I agree about the need to hire someone to research a business name. I decided to research my new name to replace the prior name I had because I gotten a cease and desist order from an attorney. The new name I thought up was proved by the trademark company, not to be available, so the next name I researched was found to be available. Sure it cost more hiring an attorney, but when I saw the hundreds of pages of research that was done, we knew we'd be able to keep the name.
I appreciate this video so much! It is one of the few that I have noticed that has mentioned the importance of research before filing. I had to deal with an ugly trademark case myself. Pretty much hired a company who claimed they did a "comprehensive search" however there was nothing comprehensive about the search, the proceeded to file my trademark and I got a refusal from another trademark with an extremely similar name in the same classification! I did a search myself on TESS database and the conflicting mark was almost one of the first that came up. That's ridiculous!! I ended up losing thousands of money because this company gave me the wrong info. I then hired another company, were they more pricey? Yes but it was worth it. Hiring those half priced companies is a scam and will damage you in the long run. I feel passionate about this topic because it can really hurt one's income. If you are really looking to invest in your brand, make sure the name is available nationwide and hire professionals, not pure filing companies who claim they are doing the same work for less.
Thanks for your comment and question. To best protect the name and logo for a line of clothing, you generally would want to file for federal trademark registration with the USPTO in two applications, one for the name, one for the logo.
Absolutely brilliant! You’ve just answered every question I had swimming in my head in nearly the exact same logical order I have been thinking about them. Top Draw! Bravo. Thank you guys so much!
I too acquired a Trademark and it is a very difficult process. Simple mistakes can be costly. The lessons I teach in my book "Business Lessons of a Rookie Entrepreneur" coincide directly with your video.
Thank you for your comment. It is _always_ better to file sooner, because you have more protections that way. If you want until October, it is possible that someone else comes along in the next few months and begins using, or files to register, a similar name and causes you - at a minimum - additional headaches and costs.
Thanks for watching and for your comment. This is a complicated question and thus I cannot even try answer it on this forum for a variety of a reasons. There are a variety of options and possibilities, and the wrong choices could jeopardize the application/registration.
It takes about a year - on average. It can take longer. But you have some additional protection as soon as the application is filed and you receive a filing receipt and serial number and effectively reserve your place in line at the USPTO.
Thank you for your comment. In the US, a trademark application can be filed based on an "intent to use" the name. In order to complete the registration process, you would have to show evidence of using the trademark in connection with identified goods or services. There are many complex issues related to such a filing, including the description of the good/services and the procedures and time limitations association with an "intent to use" application, which I do not have enough room for here.
Thanks for watching and for your comments. I cannot comment here on specific cases and situations. In general, the USPTO will only search their records for possible conflicts when a new application is filed. So it is possible someone else could register the name if you have not applied for it. But you may have other remedies to deal with any infringement due to common law rights, in that scenarios, if you were using the name first and the goods/services are related.
Thanks for your watching and your comment! The short answer is YES: when both a name and slogan are registered separately, you are protected when they are used separately or together. If you have any other questions, please visit my website and click "schedule a free consultation'
I cannot answer that question for you here because it would clearly be legal advice. It provides a good example of the many decisions that go into filing a trademark application, and why using the counsel of an experienced attorney is valuable.
If I understand your question, in general the copying a description of goods or services from an existing trademark registration is not infringement. However, there is no guarantee the description will be accepted for your application. And having a proper and accurate description is an integral part of of the application.
Thanks for comments/questions. While I cannot provide specific legal advice here, because I don't know all the facts, I can state that when applying in "standard characters" the evidence of use can be in any font or form - it does not need to match the USPTO's standard character display. In other words, use of the Google logo is evidence of use of _both_ the Google logo and the GOOGLE standard character trademark.
Michael, A registration based on an "intent to use" application has all the same protections. But in order to complete the application process when the filing begins as "intent to use," during thr applicatioj process you will need to show evidence of using the mark in commerce on the goods or services, and meet all of the other registration requirements.
@guitarplayer19651 It is not necessary to have a logo in order to apply. In general it is more important to protect the wording than it is to protect the design.
Erik M. Pelton: Love your work here. Very thorough [and have added it to one of my playlists] My question is, if I file a trademark and a tagline seperately, since I paid for them both, can I use them together AND apart? Example Trademark 1: My Company Inc Trademark 2: We Are The Best Lets say I want to use "My Company We Are The Best" [both trademark 1 and 2] together in an add. Would that create conflict?
This is a complex question. I cannot provide a specific answer here, since the facts are unique in every situation. Generally, the more unique + creative a trademark, the wider scope of protection it has. Plus, famous marks get wider and additional protections. If you choose a name that you know is used by a company with a lot of money, you would be wise to plan on having to spend money to defend it - even if you have a strong case the other company may still be aggressive defending their marks.
