Speaker 1: Hey this is attorney Elizabeth Potts Weinstein and today we're going to talk about how to file your own trademark application with the United States Patent and Trademark Office, including a step-by-step tutorial of exactly how to do it on the uspto.gov website. In this video I'm assuming that you already have most of the stuff put together for your trademark application and you're ready to go. If you don't have that stuff done, check out this playlist wherever it is and you will get all the step-by-step bits of information and decisions you need to have already done before you get started with your filing. So the first thing to do is to go to the USPTO.gov website. Here we have the website for USPTO.gov, United States Patent and Trademark office. If you go under trademarks you can go to apply online. Under apply online are a bunch of different categories for forms. Now if you're just filing for the first time you're going to be doing the initial application form but there's also all the other forms are accessible here so if you need to respond to something from the trademark office, file your intent to use forms which I will talk about later, change your address, any of that kind of stuff, you can find those forms here. So you're gonna go to initial application forms. Now with the United States Patent and Trademark Office, there's one online application system, but you have two different categories of filings. One is the plus and the other is the standard. There's a number of differences between them, But the biggest difference, besides one of them being less expensive than the other, is that with the plus, you have to select from a list of classes. And with the standard, you can make up your own class or description of your products and services. I highly recommend that if it's at all possible, you select the plus, not just to save money, but because if you are picking your class from a list of classes, you're going to have formatted it correctly, and also will make it much faster and easier for them to approve your application. The only time we really use this standard is if what my client is doing, we just can't find anything on the list that is even remotely applicable, or we're applying in the United States, basing it upon a foreign application from another country, and their descriptions are so different, and we want to use their descriptions here in this filing to the extent possible. There are also additional statements that are required in the PLUS application that you must make at the time of application. The ones that typically come up the most are the name of a living person or that your trademark includes reference to a specific geographic area. So I can file a trademark with my name in it. However, I have to give permission to myself to file that application. So this is something to be aware of if you're doing a plus application. This list also applies to you, not just the class selection. So let's say we're ready to apply. So we're gonna start the application. The next thing you're gonna need to do is to log in. If you don't have a login and email for the USPTO.gov, then you can create one. Otherwise, you need to log in with, you need to log in with an email address, a password. They also have a second level of authentication. The next screen you come to is the beginning of the application. There is a video that you can watch. I recommend doing that because it's always great to get more information. And this is a dynamic application. So when you select things, it will change what the next questions are. Also be aware that if you have inactivity, it will log you out. You can save your session though, and come back to it later. And that's what this is about. If you save your session, then you have to upload a file to create it back in. So here, I'm going to pretend that I'm not an attorney filing the application. I'm going to pretend that I'm doing this myself. And I'm going to pretend I'm doing a TEAS Plus application. So the first screen is, who is the owner of this trademark? Now, if you are a sole proprietorship, or you're filing as an individual inventor, then it will be you. But if you have an LLC or a corporation, it'll probably belong to that business instead of you personally. So let's say I have a LLC called Potts-Weinstein LLC and that's gonna be the owner of the mark. Then I click limited liability company for the entity type. And it's going to change what some of these questions are. So it will take a minute to load. Now I have to select what state it's in, or if it's not in the US, then you select this. Sometimes I run into an issue where someone has a business that's from another country, and so their entities have different names. But the trademark office does have places for you to put that information, too. Now we're going to put the mailing address, Main Street. This is a made-up address. Well, it might actually exist, but that's not my address. Okay, now domicile address. This is something that's very important for anybody who is using their mailing address that's not your physical location. You have to have a physical location address in here. This physical location address will not appear on the publicly available database, so you don't have to worry about that from a privacy perspective. But you have to have an address so they know that you're physically located here in the United States. If you are not physically located here in the United States, then you're gonna have to have an attorney who's located here to represent you. I don't necessarily think that rule is fair, but that's just the rule. So let's assume that this is actually