Hi, this is attorney Elizabeth Potts Weinstein. Today, we're going to discuss the steps you need to take before filing a trademark application with the United States Patent and Trademark Office (USPTO). We will cover practical actions and key decisions you need to make before you file that application.
1. Conduct a Thorough Trademark Search
The first step is conducting your own trademark search. Visit the USPTO website (uspto.gov), navigate to the trademarks section, and use their search tool. Look for not only your exact trademark and class but also for similar trademarks. For instance, if you're trademarking "EPW Small Business Law," focus on the distinctive part "EPW" and search for any similar trademarks across different classes and industries. Additionally, perform a Google search to see if anyone else is using your proposed trademark without having registered it. This step is crucial as the Trademark Office examiner will also conduct a similar search.
2. Finalize Your Logo
If you are trademarking a logo, ensure it is finalized before filing. Any changes after filing will require a new application, which means starting the process over. Note that you can file your logo in black and white to allow for future color variations, but the design itself must be fixed.
3. Determine Ownership
Decide who will own the trademark. It could be you personally, your business (LLC or Corporation), or a separate entity. This decision depends on your business structure and future plans. Ensure you have clarity on ownership before filing to avoid complications.
4. Identify the Appropriate Class
The class of your trademark is the category of products or services it covers. This needs to be specific. For example, instead of just "apparel," list items like t-shirts, hoodies, and hats. You may need to file under multiple classes, each adding to the cost. Utilize the USPTO's database to choose the correct class to avoid rejection and save money.
5. Determine Your Basis for Application
Your application basis could be:
- Use in Commerce: You are currently using the trademark in business.
- Intent to Use: You plan to use the trademark in the future.
- Foreign Application: You have a foreign trademark application or registration.
For a "Use in Commerce" basis, you'll need the date of first use and a specimen, such as a photo of your product with the trademark or a screenshot of your service website. For "Intent to Use," these items will be required later, incurring additional fees. For a "Foreign Application," be mindful of the specific time frames.
Summary
The most critical step is to conduct your own search thoroughly, both in the trademark database and through Google. If you have questions, leave them in the comments, and I'll guide you. If you found this video helpful, give it a thumbs up and subscribe for more content like this. I'll talk to you next time. Bye-bye.
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