Is there typically any legal action taken against a person found to have fraudulently obtained a trademark on a common, commercially used descriptive? How about against an attorney representing that person who clearly failed to perform due diligence?
Other than an action to seek to cancel a trademark registration that has been fraudulently obtained, action against someone in that scenario is quite rare, at best.
Hey thanks for your great videos!! I want to register my logo with the name "Caza Y Pesca" wich means "fishing And Hunting" but there's a tv company in Spain with the same name but different logo. Can I still register the same name but different logo? In the registration of this company I found this info. ( Disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CAZA Y PESCA" APART FROM THE MARK AS SHOWN)
Thanks for your comment. I cannot provide specific advice here, and of course there are always many factors and variables. Also I'm not sure where you are located or which country laws might apply. But generally names may be able to co-exist if they are in very different industries (especially when the names are made up of weaker terms). It is generally safer to have a unique name.
Thank you for your informative videos, you’re helping me slowly get a grasp on these concepts! Do you mind sharing your opinion regarding my specific copyright question? I created a unique holiday in 2010 and began celebrating it yearly with my community beginning in 2012. I’d like to secure intellectual property rights for this holiday and any income-generating novelty items associated with it (such as decorations, tshirts, etc). Is this a trademarkable scenario?
If you file a collective membership trade mark. Do you have to have proof of members or have to have filed an income tax formusing the name that you registered?
Thanks for watching and for your comment! I can't give out specific legal advice here. It sounds like you may have both goods and services in your situation.
Fortunately, I received good advice at the beginning, like you are offering and now my trademark/servicemark cleared the 30 day published for opposition period 2 days ago. There is another business, similar to my own, using this slogan. I started using the slogan 2 years before their business was established so they don't have common law rights. My question is do I have to wait until I receive the certificate in 7 weeks or can I have a cease & desist letter sent by an attorney now?
hello, great tips in video. I hope you can answer my question, I have a company name figured out for a cookie manufacturing company I want to start somewhat like Nabisco. I want to sell different flavors of cookies and I didn't know if when I file the trademark application I need to mention all the different kinds of cookies I want to produce, or do I just broadly state the company name I am trademarking manufactures and sells cookies via website and or by different companies such as Walmart, Walgreens, etc...I want to protect the name of the company along with a logo. 2nd part- as long as I have the name protected and it is same spelling as logo can I use different logos?like if my company is by example trademarked as"The Cookie man" can I just trademark the name and use different logos depicting different designs while still using the trademarked words "The Cookie man"?
While I can't provide you with specific legal advice here, feel free to head over to erikpelton.com and send me an email through the site that I can respond to. In general, when you file for a logo, you only are protecting that specific design.
Well, I am not sure who used it first. I have been using it since last year and I am quite sure they would claim the same. But i did noticed their website (that's the only thing I could see) was under construction.
This video is great but it also makes me have more questions. For instance, if I initially was the sole owner of the business when I applied for the trademark application but a few years down the road decided to become an LLC would that make the trademark null and void (or if I became an LLC while waiting for the trademark approval) ??? Thanks
Am I correct in understanding that for each name and logo I inent to use such as a school name and logo of the school to use for coffee mugs, correspondences (envelopes and paper) on the martial arts weapon handles and the cover of book/ manual that would be a separate fee because each ONE will be use in separate goods which we may sell for fund raising purposes (The school are an IRC 501 (c)(3) Public Charity Corp)? We are now using the name and log on the school window and uniform , would the school pay a separate fee on TEAS plus application?
I can't offer specific advice here unfortunately, because I don't have all the facts. But in general if the other term is used in an industry which is totally different from yours, and if your acronym stands for something different, then you may be able to register and protect it.
The earlier filing date - when you begin getting some rights - and appearing in the public USPTO database once it is filed. It is almost always better to file sooner, even if it means using the "intent to use" filing. Here is some more on the topic: www.erikpelton.com/intent-to-use-trademark-application/
Over time, the systems have changed a bit, as have the filing fees. I currently use TEAS RF most often, and sometimes TEAS Plus. I never use TEAS Regular. One reason that I prefer TEAS RF is because it provides more flexibility with the description and classification of the goods and/or services.
company name is x and company web site is xy. i usually use x for company name and only use xy because x alone is not available for .com domains, make sense? i would like to trademark simply x with an image for x. will the search and find of my web site xy make my application for x create a problem? thank you both for you sharing.
I have not registered my company name yet. May I first register the trademark on my name then transfer the trademark to compay later? I have plans to use the same word on both for trademark and company. Please advise. Thanks
While I cannot provide specific advice here, and I don't have all the facts involved, I can note that it is possible to transfer ownership of a trademark and trademark application or registration. And generally it is advisable to begin the trademark application process as soon as possible.
