There we go, all right, so welcome to day two VIP, welcome idea protectors.
So hopefully you got some questions from your own business or things that you can kind of
think of how to apply.
We went through a lot of content obviously yesterday and today.
And so those are typically two of the heaviest days, trademark days.
But that's why I give you the recordings because I want to make sure that you can digest it
over a little bit of time.
So we have covered a lot.
Today what we're going to do is we're going to go into trademark applications, like what
are the different parts so you actually see what's going on in the filing of an app.
And what that does is it's going to make it so that you can be better prepared when you're
giving your work to the attorney to actually do the work.
Now I've had people file applications on their own.
I don't suggest that you do that because if you never done it before and you make a mistake,
it can be a costly mistake because you have to basically file again.
You can't really fix things too much with the trademark office.
So you just want to be careful.
But obviously I can't control what you guys do, so you do whatever you want with the knowledge
you're getting.
With that being said, does anybody have a question before I jump in?
If you do.
I have one.
Yeah.
Go right ahead.
And you may have already covered this.
I came in about 20 minutes late.
It was a bad traffic today, but I was wondering about, I was reading about how you don't want
to dilute your trademark.
Oh, good.
Yes, yes.
For example, if your trademark is two words, say like space lease sprockets, but in casual
usage on your website or-
Space lease sprockets, really?
Yeah.
You are dating us both right now, you really are.
But say you use space lease in casual usage.
Is that diluting it?
You have to say space lease sprockets every single time, no matter what.
Yeah.
That's a wonderful question.
Honestly, I applaud you for asking the question, because this shows that you understand the
nuances of trademarks.
So the way that dilution works is that you're losing the ... So for those who don't understand
what dilution is, what it does is that it's an act that you can perform or another party
can perform, which decreases the strength of your own trademark, resulting in the name
either becoming commonly known by others, or you just lose the strength so you can't
enforce it against others.
So it happens a number of ways.
So if you look at Kleenex brand tissues, there was Kleenex brand tissues, but then people
just started talking about Kleenex, like, grab me a Kleenex, give me a Kleenex.
And so the word Kleenex just started being used for tissues.
Everything was called a Kleenex.
Well, that's diluting the strength of the brand.
So what you got to do is stay ahead of your trademarks.
This is why what Carolina is alluding to is that you want to make sure you're using your
trademarks as trademarks.
And what do I mean by that?
Don't use those words either, A, in a descriptive manner, or B, in a manner that is just kind
of like listing it.
I hate to use the terminology willy-nilly, but I can't think of something else right
now.
Can I just say milly-vanilly instead of willy-nilly?
Because it just sounds better to me, right?
So you don't want to just randomly use your trademark.
You want to kind of respect the strength of your trademark.
And by doing that, you should be using it on, like, tops of pages, identifying things
on products, like it's on a label for products, or it's, like, if you have materials, it's
in a specific location.
You're not using it in a descriptive manner.
You're not using it all over, all the text, over and over and over and over.
You're just kind of giving it the respect it deserves, right?
So my wife's name is Bonnie, right?
I don't just randomly talk about Bonnie and have other people talking about my wife.
They're to respect my wife, right?
Well, respect your trademarks, okay?
Have a certain element of respect for your own trademarks.
Otherwise, you can lose them.
Like Xerox ran into this.
Kleenex ran into this.
And other companies have run into this.
to very powerful trademarks losing their strength
and then trying to stop the public from using it
when sometimes it was their own fault.
Like they thought it was a great marketing campaign
to tell everybody, hey, grab a Kleenex.
It's like, no, what you should say
is grab a Kleenex brand tissue, right?
You don't say grab a Kleenex,
you say Kleenex brand tissue.
So if your sneakers, instead of calling sneakers,
you want to come out with like Crocs, right?
Those are hideous looking, but Crocs in general,
people think of Crocs as like, you know,
an actual footwear thing.
So, but they're not saying Croc brand slippers.
They're just saying Crocs, grab your Crocs or whatever.
Like I got to stop.
But in any case, what they're doing is they're starting
to associate a type of footwear with a word.
And if other people come up
with a similar looking footwear and they call those Crocs,
even though they're not Croc brand shoes,
then they can lose the strength of their own trademark.
So that's what Karina is talking about
is losing the power of your own trademark
by using your word Milli Vanilli.
Got it?
So always use the full trademark, even in casual usage,
like on social media or whatever.
I would, I would, because if you don't,
then people can start associating just one of the words
with something else and you can lose the strength
of the entire trademark.
Now, but what might happen is you,
this is something that actually happens quite often.
Somebody might have a trademark that's two or three words
and they realize that everybody's using one of the words.
That happens.
Like that's not uncommon.
That's what I'm concerned about.
Yeah, that's not uncommon.
So what should you do in that case?
File a trademark for the single word.
See, if you're seeing, if you're seeing that the public
has grown to fall in love with a single word
of the two word trademark, I'd get ahead of it.
And I'd say, you know what?
Why don't we, why don't we have our main trademark
for like the business and this unit,
but we'll have the single word for this other thing there,
you know, which is kind of related,
but they're two different trademarks.
So like Microsoft, they have Microsoft Excel, you know,
well, they own Microsoft alone.
So some people might, some people,
there's not a lot of people out there going,
hey, I'm gonna buy Microsoft brand software.
They're just saying,
hey, did you get that app from Microsoft, right?
So if you're seeing people start to fall in love
with one of the words,
I would do a little market research there and see,
maybe they don't wanna use both words anymore.
