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The #1 Trademark Registration Requirement for Online Brands

researching the trademark registration requirements

Curious about trademark registration requirements in the US? Today we’re talking about the number one most important thing that you need in order to file for federal trademark protection in the US.

I’m going to cut to the chase, the number one most important thing that you need in order to successfully register your trademark is use of the trademark in interstate commerce.

Whaaaat? What does that mean, exactly? Well, it means that you have to be able to show that you use your trademark across state lines. That can be a little bit harder for hyper-local businesses, or businesses that don’t do any business online. But if I know you, you absolutely do business online. In fact, you might only do business online.

So how does this trademark registration requirement play out? How do you show that you’re using a trademark across state lines? Well, when you file a trademark application, you have to submit what’s called a “specimen.” (Unless you haven’t started using your trademark yet, and then that’s a whole other can of beans.) Your specimen will show exactly how you’re using your brand. It will likely be a screenshot of your website and the services that you offer under your website. It also could be a screenshot of your podcast on Apple, or a screenshot of your video show on YouTube. If you promote others’ products and services on social media as an influencer, you can submit screenshots of your account where you promote those goods and services and your trademark might be your Instagram handle.

Bottom line, though, is that the best way to show that you’re using a trademark across state lines is to offer services across state lines by using the internet. And, if you have an internet-based business, you’re probably already doing that. Which mean you have this trademark registration requirement in the bag!

The Trademark Registration Process in 5 Steps

reading about the trademark registration process

Jump in with me today where we are talking about the trademark registration process in five steps.

Step 1: The Search.

You must do a trademark clearance search. For me, the trademark registration process begins with a search 98% of the time. Every once in a blue moon, a client really really really does not want me to. And even then, I will coach a client through the reasons why to do a trademark search. And here’s why!

A good trademark search will show:

  • The likelihood that you will succeed with registering your trademark;
  • Whether you can protect your trademark; and
  • Whether you can use your trademark.

Remember that in the US there’s something called “common law” trademark rights. And that means that you don’t have to register your trademark in order to have some rights. So a good search will look — yes, on the Trademark Office website — but also everywhere, to make sure, okay, is there any risk if I continue to use this trademark? Does someone else have more solid rights in this trademark than I do?

Step 2: The Prep.

If the clearance search comes back a-Okay, then the next step of the trademark registration process is gathering materials. We need proof that you are using the trademark in connection with your services. (Like, say, podcasting services.) We need information about the owner: name, address, blah, blah, blah. And we take all of that information along with a good specific list of the services or products that you offer, and put it into the application.

Step 3: The Filing.

Of course, the trademark registration process all depends on actually filing an application! So step 3 is, we file.

Step 4: The Wait.

Step four: we wait… and wait… and wait.

Why? Because nobody at the Trademark Office is going to look at that application for at least three, three-and-a-half months, depending on how backed up the Trademark Office is.

Step 5: The Publication Period.

During the trademark registration process, there is a 30-day period called the “publication period.” In that 30-day period, anyone that feels that they would be damaged by the successful registration of your trademark can file what’s called an “opposition proceeding.” It’s like a little mini lawsuit that takes place completely within the Trademark Office, online. But that 30-day window exists so opponents can either file one, or file an extension so they assess whether they actually want to oppose. So long as no oppositions are filed, the trademark moves on to successful registration!

Recap of the 5 Steps in the Trademark Registration Process

So 1) search, 2) gather materials, 3) apply, 4) wait, 5) publication period. And then you are good to go. It’s super rare that a trademark wouldn’t proceed to registration after that.

Now, there are a few little things that might change up those five steps. If you’re not yet using the trademark, or if the application is rejected, those can cause a little bumps in the road.

But I hope that this explanation helps you understand the trademark registration process in the US, and I’ll see you next time.

Why a Podcast Trademark Search is a Crucial Prep Step to Launching

woman who might not have conducted a podcast trademark search before launching
Rather watch than read? I got you.

By the end of this post, you will know why I think a podcast trademark search is a crucial prep step before launching. Hint: it comes down to saving you money and stress down the line. So here we go!


What a trademark search uncovers


So how can a trademark search ultimately save you money and stress before launching your podcast? First, it’ll tell you if somebody else is already using that name in connection with a podcast. You could argue that by using it in connection with a podcast (regardless of subject matter), there’s potential for confusion. And if you’ve ever searched for a podcast on Apple podcasts or Stitcher , you know it can get confusing if you’re looking for a podcast based on a name!