Is it necessary to register a company with the state first and then apply for a trademark? I ask because on the signature section of the trademark application asks who is signing on behalf of the owner..... What if it is only the owner of a starter businesses and no one else?
If there is no company yet, the application could generally be filed in the name of the person starting it and later - if applicable - transferred to the company. Generally ownership by a corporation or LLC, if there is one, is advisable so that you take advantages of the legal protections of having the separate entity.
If I want to Trademark a restaurant and the names of the drinks sold there, can I do it under one trademark or do I need two? One for the name of the restaurant and one for the name of my signature drink?
BRANDY SCOTT that would most likely be two separate filings. You generally can’t multiple marks into one application. And you get better protection when separating the filings when applicable.
Unfortunately, I cannot get into that level of specifics on this forum. If you would like to schedule an initial consultation, please contact me through my website.
What if a person fails to check to see if a term is a generic term used for a long time by others although not trademarked? Like, for example, "contact sports."
Thank you for your question. However, it is difficult to answer this hypothetical. I'm not sure who is using the generic term or what the problem is. If you use a generic term as a trademark, it will generally not be possible to protect that name or to stop others from using it. Here are is blog posts I wrote that might help: www.erikpelton.com/2012/01/25/avoiding-generic-trademark-use-by-using-generic-term-after-trademark/
HI Erik, I write because academically, you might find this interesting. To take it out of the hypothetical for you, we have a situation where we are attempting to prove that a person filed for just such a trademark. She used "reborn baby doll" which has been a commonly, generically, commercially used descriptive term for a type of vinyl doll that is "remade" by reborn doll artists into ultra realistic "babies" and sold to collectors. This artform has been around since the late 1990's but she claims she is the first to use the term beginning in July 2016. What she has done (and got away with it due to an apparently lazy internet attorney's help), is tantamount to McDonalds gaining the trademark for "cheeseburger". We may not see her prosecuted for this fraud, but we do believe that we will see the trademark overturned.
Thanks for sharing. I was unaware of this term or this dispute. I see that there is a current registration for "REBORN BABY DOL" here: tsdr.uspto.gov/#caseNumber=86618275&caseType=SERIAL_NO&searchType=statusSearch
Hello so for the info @ 7:42 How do one register both .. for example Logo name Intent To Use But on some things I use ITU ( intent to use ) abbreviating
Generally requires filing multiple separate applications. Feel fee to contact me if you want to schedule a time to discuss your particular situation. www.erikpelton.com/connect/
I just viewed your video and I found all of the content very helpful to me in going forward with my trademark. I have a question. My trademark is my deceased brother's name, because my brother passed away before we got our clothing line off the ground, to honor him, I choose to use is name. Other than my DBA, what else will I need to show that I can use my brother's name as my trademark along with my logo?
Thanks for watching and for your comment. I can't respond specifically, but the USPTO only requires consent when applying to register the name of a living individual, so registering the named of a deceased person should be permissible generally (as long as all the other registration requirements are met).
14:30 If i am currently only selling a subscription box of curated products, online, but have plans to eventually manufacture and brand my own products to sell on my website, would i include that in the scope of the TM or should i keep it as only a curated subscription box because the second half isn't true at the time of filing?
Thanks for your question. There are several options here -- filing two separate applications (one with items in use, one with items with intent to use), filing a combined application with both use and intent to use items, or filing an application now for the subscription box services and filing later when you begin selling your own products. There are pros and cons, and many nuances - another reason it is advisable to use experienced trademark counsel.
Hello, small question. The company I want to trademark is SMH Booth. I want rights and ownership of the name for my business. I want to SERVICE MARK the name so no one else could use it. I went on USPTO and I found the class 16 and 07 to be under photography (since it is a photobooth service). If I put TM or SM on my website and over my name, can't someone go ahead and start registering for the same name? Or does it depend who submitted their application first to USPTO?
QUESTION. PLEASE RESPOND SO I DONT WASTE MY HARD EARNED MONEY. CAN I REGISTAR MY COMPANY NAME AND LOGO EVENN IF IT USES A POPULAR ACRONYM OF AN ALREADY TRADEMARKED ACRONYM LIKE FBI meaning FAMOUS BOYS INC?? Please help
What if a logo brand has variations? Meaning, the logo and the logotype is used apart and together and have both horizontal and vertical versions?What if you want to register all those variations?
+Cuban Nerd thanks for watching the video and for your question. Different variations of a logo may need to be protected in separate trademark application filings in order to secure the maximum protection. At a minimum, it is recommended in general to file a "standard character' application for the wording alone, and one for the most used version of the logo.