And that's okay, that's okay.
Then what I would do is I would get a federal registration
for the single word and, you know,
maybe make one of your business lines
just that one word alone, or do something like that,
but make sure you own both.
So that if they're doing single word or multiple words,
you got them, so that they'll stop doing it, yeah.
If that single word though is a fairly commonly used word,
just in general, then you can't trademark it.
That's correct.
So would you just then consider it a blessing
that people are identifying a general commonly used word
with your company exclusively?
Or would you change your name to one
that can be shortened and easily used and trademarked?
This is a really good practical question.
So if, and all right, so this is not legal advice.
I'm saying this is a business thing, okay?
So in business, let's say my law firm
is called Nieves IP Law Group.
I don't know any, well, I know a few attorneys that do this,
but most people say Nieves IP, right?
They don't say law group, they just say Nieves IP, right?
But if in your situation, let's say as an example,
they just start calling it law group.
Are you going to the IP law group, right?
Well, IP law group is a common terminology.
They're not using Nieves in it, which is the identifier,
but let's say the public's just starting to get to know
that, well, Nieves IP Law Group,
it's just called IP Law Group.
And so everybody just starts saying,
hey, do you know the IP Law Group?
Oh yeah, that's run by Peter Nieves, right?
Is that a blessing?
I mean, it's good that you're increasing recognition
in the public's eye.
It's bad in that if another party comes along
and uses the same name, you can't stop them.
That's the problem, is that if you...
If you ride that wave, you might find that that wave is bringing you to a coral reef.
So it may be the best ride of your life temporarily, but at some point,
the wave's going to crash. And so at some point, you're going to go, well, hold it.
My market grew, grew, grew. Now other people are using that same name,
and they're taking my market share. How do I stop them? You can't.
There's literally nothing you can do because you rode that wave, and other people are now
capitalizing on it. So the way I would get ahead of something like that is I would rebrand. I would
come out with something powerful, rebrand, make it a celebration, make it a big deal.
This is our 10-year anniversary, and so now this is who we've become. You're all part of this.
You're all part of this group, part of this family, and we're going forward with this.
So now you're bypassing the use of descriptive terms, diluted terms, and things that you can't
own. You're stopping that before it gets too big. Let's imagine everybody just called them
fast software. Well, that's the best fast software out there. And so everybody,
whenever you hear fast software, they go, oh, yeah, it's Microsoft. But then along comes this
company in India that creates this new software app, and it works fast as well. And so they go
buy fast software. Microsoft can't do anything. Can't stop them. Now, if I really want to blow
your mind, which I will because you asked, so there is an area of law that's kind of rarely
used. It's very unique, and it's where a certain term becomes so well known to be associated with
you, even though it's descriptive, you can file a trademark application for that and argue that
it has obtained acquired distinctiveness. Just to be clear, what I just told you right there
is upper, upper, upper, upper level trademark work. This is the way that when somebody has a
brand that becomes so big that those words that are very well known by everybody only gets associated
with them. This is what they do. They'll file this thing, and it is rarely, rarely does it work.
But when it works, like, man, it's good. It is really good. So it's called acquired distinctiveness.
It's a small area of the law. And so if you've been using it continuously and other people
aren't using it, and you become the one associated with that term, which honestly is
considered to be descriptive, and you're the only one essentially, and everybody's looking at you,
you can file a trademark application arguing acquired distinctiveness and give proof to the
trademark office that, look, you search on Google, I pop up. You look at this, I pop up.
These are my sales under that name. And you see how they've grown year after year after year.
You have to prove that you've obtained acquired distinctiveness. If you can do that,
you've got one of the few most valuable trademarks in the world.
It's hard to hit that level, though. You need a good attorney to do that. It's hard to do that.
So has, for example, Apple done that?
Apple didn't need to do that, because Apple is not descriptive of computers.
Like, you need Peter, right? It's so funny. Yeah, I wasn't plugging for that. But yeah,
you need somebody that really gets this area, because it's very rarely used.
As an example, my client filed for the color blue.
Like, the color blue. They own the color blue. But the color blue is associated with
audio receivers only. So Macintosh owns the color blue.
So like Tiffany blue? They own that?
Well, there's a wordmark, like Tiffany blue would be like a wordmark, but the color that's
used by Tiffany, that blue, they own that as well. Correct. That's right.
Okay. Yeah. All right.
So you've got to have somebody analyze your situation and see, has it grown? Like,
is it really well known? Has it acquired? It's called secondary meaning. That's what it's called.
Right? It's called acquired distinctiveness, last, second meaning.
And it's called acquired distinctiveness, last, second meaning.
meaning. So now all of a sudden, while the words, let's say brown shoe is really well
And it's called acquired distinctiveness, last, second meaning.
known, everybody uses the term brown shoe. If I've been using brown shoe continuously
for 10 years and every time somebody says brown shoe, they think of my brand only, I
can argue it's going to be hard to win. It's very hard to win, but there is a chance. So
might be a way out. If you hit that level, that becomes one of the most valuable trademarks
in the world. If you can transform a descriptive term into obtaining secondary meaning and
acquired distinctiveness, you then become the owner of a descriptive term. That's like
a million dollar trademark. Very powerful. With that, and Ray will tell you, I don't
usually go into this, but you asked the question, so I gave it to you.
Yeah, that was a great question. I don't think we've ever had that question.
We haven't. Nobody's ever asked that question. It's a really good question. It's a rare situation.