So again, a search will tell you if someone else already using the same or similar name. This ultimately saves you money and stress. How? If there is someone else using a similar name in connection with the podcast, you could save yourself from the experience of being on the receiving end of a cease-and-desist letter. And this rolls into reason number two…

Eliminate the surprise, and stressful scramble, from a cease-and-desist letter (to the extent possible)

It can be very stressful to be on the receiving end of a cease and desist letter. And if you have a trademark search done on the front end, that can save you the stress of finding yourself on the defensive and having to scramble when you receive a cease-and-desist letter. Of course it’s impossible to guarantee results 100%, but a search should uncover the obstacles that are out there. It’s worth spending a little money on the front end to save you from spending a lot of money on 1) an attorney to handle the cease and desist and related settlement, 2) a potential rebrand, and so on.

A podcast trademark search can help identify whether your chosen name is protectable

Let’s say there is someone else using a name similar to yours and connect with a podcast. In fact, let’s say there are TEN others using a name similar to yours. By using that name, it could be hard for you to police or protect your name from use by others when there are already ten others. So a trademark search can tell you the extent to which the name is used by anyone else. This can uncover whether you will have a hard time protecting your chosen name from use by others.

And yes, a trademark search can tell you whether there are any roadblocks to trademark registration. But ultimately, you can save yourself some stress and money in the form of having to scramble, rebrand, and maybe being on the receiving end of a cease and desist letter. Also, from a value standpoint, it can help to be sure you’re choosing a name that is protectable.

I hope this helps you understand why I think a trademark search is a crucial step before launching a podcast.


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woman contemplating a podcast trademark search

Make More Money with Trademark Licensing in 2020

Licensing your trademark is a great way to make some extra money without reinventing the wheel. By the end of this post, you’re going to understand what a license is, some special things about trademark licenses, and examples of ways you can make more money with trademark licensing in 2020..

First, what is a license?

A license is another word for “permission,”

It’s not an exclusive grant of rights. (Though there are “exclusive” licenses, that’s not what we’re talking about, here.) In other words, you are not selling or granting your trademark to someone else, you are simply giving them permission to use it, but in a very specific way.

And, speaking of that specific way, there are some special things to think through when you are licensing a trademark as opposed to licensing artwork or creative work.

Special aspects of a trademark license: QC, QC, QC

When you’re licensing a trademark, you are licensing your mark’s “good will.” (If you don’t, it’s considered a “naked license” and you could lose your rights.) Good will is your trademark’s reputation and brand recognition. And for that reason, QC, QC, QC. In other words: Quality Control.

It’s not worth it to make more money with trademark licensing if you don’t have control over how your brand’s reputation is used. You want to be absolutely sure that you have some voice, some control over how your trademark is used. You want the power to control the area in which your trademark will be used by this other company.

Because it is tied back to your brand, you want to be absolutely sure that you have quality control over things like the materials that are used, or maybe artistic aspects. You don’t want the licensed use to stray from your core brand.

So, to paraphrase,, you are essentially “partnering” with another company that already does what you’re wanting to do in connection with your trademark.

A few trademark licensing examples

Check out these examples of how to make more money using trademark licensing:

example of a fashion or beauty influencer making more money using trademark licensing
  • You are a fashion or beauty influencer that wants to create a beauty line. So, you partner with BeautyCounter or another existing makeup line to lend your brand name to a new, specific line within that existing brand.
  • You are a blogger on productivity and planning in business and you want to release a planner under your brand name. You partner with and license your mark to a company that already makes planners, they already have the supply chain nailed down. The company already has suppliers, it knows how to do this, so that all you have to do is maybe be involved in the creative side and, obviously, lend your mark, — and thus, your reputation, your brand — to this product.

Martha Stewart is kind of the mecca of trademark licensing. She started her brand the way she started it. But now, she does sheets and all kinds of things in connection with Macy’s.

Again, if you leave with one thing today, remember that quality control is an essential part of a trademark license. A trademark license could be a great opportunity to expand your brand without reinventing the wheel.

So I hope this helps you understand the possibilities when it comes to making more money using trademark licensing.

