I have have that
called something else. So as far as me when I file, the name is
going to be the trademark will be for my business name. And
then I put those two items as my goods and service.
So this is where an IP audit is really helpful when you have a
lot of things that are going on. If the same name, are they all
the same? Well, if I have a company, and a company is called
XYZ Corporation, and I have a product that's called ice, I
have another product that's called
sunlight, I'm just making this stuff up. So I have ice, then I
have sunlight, two different products. But my company is
called XYZ Corporation, those are three different names. So if
I want to own all three names, I got to file three applications.
Now when I when I file for ice, I'm going to talk about the
goods and services associated with ice. When I talk about
sunlight, I'm going to be filing for the goods and services
associated with the sunlight product. But my corporation
provides certain services. So my trademark application for XYZ
Corporation is going to say XYZ, kind of like Microsoft, right?
Microsoft, you file for Microsoft, well, Microsoft
provides does software development. So the application
is going to be associated with software development. So it
depends upon where the trademark is being used every place where
a trademark is being used. All of those things I should be
listing.
Spending a lot of time and money later fixing things up.
You say where a trademark is being used. You mean like the
little the little R in a little circle? Is that what you're
talking about?
No, you say that way.
Use of a TM and an R is the result of my use. It's not
showing that I'm using it. You could not use a TM or an R and
still be using it. It just means that you're not marking it
properly. So don't, don't judge. Don't judge your use based on
whether or not use a TM or an R. So if a company, if you're using
a name, or if I'm using a name on a product, right here, I'm
going to show you something. Let me give you an example.
Okay, here we go.
So I have an old box here. There's a very old box, very old
box. This is the original. There's a Wheaties box, right?
It has Michael Jordan on it. Like this is the original box,
right? Right. So now this the product is called Wheaties,
right? So but the company's name is General Mills, right? So I've
got a trademark for Wheaties, I've got a trademark for General
Mills. But under General Mills, I've
Also got right down there, a logo.
You see that G?
So the G logo is protectable.
General Mills, the words is protectable.
Wheaties is protectable.
And here, I'll blow your mind.
This color scheme of white and orange,
that's actually called trade dress.
If you use certain trade,
if you use certain colors consistently,
you can actually own that color scheme.
Let me put this back so I don't damage the box
because I've had it for a long time.
But that, oh, let me put that back there.
So we're not talking about trade dress
because I don't wanna go any deeper
than we've gone so far in the last two days.
Because there's all, just so we're clear,
there are hundreds of things
like I could teach you in this stuff.
And it's all dependent upon
in your specific company what you need.
That's what's important.
So let me go to, I'm gonna go to the next person
on this one, right?
Let me go to Teresa.
I haven't touched base with Teresa at all yet.
So Teresa, go right ahead.
If you're there.
Oops.
Okay, hold on.
Okay, can you hear me?
I can, how are you?
Great, I am so good.
Okay, so my question, I'm gonna send you a question,
a more detailed question through email.
But here's my broad question.
What I'm working on is a pattern of material.
And so I wanna be able to put it on everything
from sheets to baby products
to horse blankets to clothing.
To curtains, like, because it's a pattern
of, it's a print pattern.
So what do I, I'm not,
like, I don't really know how to,
it can even go on luggage.
Like, I don't really know what to,
I don't know how to, what to do with that.
Okay, all right, that's okay.
So let me walk you through a few things.
I'll walk through this one with you
and then we'll probably end here
because I might do one more, let's see.
All right, so textiles in general
fall into international class 24, all right?
I just looked it up just to help you out.
So international class 24 is associated with textiles.
Now, I never knew this.
My wife works for what's called New Hampshire Scott, right?
They put it on the Highland Games.
So this is where, like, they do, like,
strongman competition.
They do, like, the drinking competitions.
No, I'm just kidding.
Like, I've been to the event.
There's a lot of drinking, okay?
I don't drink, but there's a lot of drinking
at those events.
But they do, like, the carrying of these different things
and then the tossing of the telephone poles.
And then they do all sorts of different events, right?