We do have a question in the chat here. Vicky was asking when you spoke about them owning
blue, is it a distinct color code? Is it a distinct hex code? They don't own navy blue.
It's like a very distinct type of blue that they own. But remember, the test is likelihood
of confusion. So if somebody comes up with a blue that is slightly different, I'm going
to argue there's a likelihood of confusion because it's similar to the other one. So
the fact that I was able to get a trademark for the color blue in general is amazing.
And I attribute a big portion to that to the examiner who was willing to work with me because
when I first filed it, the examiner just rejected it flat out and said, there is no way I'm
allowing this. And then the examiner, after I coaxed them a little and just by the grace
of God, the examiner said, you know what? I think you do have something here. I can
see how this thing has been used for 30 years. I think you have something here, but it's
not in the right format and you need more proof here and you need to do this and that.
So I'm going to give you the list of like 20 things I want from you before I'm going
to allow this. And I just thanked him profusely. And he literally walked me through a massive,
massive process and we won. And we got, so we own the color blue. And my client was like,
hold it. We own blue. Are you serious? So what do they do? There is massive marketing campaign.
We own blue. Like literally it was like a big deal to them. And people were like,
ecstatic that they could do that. All right. Let me share my screen. I'm going to walk you through
a trademark application filing. So here we go. Okay. Okay. So this is a USPTO website,
USPTO.gov. All right. So what I want everybody here to do, cause you're in VIP,
I want you to create your own account. So if you click on the top right here, it says my USPTO,
you click on that. You can go over here and it says, I need an account, create a USPTO account,
just create your own account. Okay. It's a detail. They ask you a bunch of different things.
You have to provide like license, like a lot of information, like send in your first child or
something like that. And then you finally get a, you finally get permission to use the USPTO website.
Once you do that, you'll go into this button instead, which is your login, which is right
here. I have an account login. Then you log in from there
and you get into this site. This is what the site looks like. Okay.
That's what the trademark, the United States Patent and Trademark Office site looks like.
From here, what we do is we click on file for filing application, file tease application.
Then it actually asks you over here to, it's going to send you an email for verification.
The USPTO always asks for verification because somebody could be filing on your behalf,
which would be fraud. They want to make sure it doesn't happen. I'm going to click send me an
email. Now they're going to send me an email and I'll grab my cell phone so I don't have to change
the screen for anybody. I'll look at my cell phone, which gets my email. There it is. All right.
I go here and I look up the code and the code is 195073.
Verified and
Boom I have hacked NASA. So now I'm in okay, so we are in
This is what the trademark application form looks like. This is where you start
This is what the USPTO website looks like for filing your own
Application, but this is exactly what the paralegals use with the attorneys use. It's not a different site
This is what it is. So now you come down here and over here you have two options
There's a T's plus
And then there's a T's standard now
T's plus under T's plus
What happens is a paralegal will type in certain words
Or an attorney will type in certain words and it'll tell you what international classes are associated with those words
And it'll give you descriptions associated with that. I'm going to show you what that looks like
There's another way of filing too. You could do a T's standard under T's standard
You just type in the words themselves and submit it
The problem with the T's standard is that if the words that you type in don't fall within one specific class
But instead fall in multiple classes as an example, let's say you type in
Active wear for sports including jerseys bags
Briefcases
Backpacks and sneakers, right?
That's actually multiple classes
That I just mentioned
So if I filed that under a T's standard application, I wouldn't know that that's multiple classes
I just filed my application and then I'd get a rejection
From the United States Patent and Trademark Office examiner saying actually what you filed belongs into multiple different classes
Please separate it into different application into yeah
Please select the following international classes if you want those as well. So that's what they would do
But if you do it under T's plus
Which I'm gonna show of you. It'll automatically show you on the screen. What classes are associated with what you type in
That's why I like T's plus and that's why my law firm we use T's plus like 90% of the time
Okay is an attorney following this application obviously for you guys
It'll be no and what's kind of hilarious is that as an attorney? I've actually filed for trademarks for myself
But I have to lie and say that I'm not an attorney
Because if I say I'm an attorney and then I enter my information
It says the attorney information can't be the same as the applicant information
Even though I am the attorney and the applicant and it won't accept my filing so I have to tell them that no
I'm not an attorney
So which is good for you guys because you get to see what it looks like so you just choose no
You're not gonna do anything with the choose a file and you click continue then you get to the screen
So here we go. Now we start digging in and now you start to see what VIP is all about
If you haven't figured it out yet
First thing owner of the mark that's you know, it's either gonna be you as an individual or it's gonna be a company, right?
Whatever it is. So let's say it's a to e challenges LLC. Let's say that's the company. That's a corporation
It's an LLC. I click LLC second. I click on that. Look at what happens says select your state now
I got to select the state and
Then I'm good if I'm in another country
Then it may not be an LLC it may be called an LP in which case
Once I select LP I have this option here to select the country. So let's say I go to Canada
There's Canada. So now I select Canada. See it's not that tough. So I selected what country is associated with it. So
Again owner of the mark and then the entity that's associated with the with the mark
So, why would you just just as an aside for a moment here?
you may decide to assign all right title interest to the entity and have the entity filing or
You may file in the name of yourself. You have to figure that out before you file an application
Because that's what your attorney should be asking you. They should be asking you
Do you want this filed in your name?