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3 Things to Think About When Choosing a Trademark for your E-Course

brainstorming session when choosing a trademark for your ecourse

By the end of this post you’re going to have a good handle on what trademark strength is and what descriptiveness is, and how they kind of play a role and in naming your e-Course. You will also have a couple of real-life examples of what can happen when you choose a descriptive trademark for your eCourse, and you’ll have an action plan in the form of a little exercise to do when naming your e-course programs.

The Spectrum of Trademark Strength, Descriptiveness, and How They Affect Choosing a Trademark for your e-Course

Trademark Strength

So first, the spectrum of trademark strength. Briefly, the trademark strength spectrum speaks to how protectable a mark is, at least initially. I have another post that speaks through the whole spectrum of trademark strength, but this post will focus on descriptive marks and online courses. 

trademark strength spectrum for use when choosing a trademark for your e-course
A little primer on the different levels of trademark strength

Descriptiveness

A descriptive mark describes a quality, characteristic, function, or purpose of the service offered under that brand. “Distinctive” is another way of saying “protectable.” Essentially, it’s that legal term that says that a mark is strong, identifiable, etc. 

Compare a mark like HOME GOODS to a mark like SPOTIFY. You know what you’re going to find when you walk into a store named HOME GOODS. But when you hear SPOTIFY, at least the first time you hear SPOTIFY, you’re not really sure what that company is about.

But on the HOME GOODS example, for the same reason that you know exactly what you’re going to find when you walk into that store, it’s also hard to stop another store from using that phrase “home goods” in connection with a store that sells home goods.

SPOTIFY, on the other hand, is so unique and so “distinctive” that right away, the owner might be able to stop someone from using a similar mark.

Now, descriptive marks like HOME GOODS, like SPORTS AUTHORITY, like BED BATH AND BEYOND, can earn that distinctiveness factor over time. Because it’s been used for so long it has such a huge following and huge market recognition, etc. HOME GOODS has earned that distinctiveness that’s usually reserved right off the bat for stronger marks like SPOTIFY.

The Supplemental Register

A lot of times if you file to register a descriptive mark with the US Patent and Trademark Office, the Trademark Office will require you to move it over to the Supplemental (or secondary) Register. 

The Supplemental Register is fine, and it does have some of the benefits that the Principal Register has:

  • You get to use that R-in-a circle symbol; and
  • Your registration acts as kind of a roadblock to later filed similar marks,

(to name just a few benefits).

But, the Supplemental Register just doesn’t have the same protections that the Principal Register has. Some of those beefier protections are:

  • The registration acting as notice of the owners claim of ownership and the validity of the trademark;
  • Filing for incontestability later. (I know I’m using a lot of legal words but “incontestability” is a huge thing in the trademark world. It basically severely limits anyone’s ability to challenge your trademark a few years down the road.)

You can file a new application on the Principal Register for a descriptive mark after it’s been registered on the Supplemental Register but you’re paying to register the mark again.

So when you’re choosing a trademark for your e-course, why not just choose a distinctive strong trademark from the get-go?

Real-World Examples of Choosing a Descriptive Trademark for your E-Course

real-world examples of choosing a descriptive trademark for your e-course

Okay so I’ve got two real-life examples for you from mega, female digital empresses. And my big disclaimer is:

I don’t represent either of these women, I’m just making observations based on information that’s publicly available from the Trademark Office!

So example number one is Marie Forleo’s B-SCHOOL. B-SCHOOL was registered but it was initially rejected based on descriptiveness. (‘Cause, you know, “B school” is how every college kid refers to “business school.”) The Trademark Office suggested that it be moved over to the Supplemental Register. (Check out the record for yourself, here.)

Another example is Amy Porterfield’s LIST BUILDERS SOCIETY. The LIST BUILDERS SOCIETY trademark was also initially rejected based on the descriptiveness and moved over to the Supplemental Register. (That record is here, if you’re interested.)

An Exercise When Choosing a Trademark for Your E-course

So here’s a little exercise to run through when you’re brainstorming ideas for your eCourse names.

You want to break up the page into three columns.

In that first column, you’re thinking through those marketing phrases, keywords or keyword phrases — things that your audience might search for when looking for a course like yours. These are going to be your descriptors, your descriptive words, right? Those terms might get you into Supplemental Register territory on their own.