It's all Scottish.
And so they have what are called,
my wife's right over there.
It's called a, somebody told me it starts with a T.
What is it called?
Like a tartan.
That's it, a tartan, yes, that's it.
It's called a tartan, right?
And so the New Hampshire,
her group actually came up with a new tartan.
And so they actually had a name for the tartan
and they protected the name of the tartan
under that international class, right?
But then separate from that, that design,
they actually protected by copyright law.
So they actually filed a copyright for the design itself.
So there's a number of different ways
that textiles or designs can actually be protected.
Okay, well, just let me send you
a more detailed description later.
Sure.
And I thank you so much
for just even steering me in the right direction.
Yeah, sure.
So like print patterns in and of themselves,
print patterns are actually protectable
under copyright law.
The names of any prints are actually protectable
under trademark law.
But then on top of that, any fabric design
or clothing designs or things like that
actually can also be protectable under trademark law.
There's this body of law called acquired distinctiveness.
And so you wanna make sure you speak
to a trademark attorney in this area
because you have to know how to do it.
It kind of falls into a similar category of colors.
Like if you're trying to own the color blue,
I have a client of mine, Macintosh,
they sell receivers, right?
Audio receivers.
The audio receivers are like,
they can be anywhere from 500 bucks to 50,000 bucks, right?
But all their receivers have a blue, has a blue screen.
So they came to me one day and they said,
we want to own the color blue.
I said, okay, so let me see if I get this straight.
You want to own the color blue for audio equipment?
They said, no, for audio receivers,
we want to own the color blue.
I said, well, that's ambitious.
So let's try and do it.
And we did.
It took me a while, but I got it.
So Macintosh owns the color blue.
There's no other company in the world
that can use the color blue for the dial area
or like right where the numbers show up.
Nobody else can use that color blue
or they would be committing a trademark infringement.
Bless you.
All right, so with that, I'm going to stop here
because I've given you guys so much stuff,
you guys are going to explode.
All right, so between the normal challenge
and what we've done in VIP today,
day two is usually the heaviest day.
So I'm going to give you time to digest this,
process this, sleep,
and then tomorrow we're going to jump into copyright law.
I might answer a question or two tomorrow
before we get started in the other area.
We're good, we're together another three days.
Okay, is this helping you guys?
Is this, yeah?
Okay, good, good, I'm glad, I'm good.
All right, so tomorrow we'll dig in some more.
And let me see something.
Poppy, DM me, all right?
Because I know something's like on your mind,
just DM me, okay?
Peter, it was already asked in the chat too,
is the question is a 1B to a 1A, do you pay twice?
That's a good question.
All right, so if you file originally a 1B
and you want to change it into a 1A,
you have to file a petition
to change it from a 1B to a 1A, okay?
Do you pay twice or just-
No, no, so you pay for the petition.
There's a cost for changing it, there's a petition fee,
but it's not like a trademark application fee, all right?
So you'll pay the normal 275 or the 350
for the 1B application,
but then when you change it to a 1A,
you'll pay a petition fee to change it from a 1B to a 1A,
which I believe is less expensive
than if you file a brand new application.
But the most important thing being
that you actually have a filing date, right?
That's the most important thing
because if somebody else sees the name
or somebody else comes up with the name,
you filed it first, so you end up owning it, okay?
Those are really, guys, your questions are amazing.
Just to be clear, like you're not,
I'm not getting very basic questions.
You're asking questions for implementation,
so this is phenomenal.
I'm glad that you guys are here
and I hope this is helping you, I truly do, all right?
Because I want to see you succeed.
All right, so you guys have a wonderful evening.
Larissa, I'm going to leave you here.
I'm going to jump into other stuff
and then once this stuff is all done processing,
which is usually about 11 o'clock,
then I'll start doing the video editing,
so you guys will see videos after.
And then I'll post the challenge video
into the Facebook group as well,
so you guys will see that, all right?
All right, I'm jumping off.
You guys have a great night.
All right, Larissa, I'll leave you, take care.