Or do you want this filed in your entity's name if they're not asking that question ask them
Why they're not asking you that question or tell them what you want, okay, that's really important to figure out
All right. So now I'm just gonna assume it's 88 challenges. So I'll see I'm gonna say it's a
New Hampshire company
New Hampshire boom done. All right
now it gets into this the address here, so
Let's do
Let's do this
270
Okay now now
if your system
Automatically populates the address you're gonna have to grab this portion and move it down to the mailing address
area
because this
This is the line for internal address.
This is an issue that the USPTO website has.
It'll auto-populate, but when it auto-populates,
it throws it into the first field,
but the mandatory field is the second field,
mailing address.
So you've got to start,
that's where you want to put in your mailing information.
Then you select your states, boom, ba-boom, ba-boom.
Your zip code.
Let's throw that in.
And then you can put in your phone number if you so choose.
Just remember, if you put in your phone number,
it's gonna be on public record,
so other people can see your phone number
and call you or spam you.
So it's better if you have a business number
as opposed to your personal cell.
One of the reasons why you would want to put a phone number
is if the examiner just wants to ask you a quick question,
instead of giving you a big rejection,
they can actually pick up the phone and call you.
So that's why you can put your number down there.
And then you put down an email address.
So I'm just gonna put down,
let's do that.
We'll just do that for now.
Delete that, okay.
So now I go back and look again.
That's the company.
That is the entity type.
Yep.
Then the address, mailing address, yep.
City, state, all that's right.
Most of the time,
you're just gonna have to deal
with this domicile address thing.
I don't want to confuse anybody.
Email address, and then continue.
Okay, so now you get to the entering
of the trademark itself.
So now we get to have some fun.
Some people type in the chat a trademark, like a wordmark.
Just type in whatever you want to file for.
Don't let it be your own trademark, okay?
Just make up a word.
So let's see what you guys come up with.
This is where it gets really interesting
to see what people come up with.
We need that Jeopardy music again.
We do, we totally do.
EduCourses.
Anything else?
Yes, I get it.
Apps.
Do you want to just file for EduCourses?
We can just do that.
I don't see any other suggestions, so let's go with it.
Jennifer had one.
She had Byzantium, but it was extra.
So she had a lot of options.
She had a lot of options.
She had Byzantium, but it came directly to me only.
He couldn't see it, Jennifer.
What was it?
Byzantium.
Hold on, I'm putting it here.
Byzantium?
Isn't that like an actual element?
Byzantium.
I think you're thinking, no.
Actually, let me check my handy-dandy mouse pad.
Are you serious?
You have one of those?
You're such a geek.
That's hilarious.
So I think it would be towards the bottom right.
No, bottom left side.
See if you see a Byzantium.
She's looking.
That's great.
Maybe it's not an element.
Unfortunately, you have me working
so wonderfully diligently for our members
that I've kind of worn it out.
So it's a little hard to read.
Okay, no problem.
Well, let's go with the first one we got, EduCourses.
The reason why I didn't want to file for EduCourses
because I think EduCourses might be argued
to be descriptive of courses.
If it's educational software,
the examiner is going to send back a response.
Larissa, what happened to you?
You look so different.
Oh my gosh, Larissa.
Your hairstyle changed, Larissa.
What happened?
Hey guys.
She's loaning him her hair.
All right, so I'm not going to go with EduCourses
because I think an examiner would reject that
because it's for educational software,
which obviously is for courses that includes education.
So I think it would be rejected for educational software.
So for that reason, I'm going to go with Byzantium.
Byzantium, sounds like something that would be mentioned in,
what is that?
Big Bang Theory.
That's what it sounds like,
a word that would be used there.
Bazinga.
Big Bang Theory, Byzantium?
Yeah, he says Bazinga.
He always says Bazinga.
That's his tagline, Bazinga.
Bazinga, yeah.
It's good, I like that.
Okay, so Byzantium, I type in right here
where the word mark is.
It's just standard characters.
A special form is...
is when you're filing an application for a logo.
We're not gonna go through that.
But if you click on special form, you'll see here,
you just attach a picture of the logo there.
Then you got to describe the logo.
It tells you exactly what you need to do.
So these are the kind of questions
the attorney are gonna ask you.
They're gonna say, send me a sample of the logo
that I can file.
And that's what they'll attach here.
And then they'll have to describe the logo in details.
Right down here,
this is where they have to describe the logo in detail.
One little tidbit that is, again, not legal advice,
but something that is gonna make you very powerful
as a business owner is knowing that
if you file things in black and white,
they have more strength than if you file them in color.
If you file something in color
and you try to claim ownership to the color,
then it's more specific to ownership of that color.
But if you file it in black and white, you own all colors.
So when you file in black and white,
if anybody uses it in any color, they would infringe.
If you file it in hot pink and orange,
technically, you're supposed to own hot pink and orange.
Obviously, if somebody uses a different color,
you're gonna argue, likely there's a confusion,
but you're gonna have such a stronger case
if it's just black and white, you own all colors.
So I always tell people file black and white.
So you just type in the word again here,
Bazinga, Byzantium, and you move on to continue.
Okay, now's where it gets more fun.
So here's where you click on the goods and services
that you want to use.
So we click on this and now give me, type in the chat,
what should Byzantium be for?
Like what kind of product or services should it cover?
Let's see, rare gems in education, language training,
another person in education, okay.
So we can go for that perfume, perfume, Bazinga, Byzantium.
Byzantium, Byzantium perfume for that person
that's just out of this world, Byzantium.
All right, so I'm gonna go with education.
Oh, that's going on the bloopers, I hope you know.
I have to be careful with Ray
because she creates these blooper reels
and then she sends them out to my people
and I find out after the fact and I'm like, great, great.