I was wondering if you or someone else can help with trademark logo that has stylized anthropomorphic cat on the logo itself. Can i file 1 trademark logo that has an anthropomorphic cartoon cat logo where the cat face itself show the front view and side view of the same cat ? For Example like this image logo as 1 trademark logo for my company LLC? blenderartists.org/uploads/default/optimized/4X/2/6/e/26eb64fdd9119cbaaa56eb738d1b4f1ae0bb57e9_1_357x500.jpg
way back in 1977 I used a particular name with a logo. it was never register ,copyright or trademark. now I want to use it again but will like to add a different logo. can you help me or do you know who can , thank you
I am trying to start my clothing line I have a name and i am working on a logo. Do i need a trademark or copyright? I have tried to read up on it and it is all over my head plz help
Thanks for your reply. I have a name I want to protect but Im not sure what I want to do with it I just know I want it to be mine. Ive been using the name online since 95-96 and have proof of that through a variety of personal websites and a few informative motocross and supercross websites. Ive had .com domains with that name and some free websites back in 98. What would be the smartest way to protect that name without spending a ton of money on all kinds of different descriptions?
Hello Eric, hope your are having a wonderful day. :-) I would like to kindly know your opinion and or advice on a recent case please, within the video game community. Basically, a company named Bethesda, trademarked the word PREY, then another company, by the name of No Matter Studios, wanted to trademark the title Prey For The Gods.. Bethesda objected, and suggested for them to change it to Praey For The Gods instead, and they accepted.. So.. I wrote the following comment, while angry, (lots of people within the gaming community were angry too), I wrote it on other videos related to the games mentioned: - Start of comment - ------- "Prey For The Gods" is ALREADY DIFFERENT!! It has four words in its title!! >8^( Actually, if Prey For The Gods developers used ONLY "Preay" on its own, then yes, Bethesda can demand the change to something else!! Why?? Because of the "its sounds similar" rule!!! They have the right! But.. Prey For The Gods .. confusing with Prey? Wouldn't Bethesda's possible future games be titled Prey 2 or Prey 3? And if it is a DLC (Downloadable Contents), something like Prey: The Blah Blah Extra Maps DLC?? Now, what if someone wanted to make a game based on the Star Trek Prey novel? The first book? It is CLEARLY different! It sounds different! And people KNOW that they are two different Intellectual properties!! Eidos hold the Thief trademark, yet The Raven: Legacy of a Master Thief is held by King Art Games.. no problem there!! This is absurd.. By the way, I am not a gamer, I haven't played any game in like 20 years, and I have no plan to play ANY of the games mentioned here.. with all due respect to everybody.. :-/0- ===== - End of comment - So what do you think? I won't hold you responsible for all what you will say, but I want your general opinion or even thoughts on this.. Thank you very much in advance. :o) Sorry for my poor English.
I was not aware of this story. Unfortunately, I cannot comment directly on the matter because I don't have all the facts and I wouldn't want to get in any trouble! But the first term in a trademark is often the strongest, so I can see why Bethesda games might still be concerned about use of Prey For The Gods - it is different than PREY but perhaps not different enough to avoid confusion if the products are very similar.
This seems helpful, but I can't tell because my mind is wandering about ever 20 seconds as soon as the guy on the left starts talking. I really need some visuals, voice inflection, gestures, sound effects, flashes of examples and illustrations, or something. Is it just my ADD? Or is he actually that monotonous?
Can I sell helmets and call them coca cola? Im sure coca cola did not register their name to sell helmets. If I register my name for lets say, entertainment, can anyone come in and use my name for something completely different?
I agree about the need to hire someone to research a business name. I decided to research my new name to replace the prior name I had because I gotten a cease and desist order from an attorney. The new name I thought up was proved by the trademark company, not to be available, so the next name I researched was found to be available. Sure it cost more hiring an attorney, but when I saw the hundreds of pages of research that was done, we knew we'd be able to keep the name.
Thanks for your comment; I am glad you enjoyed the content. For more on trademark searching, see: www.erikpelton.com/conducting-a-search/
I am an entertainment attorney new to trademarking. I found this video very helpful.
I appreciate this video so much! It is one of the few that I have noticed that has mentioned the importance of research before filing. I had to deal with an ugly trademark case myself. Pretty much hired a company who claimed they did a "comprehensive search" however there was nothing comprehensive about the search, the proceeded to file my trademark and I got a refusal from another trademark with an extremely similar name in the same classification! I did a search myself on TESS database and the conflicting mark was almost one of the first that came up. That's ridiculous!! I ended up losing thousands of money because this company gave me the wrong info. I then hired another company, were they more pricey? Yes but it was worth it. Hiring those half priced companies is a scam and will damage you in the long run. I feel passionate about this topic because it can really hurt one's income. If you are really looking to invest in your brand, make sure the name is available nationwide and hire professionals, not pure filing companies who claim they are doing the same work for less.
Thanks for your comment, glad you enjoyed the material! For more on trademark searches, see: www.erikpelton.com/conducting-a-search/
Thanks for your comment and question. To best protect the name and logo for a line of clothing, you generally would want to file for federal trademark registration with the USPTO in two applications, one for the name, one for the logo.