In the middle column, think about the transformation you want your customer to go through when completing your course. Focus on the customer and what they will be once they complete your course.

And then, in the last column, you’ve got your brand name. This is your existing, core brand name that all of this will be housed under.

Now use some combination of the three and start working towards a strong trademark. Those first two columns could land you into descriptiveness territory, but now you have an understanding of what a descriptive mark is, right?

At the very least you could have blah blah blah descriptive mark by [your brand name] …whatever your brand name currently is.

So remember, while descriptiveness can be your friend with marketing and in connection with marketing purposes, it might not be your friend for trademark purposes.

I hope this post gave you some things to think through when you are going through the process of choosing a trademark for your e-course.

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online. 


Trademark Toolkit: An Educational Resource

trademark toolkit from spear ip

It’s no secret that trademark is one of my favorite topics. Trademarks are everywhere we look — from your Apple TV home screen to your Pinterest feed. In this trademark toolkit, we’ll talk about what exactly is a trademark, the nitty gritty on trademark searches, and things like domain names and trademark registration. Of course, this is educational. If you have a specific legal question, please reach out to a trusted attorney before making a decision.

What is a Trademark

What good is a trademark toolkit without a primer on what a trademark is? A trademark is a word, symbol, or phrase that identifies the source of a product or service. It can even be a non-traditional thing like a sound — you know, like that NBC chime that’s popping into your head just because of this sentence.

The NBC chime is a registered “sound mark” trademark.

When a consumer sees a particular trademark, she automatically associates a certain quality with that brand. That association is based on her experience with the brand. Trademark law ultimately exists to protect the consumer from confusion. How could you make an accurate purchasing decision if there were more than one Jeni’s in the ice cream section, or more than one Better Made in the snack section?

{Trademark Toolkit Checkpoint: What trademarks are reflected in my business?}

Trademark Search vs. Google Search

A Google search is not the same as a trademark search. (Although, it is better than nothing!) A trademark clearance search is a process that looks into similar trademarks used in connection with similar products or services. Yes, S-I-M-I-L-A-R. That means it could be the same word, but spelled differently. Or a related, but not identical, industry.

A thorough search should include the U.S. Trademark Office database and the broader Internet. Remember, a mark doesn’t have to be a “direct hit” to be a problem. If two products are kinda-sorta related, but travel in the same marketing channel, those could be considered too likely to “cause confusion” in the marketplace to coexist.

When I conduct a trademark search, it’s about a 3-ish hour process. I pull all of the results and do an analysis with three main questions in mind:

  1. Does the mark seems likely to be registered without any issues (like rejection by the USPTO)?
  2. Are there risks posed by other trademark owners if my client were to proceed in using her mark, even if it’s unregistered?
  3. Is the mark protectable?

By the way, How Do Domain Names Fit In With Trademark Availability?

It’s a good sign if a top-level domain name is available! But searching for and purchasing your domain name are not the same as a trademark search. 

{Trademark Toolkit Checkpoint: Have I had a thorough trademark search done for my brand name?}

The Benefits of Registration

There are a ton of benefits to registering a trademark.

First, only the owner of a federally registered trademark can use the ® symbol. (So, that’s cool).

Federal registration creates a public record of the information in the trademark application.

Owners of federally registered trademarks also benefit from certain remedies. (Think of a remedy as something you ask for because of the harm that’s been done to you, like money or an injunction).

Owning a federally registered trademark entitles you to special damages. Those include a) the ability to block imports that infringe upon your mark (a great one for fashion brands), b) the potential to recover triple or “treble” money damages for infringement, and c) the ability to file a lawsuit in federal court.

{Trademark Toolkit Checkpoint: Is trademark registration right for my brand?}

Post-Registration

Nobody likes to be a bad guy. I get it. The words “cease and desist” can sound scary and official. But policing a trademark is important to maintaining your rights. In other words, registration is not the end-all, be-all. You have to be diligent in making sure others aren’t getting all up in your business (literally) by using a trademark similar to yours in connection with their similar business. Trademark monitoring provides you with an update on any newly-filed applications or new websites (depending on the package you select). At the very least, you can set up a few Google alerts using your brand name and your industry.

{Trademark Toolkit Checkpoint: Have I looked into trademark monitoring or set up a Google alert for my trademark?}

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online. 