All right, so for someone who's very old,
great, Bazinga, bringing you back through Byzantium.
All right, let's go with education
because there are people that are gonna do educational work.
So I'm just gonna select education.
So I type over here, you can't just kind of say education,
you have to say what you're doing in education.
So let's say like, oh, here you go,
providing online training courses.
So if you just type in online training courses, go.
You see how it says here,
providing online training courses right there.
You see how it gives you exactly what class it is
and what language to use.
That's pretty great, right?
And that's because you filed a TEAS application,
TEAS plus application.
If you filed the other one, it wouldn't give you all this.
You'd have to figure it out yourself.
Or let's say for discussion purposes, we wanna do perfume.
So just perfume, press perfume.
And look at all these things that pop up.
Class three, perfume, perfume oils, perfume burners,
eau de parfum, let's see.
There's perfume atomizers, all these things here.
So let's say, let's go with perfumes.
So we're gonna select perfume.
Let's say we have a perfume powder also, a perfume soap.
Select that.
And let's see, it's non-medicated soap, got it.
This is curious down here.
It has two that say the same thing on them.
Look at that, perfume soap as a non-medicated soap,
perfume soap as a non-medicated soap.
It's the exact same thing.
Oh, one is plural and one's not, go figure.
So I would choose both perfumes and colognes, sure.
Let's see, oh, a toilet water, great.
I'm gonna leave that alone.
Oils for perfumes and scents.
Okay, let's say that's all we want.
with. Let's say we just did powders, perfume soap, and perfume. Let's do perfume oils too. Okay,
so I just select all the ones that are important for me, and then I just
go and insert the checked entries. And look what happens. They all pop up. See,
they're all populated on the list. So now what the paralegal does is she looks to see or he looks
to see for each one of these items, is it actually used or is it not? Because you have to assign a
filing basis. So here it says assign filing basis. So now they look and see, okay, is it actually
being used? And you see the words here, actually using Mark in commerce now. Or if it's not being
used yet, no use of Mark yet intending to use. Pretty, I mean, it's pretty straightforward.
So let's say we do have perfume, but we don't have any of these other things. There's no oil,
no powder, no soaps, and no, we'll say that there is, actually, let's say that there's no cologne
yet. There's only a perfume. So I select all of those and I just select 1B. And then it gives me
this box here to say that I understand that I'm filing an intent-to-use application and that at
some point I'm going to have to change it to an act-to-use application. So I select that. Yes,
I understand what I just said. That's why I pushed it. And I click assign filing basis.
And look what happens. Everything says 1B on it. See that? All of these say 1B now.
But there's one that does not. So if right now I said continue, see, it tells me there's an error
because one of them doesn't have a filing basis, namely the top one there.
So now I have to assign it a filing basis. So let's say I'm actually have,
I have sold it in interstate commerce. I click select section 1A. Now I've got to attach a
specimen to actually show the use of the name on perfume. I've got to describe the specimen.
I've got to say the date that I first used it. Let me just put in some dates here.
So there's a date of first use anywhere. That means within my companies, I can list it
as being used. But then there's a date of first use in interstate commerce. So that's like when
I started selling it across state lines, that would be used in commerce. So I put in the dates.
Those dates might be different. So if I started using it in my company, then the date I started
using it immediately, that date should be here. But then the date that I started doing sales,
that would be here. Okay. And so I'm just going to grab a specimen of some sort.
You just click choose file. Just take an image, images, pictures.
Let me just take a picture of some sort. How about Salt Bay? Yeah, that's it. We're going to grab Salt
Bay. Salt Bay is going to be our attached image. Let's see if it fits. Yep, it does. Okay. Return
to form. Okay. So let's say that was our specimen was the one that I just attached. Great.
I have to describe how the trademark is used on that specimen. What a specimen is,
is it's something demonstrating use of the trademark on a good or service. So if it's
here on a candle, then all I do is I take a picture of the candle with
the logo right on it. That's a specimen. It's showing use on a candle.
And then all I would do underneath it is I would say digital image of products having
trademark there on, oops, trademark there on, something like that. But instead of saying
product, I would say what it is. So let's say, let's say digital image of box having perfume
there in with trademark, with trademark on the box. There you go. That would be a description.
So now I've got the picture of the box with the trademark on it. I've got the description of it.
I've got the date that I searched first use it internally. The date that I use in interstate
commerce, assign the following basis. Boom, done. Look what happens here. Section 1A, there it is.
Now it's there. So at this point, every single one of the list of goods is
showing either section 1A or 1B in this case.
You guys are not likely gonna deal with 44A, 44E.
That's all for foreign applications
and you're not dealing with that.
So now I click continue.
So now if I have like an internal matter number,
oh, Jennifer said, so if it's on a website,
then you screenshot your website
and use that as an upload image.
Okay, so it's a good question.
So when it comes to specimens associated with products
that I'm selling on a website, I wanna show the product.
I wanna show a way to purchase it on that picture,
on that image as well.
There is, you know what I'll do?
Ray, can you DM me or send me a message in Facebook?
There's a page from the United States
Patent and Trademark Office.
I wonder if I can find it real quick.
If I just type USPTO.
No, it doesn't pop up right away.
There's a page from the USPTO that describes
what are acceptable specimens for different things.
It's a really good PowerPoint.
I actually might have that.
Let me take a look.
Do you have that one still?
Okay, if you have that, you can post it.
Otherwise just remind me
and I'll post it in the Facebook group.