Absolutely brilliant! You’ve just answered every question I had swimming in my head in nearly the exact same logical order I have been thinking about them. Top Draw! Bravo. Thank you guys so much!
Awesome, glad you found it useful!
I too acquired a Trademark and it is a very difficult process. Simple mistakes can be costly. The lessons I teach in my book "Business Lessons of a Rookie Entrepreneur" coincide directly with your video.
Thank you for your comment. It is _always_ better to file sooner, because you have more protections that way. If you want until October, it is possible that someone else comes along in the next few months and begins using, or files to register, a similar name and causes you - at a minimum - additional headaches and costs.
Thanks for addressing the common mistakes people make.
I just looked at one of your RUclips videos on trademarks. Enlightening! Time well spent.
Thanks for watching and for your comment. This is a complicated question and thus I cannot even try answer it on this forum for a variety of a reasons. There are a variety of options and possibilities, and the wrong choices could jeopardize the application/registration.
It takes about a year - on average. It can take longer. But you have some additional protection as soon as the application is filed and you receive a filing receipt and serial number and effectively reserve your place in line at the USPTO.
Thank you for your comment. In the US, a trademark application can be filed based on an "intent to use" the name. In order to complete the registration process, you would have to show evidence of using the trademark in connection with identified goods or services. There are many complex issues related to such a filing, including the description of the good/services and the procedures and time limitations association with an "intent to use" application, which I do not have enough room for here.
Thanks for watching and for your comments. I cannot comment here on specific cases and situations. In general, the USPTO will only search their records for possible conflicts when a new application is filed. So it is possible someone else could register the name if you have not applied for it. But you may have other remedies to deal with any infringement due to common law rights, in that scenarios, if you were using the name first and the goods/services are related.
Thanks for your watching and your comment! The short answer is YES: when both a name and slogan are registered separately, you are protected when they are used separately or together. If you have any other questions, please visit my website and click "schedule a free consultation'
Really Helpful Information providing with this video. for beginners basic facts.
appreciated with our sites
I cannot answer that question for you here because it would clearly be legal advice. It provides a good example of the many decisions that go into filing a trademark application, and why using the counsel of an experienced attorney is valuable.
If I understand your question, in general the copying a description of goods or services from an existing trademark registration is not infringement. However, there is no guarantee the description will be accepted for your application. And having a proper and accurate description is an integral part of of the application.
Appreciate informative information.
Very informative and clarifying. Thank you.
Thanks for comments/questions. While I cannot provide specific legal advice here, because I don't know all the facts, I can state that when applying in "standard characters" the evidence of use can be in any font or form - it does not need to match the USPTO's standard character display. In other words, use of the Google logo is evidence of use of _both_ the Google logo and the GOOGLE standard character trademark.
Thanks for the info.!
Michael, A registration based on an "intent to use" application has all the same protections. But in order to complete the application process when the filing begins as "intent to use," during thr applicatioj process you will need to show evidence of using the mark in commerce on the goods or services, and meet all of the other registration requirements.
Great information,thanks
Nicely done. Thanks!
Interesting video! Thanks for sharing!
@TheSoonToBeFree the information I am referring to is under: Intent to Use (ITU) Forms
@guitarplayer19651 It is not necessary to have a logo in order to apply. In general it is more important to protect the wording than it is to protect the design.
Erik M. Pelton:
Love your work here. Very thorough [and have added it to one of my playlists]
My question is, if I file a trademark and a tagline seperately, since I paid for them both, can I use them together AND apart?
Example
Trademark 1: My Company Inc
Trademark 2: We Are The Best
Lets say I want to use "My Company We Are The Best" [both trademark 1 and 2] together in an add. Would that create conflict?
Yes. Think about NIKE. JUST DO IT. Two separate marks, but often used in tandem.
This is a complex question. I cannot provide a specific answer here, since the facts are unique in every situation. Generally, the more unique + creative a trademark, the wider scope of protection it has. Plus, famous marks get wider and additional protections. If you choose a name that you know is used by a company with a lot of money, you would be wise to plan on having to spend money to defend it - even if you have a strong case the other company may still be aggressive defending their marks.
Is there typically any legal action taken against a person found to have fraudulently obtained a trademark on a common, commercially used descriptive? How about against an attorney representing that person who clearly failed to perform due diligence?
Other than an action to seek to cancel a trademark registration that has been fraudulently obtained, action against someone in that scenario is quite rare, at best.
Thanks.