my physical location. You can put in a phone number and fax number. You don't have to put in a phone number, but sometimes the trademark examiner will call you because you messed up something in your application that is relatively straightforward to fix. So if you don't put a phone number in here, there's nobody they can call. They might email you, but some examiners are not into email. Otherwise, they'll have to issue an office action, which is a lot more complicated. So I'm gonna put in an email address. This is my business email address. You could also put in the website for your business. I recommend doing this so when they do a search and you come up for your own trademark, they know that it's you. So I'm going to put in my website address and I hit continue. It's going to look at everything I filled out and give me information about things that I missed or I messed up in the filing. So it tells me that I did not enter a telephone number. I'm just going to skip it for right now, but generally I'd recommend putting in one. It does not get listed publicly, so you don't have to worry about that. Now I can finally put in my trademark. So I'm going to use the trademark that we talked about in one of the other videos, which is Irene on the trail. This is a person who has a business about hiking. Irene is not this person's name, Irene they're using as an abstract concept. Now here, standard characters, special form, sound mark, those are the different kinds of trademarks. So a special form a lot of times would be a logo. I'm not going to go into sound marks because it's fairly rare for someone to do, but that would be like the little dinging noises and little musical noises that are associated with a brand. So now I'm going to go to the goods and services information. This is the class that you're using for your trademark. I have a whole nother video about how to pick your class. We're going to add the class. This is the same database that I referred to in the other video. So let's say this person does group coaching. So we search for group coaching, and a bunch of things come up. There's going to be some that are already written out really special. Those are rarely going to apply to you in your particular situation because they're written for one trademark applicant. So then there's going to be one that's the general one. So here we're talking about providing group coaching in the field of, and then we indicate field or subject matter. So we're going to insert that, but we have to actually give it what the field of is. And here we're going to talk about hiking and, so we're going to put in the field of hiking and overlanding. OK. So we're going to insert those checked entries. And then when we get back to the next screen, we're going to make sure it's there still. Okay. Providing group coaching in the field of hiking and overlanding. Technically it should be fields with an S. They'll fix that later. Don't worry. So now we have to decide what is the basis of our filing. The basis is you have to use a trademark in commerce in the United States and interstate commerce specifically, which means commerce in more than one area over state lines for it to be trademarkable. You don't have to do that on the day that you're filing because it can be an intent to use this in commerce application. You gotta know if you're doing intended to use it or you already did. We're gonna assume in this case that someone already has been using it. So that's section 1A, already used, already using MARC in commerce now. At this point, we have to give a specimen which is the example of how you're selling your product or service with the trademark in conjunction with it, and give them the data for sale. So I just printed out a PDF from my website, which is actually not related to hiking at all, but to give you an example of what an acceptable specimen would be. If you're selling services, like in this case, group coaching, you need to have a specimen that shows you offering your service for sale with a call to action. So for example, I have a PDF here that's a printout from one of the pages on my website where I'm offering 15 minute quick calls with me. And I describe what those are and what someone can get out of them. And then I have a call to action of contacting me, messaging me about a quick call. The call to action doesn't need to be where someone buys it directly from your website. It can just be that they can call you, a phone number, a form for them to fill out, something like that. But in my case, it gives them a form to fill out that pops up. In this, when you do a print from a webpage, you want to make sure that you include the graphics because a lot of times your use of your trademark will be somewhere in the graphics. It gives a lot of context. And also you want to have the headers. So it says the website at the bottom where it was printed from and the date that you printed that from the website. And you attach it. And then you want to make sure that it actually worked, because occasionally it won't work. The files, typically, you're going to want either a JPEG or a PDF. For websites, I usually print a PDF. If it's something that's a product, so I've taken an actual photo of it, I use a JPEG. So I'm going to click on this, which will open in a new window to make sure that it actually uploaded. And there we go. Looks great. Everything looks fine. Now, it already was attached, and I returned to the form. Okay, and it says one file attached. You wanna make sure it's there. You can actually attach multiple files. So it may be that instead of doing it as a PDF, it just, sometimes if you print as