And so for goods, typically for goods,
you wanna take a picture of the packaging
or the product with the name on it,
but the name has to be there.
But you can't just take a picture of the packaging
without the name on it.
It has to have the name on it,
showing that it's a trademark, right?
Then that picture should suffice.
But if I'm selling products online,
then I might have to go and take a screenshot
of the product on the website,
the description of the product
that's next to that product,
and then the price right there
with a purchase here button.
So that shows that there's,
that is a picture of use in interstate commerce
because people are buying through that site, right?
So that would be an example of a specimen
that can be used there.
Let's see, you can add a second email address here,
which is pretty cool.
You can add second address.
So let's say you have a business partner
or you have an admin,
you can add the admins info.
This reference number is
if you have an internal docketing number
that you wanna use.
If you do, you can write it there.
You just click continue.
And now it tells you the fee.
Since we did the filing that I told you about,
where it uses the United States Patent
and Trademark Office descriptions,
it costs you less.
If you use your own description,
it costs you $350.
So this is the fee that your attorney will charge you,
a third party fee, $250.
And then your attorney
will either sign it directly themselves
or they'll email it to you by clicking that
and then typing in the information.
But what I do for a lot of my own clients
is I actually sign it myself.
And then you have to confirm all of these things here.
So you have to read it,
but it basically says,
if the applicant is filing the application
based on use in commerce under blah, blah, blah,
it says that you believe that they are the owner.
The mark, you believe that the mark is in use in commerce
and was in use in commerce as of the filing date.
You believe that the specimen is showing use.
And to the best of signatory's knowledge and belief,
the facts recited in the application are accurate.
This is an actual declaration you're making
to the federal government.
So don't play around with this.
This is a big deal.
Lying on this is a federal offense.
So it's a big deal.
Don't take somebody else's trademark file on it
and then say, yeah, I believe I'm the owner.
If they find out, that's a big problem.
And then it has these other lines here.
To the best of signatory's knowledge and belief,
no other persons except if applicable concurrent users
have the right to use the mark in commerce.
See, so if somebody else is using it
and you're filing for it,
you would be lying by clicking on that.
To the best of the signatory's knowledge,
information and belief formed after an inquiry,
reasonable under the circumstances of the allegations
and factual contentions above are,
all right, so basically saying you believe
that what you're saying is true.
And then you're being warned
about willfully false statements.
Again, imprisonment.
That's one of the things that can happen.
So don't steal somebody else's thing and file on it.
Just not smart.
Then to sign, you sign here.
there, you type in a normal name there, the position of the individual, and then you validate.
So, and signatures are, you put slash, the name, what am I typing here?
There we go, the slash goes in there, and then type the real name again,
done, and then the position. For me, I'm usually doing this as an attorney of record,
and then you just click validate, and that's it. Once you do that,
you get to the next screen here. Oh, one of the boxes has not been checked.
Oh, somehow it got unchecked. I don't know how it got unchecked, but it did.
You click validate, and there you go. Now everything's ready to file at this point.
If you click on the input here, you see everything that you entered.
So, we're filing for Byzantium, standard characters. That's the entity's name,
the address of the entity, the phone number, the email address, the company type, and the
state of incorporation, the international class of the application, the goods that
are associated with it. It's a section 1A, which is the actual use. This is data of use internally,
data of use anywhere in the world, the specimen that was filed, the description of the specimen,
and then there are other ones that we listed, but none of those are used yet,
so they're all section 1B, and that's it, and it gives you the price and the information.
Now, I'm not going to do the rest, because if I do the rest, it's actually going to submit,
and I'm not going to do that, but after all that's done, the attorney will look through
literally every single part of this. Again, make sure the specimen's right. Look at the XML file.
Make sure this stuff is all correct. There's nothing wrong in the XML file. If nothing's wrong
with the XML file as well, they're going to look at the text form as well. Make sure everything's
correct there. If all that's correct, then what they'll do is they will click on this button here,
confirming that they read everything, and then they'll paste submit.
That is a breakdown of a trademark application filing beginning to end.
Now, there's pieces that are really busy to happen in between there,
but that's literally every single part of a trademark application. If you're thinking to
yourself, all right, I've got to file an application, and I've been using it, you should be asking
yourself, well, where's the specimen? Before you even call a lawyer, what you don't want to do is
call the lawyer and then spend a half hour talking about, oh, what do I need for an application?
You know what you need for an application, because now you just spent $300 on the phone
with a $600 an hour attorney asking information that you learned for $95, or in this case,
for 195 on top of that. You've got all the information you need, put it all together,
and then present it to your attorney. Say, hey, I'd like to file an application.
Here's the international class. Here are the goods or services. Here's the specimen. Here's the name.
Here's my corporation. Here's the state of incorporation. Here's the address of the
corporation. Here's the email address that I like to utilize. Here's the backup email address that I
like to utilize. Please file on my behalf. Clients like that make my life easy.
That I go all day, like go for it. I speak to my paralegal, have them put it all together,
and I spend time reviewing everything, much more straightforward. That's why I made it part of my
own package. If you look at the package that I have, that I've given all of you, should you
decide to partake in that, you're actually going to get a form from my team because you become an
actual attorney. Attorney, yeah, that would be hilarious. For $95, you become an attorney.
That came right out of a crackerjack box. What you actually get is a trademark application form.
On the application form, which we created, my own team, it has the boxes to fill in for each of
these things. You put all that stuff together. My team then takes all that, gets it to me.