Hey thanks for your great videos!! I want to register my logo with the name "Caza Y Pesca" wich means "fishing And Hunting" but there's a tv company in Spain with the same name but different logo. Can I still register the same name but different logo? In the registration of this company I found this info. ( Disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "CAZA Y PESCA" APART FROM THE MARK AS SHOWN)
Thanks for your comment. I cannot provide specific advice here, and of course there are always many factors and variables. Also I'm not sure where you are located or which country laws might apply. But generally names may be able to co-exist if they are in very different industries (especially when the names are made up of weaker terms). It is generally safer to have a unique name.
Thank you for your informative videos, you’re helping me slowly get a grasp on these concepts!
Do you mind sharing your opinion regarding my specific copyright question? I created a unique holiday in 2010 and began celebrating it yearly with my community beginning in 2012. I’d like to secure intellectual property rights for this holiday and any income-generating novelty items associated with it (such as decorations, tshirts, etc). Is this a trademarkable scenario?
1. use the mark as appear in the drawing
Erik,
Please help me understand the process of ITU vs. Registering a Trademark according to what is stated on the USPTO website:
If you file a collective membership trade mark. Do you have to have proof of members or have to have filed an income tax formusing the name that you registered?
If I do an "Intend to use" application will I still have all the protection I need for it?
Thanks for watching and for your comment! I can't give out specific legal advice here. It sounds like you may have both goods and services in your situation.
I WONDER IF ANYONE CAUGHT THE "CROSS YOUR EYES AND DOT YOUR TEE'S' video time is 8:13 into the recording
Fortunately, I received good advice at the beginning, like you are offering and now my trademark/servicemark cleared the 30 day published for opposition period 2 days ago. There is another business, similar to my own, using this slogan. I started using the slogan 2 years before their business was established so they don't have common law rights. My question is do I have to wait until I receive the certificate in 7 weeks or can I have a cease & desist letter sent by an attorney now?
hello, great tips in video. I hope you can answer my question, I have a company name figured out for a cookie manufacturing company I want to start somewhat like Nabisco. I want to sell different flavors of cookies and I didn't know if when I file the trademark application I need to mention all the different kinds of cookies I want to produce, or do I just broadly state the company name I am trademarking manufactures and sells cookies via website and or by different companies such as Walmart, Walgreens, etc...I want to protect the name of the company along with a logo. 2nd part- as long as I have the name protected and it is same spelling as logo can I use different logos?like if my company is by example trademarked as"The Cookie man" can I just trademark the name and use different logos depicting different designs while still using the trademarked words "The Cookie man"?
While I can't provide you with specific legal advice here, feel free to head over to erikpelton.com and send me an email through the site that I can respond to. In general, when you file for a logo, you only are protecting that specific design.
Well, I am not sure who used it first. I have been using it since last year and I am quite sure they would claim the same. But i did noticed their website (that's the only thing I could see) was under construction.
This video is great but it also makes me have more questions. For instance, if I initially was the sole owner of the business when I applied for the trademark application but a few years down the road decided to become an LLC would that make the trademark null and void (or if I became an LLC while waiting for the trademark approval) ??? Thanks
Am I correct in understanding that for each name and logo I inent to use such as a school name and logo of the school to use for coffee mugs, correspondences (envelopes and paper) on the martial arts weapon handles and the cover of book/ manual that would be a separate fee because each ONE will be use in separate goods which we may sell for fund raising purposes (The school are an IRC 501 (c)(3) Public Charity Corp)? We are now using the name and log on the school window and uniform , would the school pay a separate fee on TEAS plus application?
I can't offer specific advice here unfortunately, because I don't have all the facts. But in general if the other term is used in an industry which is totally different from yours, and if your acronym stands for something different, then you may be able to register and protect it.
love the info how many different cups of coffee are you guys going to have on screen lol next video have like 4-5 and see if anyone catches it ^^
thanks you
Thank you Both. What are the benefits of filing an intent to use application since it’s technically not registered until in proper use?
The earlier filing date - when you begin getting some rights - and appearing in the public USPTO database once it is filed. It is almost always better to file sooner, even if it means using the "intent to use" filing. Here is some more on the topic: www.erikpelton.com/intent-to-use-trademark-application/
Erik Pelton thank you very much I appreciate the helpful feedback!
The difference in fees between TEAS and TEAS Plus now seem to be $175. Would you still recommend the standard TEAS ?
Over time, the systems have changed a bit, as have the filing fees. I currently use TEAS RF most often, and sometimes TEAS Plus. I never use TEAS Regular. One reason that I prefer TEAS RF is because it provides more flexibility with the description and classification of the goods and/or services.
Quick question what about if registration states "dead" on another business. Could I use that name if I have already register that name in my state?
company name is x and company web site is xy. i usually use x for company name and only use xy because x alone is not available for .com domains, make sense? i would like to trademark simply x with an image for x. will the search and find of my web site xy make my application for x create a problem? thank you both for you sharing.
22:18 filling packages issues.
I have not registered my company name yet. May I first register the trademark on my name then transfer the trademark to compay later?