Trademark Scams and How to Avoid Them

avoiding trademark scams spear ip

Becoming the owner of a registered trademark has its perks. Plus, the U.S. Patent and Trademark Office mails you a fancy certificate with a gold seal. In recent years, though, along with that certificate, the USPTO started sending out warnings. Warnings of trademark scams.

Usually sent on an orange piece of paper along with the registration certificate, the notice warns of “misleading offers and notices from private companies.” The fact that the USPTO sends these warnings certainly helps those who aren’t aware of trademark scams, but now scammers are reaching out to applicants right after the application has been filed.

Scammers use the data in your trademark application (which is public record) to get to you. So how do you spot a scammer and avoid falling victim to trademark scams?

Here are some telltale signs of trademark scams:

  • Look for an offer. Some offer legal services, some offer to “record” your trademark in a “private registry” or other registry. The USPTO is not going to make you offers. If you receive an offer, it’s not an official trademark matter.
  • Check the address... The United States Patent and Trademark Office is in Alexandria, Virginia. Any correspondence coming from elsewhere might smell like a trademark scam.
  • …and the email address. All USPTO email correspondence comes from email addresses with the “@uspto.gov” handle.The name sounds official…but isn’t the USPTO. A lot of so-called “agencies” may sound official. If they are not the United States Patent and Trademark Office, though, you know you can discard the message without worry.
  • Fees, fees, fees. In the U.S., you pay 1) a filing fee when you file the application, 2) a statement-of-use filing fee if the application is filed based on intent-to-use, 3) a fee between the fifth and sixth year from the registration date to maintain your registration, and 4) a fee between the ninth and tenth year from the registration date to maintain the registration. So if someone is asking for a fee to “register” or “record” your trademark… raise that red flag.
An excerpt from the USPTO’s notice on trademark scams.

Offers, asking for fees, shady names and addresses… trademark scams can come under any number of disguises. But now you have some education behind you so that you can spot the scams and recycle those unofficial “Official” notices.

What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.

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How to Choose a Strong Trademark

how to choose a strong trademark spear ip

What is a strong trademark? The main thing to know about a strong trademark is that it gets a lot of trademark protection. (Compared to a weak trademark, which isn’t as protectable.) Put differently, a strong trademark is not “cooler” than a weak trademark, it’s just easier to police and protect.

So how do you choose a strong trademark? It helps to understand the characteristics of strong and weak trademarks.

Continue reading “How to Choose a Strong Trademark”

You Can’t Protect a T-shirt Idea (But You Can Start a Lifestyle Brand)

protect a t-shirt idea lifestyle brands spear ip

“I have a REALLY great t-shirt idea.” “I’ve got an idea for a funny t-shirt slogan.” Many an IP attorney has heard this phrase at least once. Just like protecting an idea can be difficult, it’s challenging to protect a t-shirt idea. But a lifestyle brand? Now you’re talking. But be proactive: know how to safeguard the protectable elements of a t-shirt or lifestyle brand.

Continue reading “You Can’t Protect a T-shirt Idea (But You Can Start a Lifestyle Brand)”

Using “Cheap” Online Legal Services for Trademarks

the temptations and shortcomings of online legal services

So, you’re thinking about registering a trademark. You have worked hard to choose a mark that distinguishes your product or service from the competition. Now, you’re wondering if it’s possible to protect it. “Cheap” online legal services like Rocket Lawyer, Legal Zoom, and Trademarkia sure are tempting. 

Continue reading “Using “Cheap” Online Legal Services for Trademarks”

Put A ® On It: Color Trademarks (and Cheerios)

Color trademarks are unique beasts. Either color is an essential part of your packaging, logo, or overall branding (looking at you, Lyft), or color is kind of a non-issue. (Think about the rainbow of Nike swooshes you’ve seen in your lifetime.) It’s possible to register or “trademark” a color, but, as General Mills just learned, it’s not easy. Below, a little more on color trademarks and the registration process.

Continue reading “Put A ® On It: Color Trademarks (and Cheerios)”

Using A Personal Name As A Trademark

Using A Personal Name As A Trademark

Not everyone uses an arbitrary or fanciful brand name. Often times individuals or companies will just go with someone’s name (present company included). Read on for a list of considerations when using a personal name as a trademark. Continue reading “Using A Personal Name As A Trademark”