They do a bunch of work on it. They get it ready to file. They send it to me. I review it all,
everything that I just did there. Then it gets filed. Very clean, very clean. That's the way
you should be working with attorneys, not, hey, what do I do? I don't know. No, you should,
you should have a good handle on this. Otherwise, you spend so much money. And I'd much rather you
don't, you know, you don't do that. I want to respect your time and their time too. Because
so that's why that's actually part of the package. It includes a quick trademark search,
plus includes a trademark application. And the the filing fee with the United States
Patent and Trademark Office is included. Plus the trademark application filing is included.
Everything's included in that one fee. Okay. Ray, were you gonna say something? Are you all good?
No, all good. Okay. All right. Does anybody have any questions about what we've done so far?
So I'm checking to see if anybody have any questions? No. So it's pretty simple to follow
along. Right. So that's why I want to do that slowly. Make sure everybody understood every
single part of it. Now, let me answer a few questions that I get quite often.
I get people asking this question. They say, there's a trademark that has three words.
I want to use two of those words with another word. Can I do that?
It always comes down to likelihood of confusion analysis. Does it look the same? Does it sound
the same? Similar goods and services? What's the cost of the product or the service? These are the
things you're going to look at every single time. It's always the same analysis. So if somebody owns
like Microsoft Excel and you want to use Excel, then you should be doing a trademark search for
Excel alone and see, oh wow, Microsoft actually uses, actually owns the word Excel alone
in international class nine, which is associated with software. I can't use it.
But if there's a trademark application that is, or a trademark that's owned by the other party
and they have a disclaimer of a word, that means they're saying that they don't own that word.
So let me see if I can show you an example of what a disclaimer is.
See if I can get lucky here and show you an example of a trademark where there was a disclaimer.
So you can see what it looks like when you do your trademark searching.
Okay, close all that and open this. Done. Okay, here we go.
All right, trademark search.
So basically it would be a trademark where one of the words
is a commonly used word. So they can't own that one word alone.
Let me see.
I recall some from our audits. We came across some of those.
Oh, we did?
Yeah, it was probably about three or four audits ago. We came across one, but I can't recall.
Yeah, let me see. I'm just trying to think of some good trademarks that are out there that are like
that fall into that category.
Nothing's jumping to mind. Anyways, you'll see. Let me just type. I'll type in a word,
see what comes up, and then I will. Here we go. Okay, I found one already. Let's see if this works.
If I could find a disclaimer on one of these.
Okay, here we go. Does this have a disclaimer?
Yeah, all right. Here's a good example. Share my screen. Thank you, God, for the example.
Okay, here's an example. There was a trademark application filed for Nike Unlimited Care LLC
by Nike Unlimited Care, DBA Nike Unlimited Care, blah, blah, blah. See how it says right here,
no claim is made to exclusive right to use Unlimited Care LLC.
That's called a disclaimer. See, it says right here, disclaimer. That means you can use Unlimited
Care LLC because they disclaimed ownership to that. Let's say instead of using Nike Unlimited
Care LLC, you want to use, let's say, Flair, F-L-A-I-R. You want to do Flair Unlimited Care
LLC. Well, they disclaimed the words Unlimited Care LLC, so they can't stop you from using
Unlimited Care LLC. If I come out with Flair Unlimited Care LLC, Flair does not look like Nike
in any way, shape, or form. Technically, I shouldn't have an issue.
That's the way that analysis is done. If you see a disclaimer and something that is returned to you,
That means they don't own it and they can't stop you for using it because it's disclaimed. They don't own that
Okay, that's the way that analysis works
All right. Does anybody have any questions? We went really really really deep today
I don't want to like blow somebody's brains before we get into fun stuff like copyrights. So
Um, especially with gatorinas question, man. That was that was deep
But um, does anybody have any question on anything that we've covered so far or anything in trademarks at all?
If you do you can just unmute
I have hair splitting questions on spelling
So, you know how when people are domain searching and they can't find the actual word available
And so they just kind of tweak the spelling
How does that apply for when you're applying for trademark?
Yeah, that's a good question. Um, so phonetic equivalents are supposed to pop up when you do a trademark search
If anybody doesn't know what phonetic equivalents are basically things that sound the same, but they're spelled differently
Right. So they're there they're
Right. I didn't say that to make everybody feel better because we're training in a lot of content. I said that because there's t-h
E r e t h e i r e i r. Yep, and then there's t h e y
Apostrophe re I think that's another one, right? So there's there they're there there's lots of different theirs
Okay
so with that being the case
When you search for their t h e r e it should come up with the e i r and the e y
Apostrophe re
I can tell you honestly, it does not work all the time
I tell you as a fact it does not work all the time
um, the uspto website
Is good, but it's I think it's probably 60 65 percent efficient
Um, but it's a free tool
So if you have like five or six different trademarks that you're looking at you can knock out
A good three or four real easily by doing a quick search on your own
But I wouldn't I wouldn't then take the two that I left over and go. Yay
I own these like then I would actually get a real search done
There's a company called thompson reuters
Probably the best trademark searching company in the world
Absolutely phenomenal. I use them for all my clients when they get to the point where
Um, they definitely are ready to like, you know
To own like this is their main brand. This is a big deal
It it's a charge of their fee is eight hundred and twenty dollars just for the search
And they come back with a book like it's like this thick it has corporate names
It has state registrations federal registrations
Um, it has domain names
Uh google searches other searches publications like it has everything in one thick book
And the beauty of it is that they also send it to you electronically so you can search it
Electronically it is it's a really good deal. So if this is like a really important trademark to you
I would look at potentially getting a thompson reuters search that search is not included in that package
Just so everybody knows that eight hundred and twenty dollars search is not included
Um, what we do is we'll do like a top level search for you using the uspto website and some other sites
Uh, but if I drop it in the chat too there for you thompson reuters
Yeah, that that is a they're a good company. I have visited their site. I know people there. They are very good
It's high security to get into that place. You can't even get inside
um
Without clearance to get inside because their records are really solid. So
um
You definitely should should look at that if you've got a trademark that is extremely important to your company
I would look at having a real search done. But what I would not do just to be clear
I would not go out and just hire thompson reuters without having done your own uspto search first
That will be an extreme waste of your money
If you could have gone on to the uspto website and done a search like I showed you yesterday
And realize that it's dead. You won't waste 820 bucks
All right, but if it looks like it's it's good
then you can reach out to them to confirm it before you spend like
1200 to 1500 or more
on filing of a trademark application, okay
Okay, carolina. Yes
um
You just reminded me of something
you said um
If it's dead, then it's fine you you can go forward with your own
Is that yours not necessarily?