a PDF, it's very wonky. Instead, you can take JPEGs of every single part of that sales page and attach it all together. Description of specimen. I usually put something like, you have to put the actual website where you print it. and you have to put the date which is I'm trying to do when this was selected you can add more URLs and dates and then you would put the date of the first use in the mark anywhere and in commerce so anywhere means you made a sale in Australia and then if that was before your first date in interstate commerce the United States and then this is your date of first sale in the United States So, I'm just going to say that I sold this the same time, January 1st, which is highly unlikely, but let's say I did that. So, now I can assign the filing basis. Oh, it never likes how I type things in the specimen description, and like always, always give me this error. It's usually about a comma or a period. So, there we go. group coaching in the field of hiking and overlanding, and then the assigned basis is here. Now we can continue. So here we can get correspondence information. If you have some kind of internal docket number, you can put that here, but you probably don't if this is your first trademark. Here you can put in secondary email addresses. So if you have a Gmail address or some other personal address, I recommend putting that in here, but that will be in the file. All right. So now we're at the fee information. of classes 1, fee for class 250. So if you filed in multiple categories, multiple classes, it will be 500, 750, etc. But it really does depend upon your goals in your business, obviously your budget, and how worried are we that this trademark will be denied because sometimes we can get it denied. It'll be denied in one category and it'll be accepted in the other and we'd rather have those be completely separate. By the way, if you filed multiple trademarks in the same day or even a couple of days apart and they're for the same trademark in different classes, they'll be all looked at by the same examiner, even if you don't file them literally together. Now you're going to make a declaration, this is under penalty of perjury, that you believe the applicant is the owner of the trademark, that you've been using it in commerce, that it's in connection with these goods and services, to the best of your knowledge and belief, everything in the application is accurate. Also, that there's nobody else who has any rights that are legit, that after an inquiry there's evidentiary support for everything you said. Like, for example, the data for sale. Sometimes I have clients where I'm filing a trademark for them like today or here in 2021, but they actually their data for sale is a long time ago. It's the late 1990s. In that case, we need to know that there's some evidence of that date of first sale. There's some email, there's some invoice, there's some statement that can prove up that date of first sale. And so I have my clients go find that. They don't have to include that, but you need to know that it exists. And that everything's under penalty of perjury. Then you do your signature. You can just do EPW or whatever your initials are. Obviously you don't do EPW, you do your own initials. Your name, and then your position. So since I'm filing for an LLC, I do whatever is my title for the LLC. So I might do president of president, or I could do principal, I could do manager, whatever my title is. and then a place to put your phone number. When you hit validate, you're validating the application under penalty of perjury. They want you to put the phone number, but you actually don't have to. I usually do actually put a phone number. Okay. So I'm actually not gonna keep forward with this application since it's a pretend application. But in this place, you have a chance to check all of the data. So I recommend opening this in another, and then you go through everything you file and make sure it's correct. If you need to file any additional statements, you need to go back and do that. I always open it in its own tab because I've had problems where it didn't work when I tried to go back. And then here, this whole note, you have to read this all and click if that you have read it. I'm not going to pay submit obviously but then you'd hit the pay submit button and you can pay by credit card. I typically use an American Express but you can use a Visa or MasterCard. Once you've filed your application now you're going to wait. You should get a receipt right then that has the serial number of your application and also everything that you filed. You'll get that after you pay on the website as well as via email. Then you're going going to wait for at least three months if not seven months which is what it's been lately because of the situation and then the trademark office will take some action and the action could be that they approve it and it goes through down that road or it could be that there's something wrong with it that's either a minor you need to fix or a big deal and they actually do an office action but either way it's gonna take months before they do anything replication and I I highly recommend that you check on it on a regular basis. Again, this is attorney Elizabeth Potts Weinstein. If you have any questions about filing your own trademark application, feel free to ask them below and I'll try to point you in the right direction. Thumbs up if you found this video helpful and subscribe if you'd like more tips or strategies about trademarks or other aspects of small business law like contracts, forming LLCs, all that kind of stuff. I'll see y'all later. Goodbye.