I have plans to use the same word on both for trademark and company. Please advise. Thanks
While I cannot provide specific advice here, and I don't have all the facts involved, I can note that it is possible to transfer ownership of a trademark and trademark application or registration. And generally it is advisable to begin the trademark application process as soon as possible.
Curious to know if once you put in an application to register a trademark, does that automatically mean someone else can't file for that TM?
13.53 improper description of goods and services
Is it necessary to register a company with the state first and then apply for a trademark? I ask because on the signature section of the trademark application asks who is signing on behalf of the owner..... What if it is only the owner of a starter businesses and no one else?
If there is no company yet, the application could generally be filed in the name of the person starting it and later - if applicable - transferred to the company. Generally ownership by a corporation or LLC, if there is one, is advisable so that you take advantages of the legal protections of having the separate entity.
If I want to Trademark a restaurant and the names of the drinks sold there, can I do it under one trademark or do I need two? One for the name of the restaurant and one for the name of my signature drink?
BRANDY SCOTT that would most likely be two separate filings. You generally can’t multiple marks into one application. And you get better protection when separating the filings when applicable.
Unfortunately, I cannot get into that level of specifics on this forum. If you would like to schedule an initial consultation, please contact me through my website.
What if a person fails to check to see if a term is a generic term used for a long time by others although not trademarked? Like, for example, "contact sports."
Thank you for your question. However, it is difficult to answer this hypothetical. I'm not sure who is using the generic term or what the problem is. If you use a generic term as a trademark, it will generally not be possible to protect that name or to stop others from using it. Here are is blog posts I wrote that might help: www.erikpelton.com/2012/01/25/avoiding-generic-trademark-use-by-using-generic-term-after-trademark/
HI Erik,
I write because academically, you might find this interesting.
To take it out of the hypothetical for you, we have a situation where we are attempting to prove that a person filed for just such a trademark. She used "reborn baby doll" which has been a commonly, generically, commercially used descriptive term for a type of vinyl doll that is "remade" by reborn doll artists into ultra realistic "babies" and sold to collectors. This artform has been around since the late 1990's but she claims she is the first to use the term beginning in July 2016. What she has done (and got away with it due to an apparently lazy internet attorney's help), is tantamount to McDonalds gaining the trademark for "cheeseburger". We may not see her prosecuted for this fraud, but we do believe that we will see the trademark overturned.
Thanks for sharing. I was unaware of this term or this dispute. I see that there is a current registration for "REBORN BABY DOL" here: tsdr.uspto.gov/#caseNumber=86618275&caseType=SERIAL_NO&searchType=statusSearch
And that is exactly what the furor is all about. That's the trademark we intend to overturn.
Hello so for the info @ 7:42
How do one register both .. for example
Logo name
Intent To Use
But on some things I use
ITU ( intent to use ) abbreviating
Generally requires filing multiple separate applications. Feel fee to contact me if you want to schedule a time to discuss your particular situation. www.erikpelton.com/connect/
I just viewed your video and I found all of the content very helpful to me in going forward with my trademark. I have a question. My trademark is my deceased brother's name, because my brother passed away before we got our clothing line off the ground, to honor him, I choose to use is name. Other than my DBA, what else will I need to show that I can use my brother's name as my trademark along with my logo?
Thanks for watching and for your comment. I can't respond specifically, but the USPTO only requires consent when applying to register the name of a living individual, so registering the named of a deceased person should be permissible generally (as long as all the other registration requirements are met).
Thank you for your response, it was very helpful.
Question: Am I allowed to use the font: Batmanforeveroutline, as my logo font without permission?
14:30 If i am currently only selling a subscription box of curated products, online, but have plans to eventually manufacture and brand my own products to sell on my website, would i include that in the scope of the TM or should i keep it as only a curated subscription box because the second half isn't true at the time of filing?
Thanks for your question. There are several options here -- filing two separate applications (one with items in use, one with items with intent to use), filing a combined application with both use and intent to use items, or filing an application now for the subscription box services and filing later when you begin selling your own products. There are pros and cons, and many nuances - another reason it is advisable to use experienced trademark counsel.
Hello, small question. The company I want to trademark is SMH Booth. I want rights and ownership of the name for my business. I want to SERVICE MARK the name so no one else could use it. I went on USPTO and I found the class 16 and 07 to be under photography (since it is a photobooth service). If I put TM or SM on my website and over my name, can't someone go ahead and start registering for the same name? Or does it depend who submitted their application first to USPTO?
QUESTION. PLEASE RESPOND SO I DONT WASTE MY HARD EARNED MONEY. CAN I REGISTAR MY COMPANY NAME AND LOGO EVENN IF IT USES A POPULAR ACRONYM OF AN ALREADY TRADEMARKED ACRONYM LIKE FBI meaning FAMOUS BOYS INC?? Please help
What if a logo brand has variations? Meaning, the logo and the logotype is used apart and together and have both horizontal and vertical versions?What if you want to register all those variations?