I mean what I would do is if if you do a trademark search and you see a trademark is dead
I would do further research to make sure that it's not being used because
Just because on the uspto website it says it's dead
that does not mean the company is not using it.
It just means that they didn't renew their trademark.
For that.
So if it's dead, but they are still using it,
then you can't, is that correct?
Not necessarily.
Or does it get more complicated?
Not, yeah, so man, you ask the deep questions.
This is so good.
I love these questions.
These are good questions.
All right, so let me explain exactly what you,
what you asked is a really good question.
So you can notice like I come to life
when I get questions like this, love this.
All right, so here's the way that it plays out.
If somebody has a federal registration
and they don't renew it,
they lose ownership throughout all the United States,
but then it falls back on what?
Common law rights.
So now it comes down to where have they actually
used the trademark in interstate commerce.
So if they've, if they've done sales in,
oh, Larissa, you can head out.
She go already.
Okay, good.
Yeah, I know Larissa had another meeting.
I went over today.
Surprise.
I'm about to go jump on a plane too.
So I'm gonna jump on my phone.
Yeah, I know you are.
I'm gonna finish in like two minutes.
I'll finish in two minutes.
So what'll happen is
if they stop, if they don't have the registration anymore,
it comes down to common law usage.
And so you look at what are specific geographical regions
in which they've used it.
And those regions you couldn't do it,
but in other regions you could
because they no longer have a federal registration.
So now it becomes jurisdictional district
versus jurisdictional, man, that's hard to say.
Jurisdictional district versus jurisdictional district.
Wow, that was tough.
So that becomes the battle.
So now Destin, Florida versus like Pensacola, Florida,
they can both coexist.
No issue, right?
But whoever had the federal registration
owned all the United States.
Once they let it expire, it's dead, it's over.
What's up, kitty?
All right, so with that, I'm going to close.
Does anybody else have a question before I close?
No, okay, all right, cool.
Tomorrow we jump into copyrights.
Big, big, big subject matter.
We're gonna dig into a lot of different things there.
So if you got questions, make sure you bring them with you.
I think Tekenya typed one out.
Tekenya?
I'm probably butchering her name.
Did you type a question, Tekenya?
What is it?
Let me see.
Can you unmute?
Yeah, you're muted.
Yeah, that was in my question.
My son's watching TV in the background,
so I typed my question instead.
Can you hear me? Oh, you sound clear.
Yeah, you sound clear, you're fine.
Okay, okay, so I just, all of my businesses,
especially because they revolve around my name,
which is already unique,
I haven't found anything that's even close in the search,
and I already own the dot-coms to all of them.
Do I need to bother working through the other factors?
Yeah, so ownership of your own name.
With the United States Patent and Trademark Office,
you can't own your name unless you're well-known,
like famous.
Okay, that's basically how it looks.
So I've been using Tekenya Rosetta
to sign my artwork for 20 years.
I mean, like-
So that would be your argument then.
Your argument would be that you are-
And I have, I own a business license
called Tekenya Rosetta
that all of my contract services for photography
and painting and everything goes under.
On your own application,
you would select that you are quote-unquote famous, right?
And then on top of that,
and that's the way you got to do it, and that's okay.
But what you end up doing is you're disclaiming your name,
just so you know, you end up disclaiming your name.
So you essentially lose rights to your own name.
If you file in the name of a company,
then you're giving your company rights to your name.
Or this sounds like probably stuff we need to go over.
I would.
My meeting with you.
Yes, honestly, I would because-
I'm gonna buy your offer.
I just had to move some money around, so.
Yeah, sure.
No, it'd be an honor to work with you, honestly.
It really would be.
I like you personally, so.
I think the- Oh, thanks.
Yeah, but I think the,
like if you think of people like Tony Robbins,
he owns his name.
Grant Cardone, he owns his name.
Sure. Other people,
they own their name.
But what they're doing is they're giving rights
to their name to a corporation.
Yeah. So that's one thing
that they have to- Well, so,
but I'm gonna be producing products under my name.
So I guess that's all stuff we'll need.
We just need to talk about it.
We'll talk about that.
Yeah, we'll talk about that. Yeah, okay.
All right, my friends.
I am going to jump off.
Ray, thank you for staying later
than we originally intended.
Bless all of you.
I will catch you tomorrow.
Congratulations on completing day two
of the Five Day Protector Idea Challenge.
Have a wonderful evening, everybody.
Take care.