334 - Lessons Learned One Year Into Trademarks

On today's episode of the podcast we're chatting trademarks and what we've learned about the trademark filing process over the last year. In the past year we've filled 22 trademark registration applications and we've gotten back eight of those thus far. The way we kick off our trademark application process is through what we call Trademark Quickie Searches (notavglaw.com/tmquickie). A traditional law firm would charge you their trademark fee up front (typically $1k - $3k for smaller business, up to like $10k for big businesses like Procter&Gamble because there's a lot more that goes into it). Once you retain them they'll do a trademark search and chat with you about the likelihood of approval of your application and if you have over like 50% odds they'll file the application. Sometimes they'll also look into alternative trademarks for you. We do Trademark Quickie Searches first (these started at $10, then became $25, $50 and are now $100).We raised our price point to help with conversions because at $10 we were getting more people who were just curious about trademarks, not because they were interested in getting one. These searches are time intensive for us, it's not something you can just click a button to search. We are currently accepting five new TM Quickies. You can get started at notavglaw.com/tmquickie Registering a trademark at the federal level has several benefits including: • The right to exclusive nationwide ownership of the mark (except where it’s being used by prior users). • The right to put the ® symbol after the mark. This puts others on notice that you own the registered mark. • A legal presumption that the registrant owns the mark. Trademark rights are given to the person who first uses the mark in commerce, not the first person to file, although filing is still a great idea rather than relying on being first inuse. “Use in commerce” means you’re actually using the mark to sell a thing. If you rebrand, your new mark isn’t being used in commerce until you release it to the world. What we've learned from filing trademarks: 1. Likelihood of confusion is maybe not as big of a deal as we thought it would be, at least it hasn't come up in the eight marks we've had processed by the US Patent and Trademark Office (PTO). Likelihood of confusion means they can get approved of they're likely not to be confused with someone else's mark. This tells me we can be a little bit more aggressive with the terms we file. 2. People really need to stop filing their own trademark applications. This is because trademarks are more of an art and a science and the way you craft your application impacts approval odds and your ability to enforce the application. Even if it gets approved, you may find your application doesn't have many teeth to it when you try to enforce it. And if it's not approved and you get something back from the PTO asking you to fix it, hiring a law firm to fix it is going to cost a lot more than just hiring them from the get-go. 3. Nearly descriptive marks are a big deal and something most folks wouldn't inherently think about. Some marks actually are much easier to protect than others. Some can’t even be registered. Trademark law has invented a system based on the “strength” of a mark. Astrong mark is easy to protect, while a weak mark may be difficult or impossible to protect. There are five levels of strength with varying rules: Generic: No protection (ex: coffee) Descriptive: No protection unless you can prove secondary meaning. (ex: Coldstone Creamery) Suggestive: Protection (ex: Netflix) Arbitrary: High protection (ex: Apple) Fanciful: Highest protection (ex: Xerox) At a minimum we want it to be suggestive. I experienced this personally when I went to file a TM for the Contract Club. It was at first denied because it was merely descriptive of a club that you can join that provides contract templates. I worked with another attorney on this and we submitted a brief to argue against the refusal saying it's not really a club because it's a one-time payment, there's no dues and no membership screening, etc. My attorney estimated 50/50 odds of it getting approved. It did not. 4. You have to own your mark. Apply now so you don't have to change it later. This is something I already knew and want to make sure others do too. You don't want to need to change your business or product name down the line. 5. Working with the examiners isn't so bad. They want to move your application off their desk so they don't want to make the process difficult. When you file with the PTO it goes to an examiner who is an attorney. If they determine any issues they issue an office action. Sometimes it's simple like didclaiming a word,  sometimes it's more complex. I found them easy to work with. 6. Getting a trademark application approved can taking even longer than I thought. I thought most applications would get approved within a year but around when we started filing trademark applications, the processing time to even get the application looked at was about eight months in the shortest end, 10 months on the longer end, and then from there you're often going to have that back-and-forth office action. Once they approve the application and it gets published, anyone who wants to oppose your trademark has up to three months to oppose the men. 7. There are a lot of great names out there to be trademarked, especially online business folks, when it comes to names for courses, memberships and online programs. I've done searched for at least 75 trademarks (and filed 22 of them). Sometimes I really surprised at some some really great names our clients have that a search showd are really free and clear. I think this will change over the next several years. The market is getting really saturated and there are some that have really obvious buzz words like "academy" but I'm still surprised about how many are available. If you've landed on a program you really like, you should get a TM application. 8. Trademark applications can be a very easy process, or a very lengthy one. We've done some minor ammendments on disclaimers, but other than that, our client TM applications have gone though pretty well. If our clients are responsive and communicative I usually get the application in within a week and then it's a waiting game from there. If you're interested in getting the process started, we are currently accepting five new TM Quickies. You can get started at notavglaw.com/tmquickie