I Want To Register My Name As A Trademark. How do I do it?

I want to register my name, my brand, my slogan as a
trademark with the United States Patent and Trademark Office, the USPTO.  What do I do? How do I go about taking my
brand, my name, which I put my heart and soul into creating, which tells
consumers who I am as a business, what services I'm providing, how do I protect
that name, slogan or logo as a trademark through trademark registration. My
name is Enrico Shaeffer, I'm a trademark registration attorney with Traverse
Internet Law, and today we're going to be talking a little bit about trademark
registration self help; and how to register a trademark with the USPTO. 

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With: Enrico Schaefer

Sponsored by: Traverse Trademark Law

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Welcome
to Trademark Law Radio, a top web resource on issues of trademark infringement,
trademark licensing, trademark protection, and trademark registration. 

I want to register my name, my brand, my slogan as a
trademark with the United States Patent and Trademark Office, the USPTO.  What do I do? How do I go about taking my
brand, my name, which I put my heart and soul into creating, which tells
consumers who I am as a business, what services I'm providing, how do I protect
that name, slogan or logo as a trademark through trademark registration. My
name is Enrico Shaeffer, I'm a trademark registration attorney with Traverse
Internet Law, and today we're going to be talking a little bit about trademark
registration self help; and how to register a trademark with the USPTO.

The first thing that we need to talk about is the concept of
trademark registration forms and trademark registration self help.  When clients and prospects ask us, do I need
an attorney in order to file a trademark registration application the answer is
no.  You can try and register a
trademark, a name as a trademark, by yourself. 
You do not have to have a trademark registration attorney provide you
assistance in order to file that document. And what I mean by that is
this.  The trademark office at the USPTO
doesn't require any sort of certification or license in order to register a
mark as a trademark with the USPTO. So any person can fill out the online forms
as USPTO.gov, and go through the process in order to try and get
registered.  Trademark registration self
help happens all the time. And in terms of a trademark registration form or
template, those are actually available online through the USPTO.gov website. So
they've got the online form at the trademark office, that guides you through
the process of how to register a name as a trademark. 

Now here's some things that you need to think about and that
any good trademark lawyer will tell you before you start the process of trying
to engage in self help.  Before you start
the process of trying to fill out the trademark registration application by
yourself without the assistance of an attorney. 
Trademark registrations are relatively straightforward but they're not
without some complexities. There are a number of areas where you need to make
an election, you need to provide information that if you don't get it right, if
you put the wrong information in the box on the online form, you're potentially
going to end up with a trademark registration certificate that is worthless.
Someone is going to be able to, upon receipt of a threat letter from you,
respond by saying you lied to the trademark office or you provided
misinformation to the trademark office when you filled out your application and
therefore your trademark registration is invalid. 

 Now that won't leave
you completely in the dust, because you'll still have your common law trademark
rights. But let's face it you're going to pay that 300 dollar or so trademark
registration application fee to the USPTO, you certainly don't want to waste
that money, and you certainly don't want to go through the pain of the year
long process to get registration only to have to start again.  You don't want to use the leverage of your
certificate of trademark registration from the trademark office.  You don't want to lose the benefits that you
get under the trademark law and the Landum act by having an invalid trademark.

So it is a good idea to hire an experienced trademark
registration attorney to guide you through the process and make sure that
you'll filling out the online forms correctly or having the trademark attorney
fill out the online form in order to make sure that you get it right. Now let's
talk about some of the things that you're going to have to fill out within the
application, that you need to get right. 
One of the very first items is who owns the trademark? Well first of all
only a person who actually is going to be using the mark can file the
application for our trademark registration. So you need to make sure that
you're not registering in your name for someone else.

For instance when it comes to domain names, if I'm a web
developer I can register with my customer's domain name under my name and
that's no problem. The question might come up later who actually owns the
domain name but that's a separate issue. Trademark registrations are different.
You need to make sure you're putting the trademark owner name in the correct
spot. 

Now the next thing that you're going to have to do is you're
going to have to describe your goods and services, and that's very important
because if you mis-describe the goods and services the examining attorney at the
trademark office may deny you your trademark application. Or even if you get
through the process may become subject to attack by someone that is infringing
your trademark, and to whom you've sent a trademark infringement threat letter
demanding that they cease and desist any further use of the mark.  So you need to make sure you get the goods
and services right. 

One of the next items is selecting the international class
for the goods and services that are reflected by your trademark. This is a very
important decision point in the process. 
You need to pick the international class that's going to give you the
broadest protection in some instances, and in other instances you may want to
pick a class that's going to give you more narrow protection. There are any
numbers of variables which go into that decision. A good trademark lawyer will
help you make that decision correctly. 
You're going to have to provide a specimen to the trademark office which
reflects the use of your trademark in commerce as described in your trademark
application. Now if you don't get a lot of these things right you will
eventually get an office action from the USPTO that denies your application and
gives you six months potentially to correct some items. 

Now one of the big office actions that the trademark
attorney, examining attorney will sometimes issue is a likelihood of confusion
with a pre-existing registered trademark. 
Which leads me to perhaps my most important point. You need to make sure
that you're not infringing someones prior trademark application when you submit
your application. One thing that our trademark law firm will always recommend
is that you do a trademark availability search before even considering filing
for the application.  What that is is a
comprehensive search of both common law and the trademark databases, for not
only identical but potentially confusingly similar uses of the mark that you
want to register.  Because if someone's
already registered using something similar, you're going to have a big problem.
Because not only might you get denied but that person now will see you and they
may send you a threat letter demanding that you cease and desist any further
use of the mark.

So by filing the application you could create a situation
where you lose the ability to use the trademark altogether.  So you want to get that trademark
availability search done and done completely and appropriately. My name is
trademark registration attorney Enrico Shaeffer.  Today we've been talking about trademark
registration self help and the use of the online forms at the USPTO; in order
to get your trademark registration application filled out correctly.  You need to understand how to trademark a
name, logo or slogan and we hope that you learned something today. We'll talk
to you next time.

You
have been listening to Trademark Law Radio. 
Whether you are facing a trademark infringement, licensing, monitoring
or trademark registration issue, we have a trademark attorney ready to answer
your questions.