+Cuban Nerd thanks for watching the video and for your question. Different variations of a logo may need to be protected in separate trademark application filings in order to secure the maximum protection. At a minimum, it is recommended in general to file a "standard character' application for the wording alone, and one for the most used version of the logo.
+Erik Pelton Thank you. That helps a lot.
I was wondering if you or someone else can help with trademark logo that has stylized anthropomorphic cat on the logo itself. Can i file 1 trademark logo that has an anthropomorphic cartoon cat logo where the cat face itself show the front view and side view of the same cat ? For Example like this image logo as 1 trademark logo for my company LLC? blenderartists.org/uploads/default/optimized/4X/2/6/e/26eb64fdd9119cbaaa56eb738d1b4f1ae0bb57e9_1_357x500.jpg
way back in 1977 I used a particular name with a logo. it was never register ,copyright or trademark. now I want to use it again but will like to add a different logo. can you help me or do you know who can , thank you
eryk, I would be glad to discuss the possibilities with you. please email me
erik
at
erikpelton
dot
com
I am trying to start my clothing line I have a name and i am working on a logo. Do i need a trademark or copyright? I have tried to read up on it and it is all over my head plz help
8:12 Dot all the "t's" and cross the "i's"! Tee-hee!
how many cups of tea does he have on deck? he's grabbing a new cup every second. lol.
My application was rejected for dotting T's and crossing the i's
Doh!
Thanks for your reply. I have a name I want to protect but Im not sure what I want to do with it I just know I want it to be mine. Ive been using the name online since 95-96 and have proof of that through a variety of personal websites and a few informative motocross and supercross websites. Ive had .com domains with that name and some free websites back in 98. What would be the smartest way to protect that name without spending a ton of money on all kinds of different descriptions?
Make sure you dot your T's and Cross your i's, lol
8:15 bwahaha
Lol he did say that lol and then took a sip
16:13 fillling the wrong type of trade mark
It takes a year to get a trademark done.
My cousin is a very good patent lawyer in Greenville, SC (Federally Licensed) specializing in Internet and e-"patents." Google Thomas Vanderbloemen.
Hello Eric, hope your are having a wonderful day. :-)
I would like to kindly know your opinion and or advice on a recent case please, within the video game community.
Basically, a company named Bethesda, trademarked the word PREY, then another company, by the name of No Matter Studios, wanted to trademark the title Prey For The Gods.. Bethesda objected, and suggested for them to change it to Praey For The Gods instead, and they accepted..
So..
I wrote the following comment, while angry, (lots of people within the gaming community were angry too), I wrote it on other videos related to the games mentioned:
- Start of comment -
-------
"Prey For The Gods" is ALREADY DIFFERENT!!
It has four words in its title!! >8^(
Actually, if Prey For The Gods developers used ONLY "Preay" on its own, then yes, Bethesda can demand the change to something else!! Why??
Because of the "its sounds similar" rule!!! They have the right!
But.. Prey For The Gods .. confusing with Prey?
Wouldn't Bethesda's possible future games be titled Prey 2 or Prey 3?
And if it is a DLC (Downloadable Contents), something like Prey: The Blah Blah Extra Maps DLC??
Now, what if someone wanted to make a game based on the Star Trek Prey novel? The first book?
It is CLEARLY different! It sounds different! And people KNOW that they are two different Intellectual properties!!
Eidos hold the Thief trademark, yet The Raven: Legacy of a Master Thief is held by King Art Games.. no problem there!!
This is absurd..
By the way, I am not a gamer, I haven't played any game in like 20 years, and I have no plan to play ANY of the games mentioned here.. with all due respect to everybody.. :-/0-
=====
- End of comment -
So what do you think? I won't hold you responsible for all what you will say, but I want your general opinion or even thoughts on this..
Thank you very much in advance. :o)
Sorry for my poor English.
I was not aware of this story. Unfortunately, I cannot comment directly on the matter because I don't have all the facts and I wouldn't want to get in any trouble! But the first term in a trademark is often the strongest, so I can see why Bethesda games might still be concerned about use of Prey For The Gods - it is different than PREY but perhaps not different enough to avoid confusion if the products are very similar.
I see..
Thank you very very much for your time! :-)
Have a wonderful day and more success, health and wealth.
This seems helpful, but I can't tell because my mind is wandering about ever 20 seconds as soon as the guy on the left starts talking. I really need some visuals, voice inflection, gestures, sound effects, flashes of examples and illustrations, or something.
Is it just my ADD? Or is he actually that monotonous?
Can I sell helmets and call them coca cola? Im sure coca cola did not register their name to sell helmets. If I register my name for lets say, entertainment, can anyone come in and use my name for something completely different?