The best video in the "how to do trademark search" category. Absolutely clear. The zoom in option of the screen to highlight what was being searched or to highlight an important aspect of the search result etc made it easy to follow. Thanks, Elizabeth.
So very grateful that I can across your channel! I didn't know where to start. And I have a small budget and don't have $2900 to pay an attorney to file the trademark for me. But I want to do this properly
This video proved to be incredibly beneficial, allowing me to save both time and money. I appreciate your support for small business owners. Could you guide me toward creating a franchise disclosure document, or would it be advisable to seek legal assistance for this aspect of my business?
Thank you so much Elizabeth! Very insightful! I do have a question. Name XYZ is not trademarked. However XYZ does have a website, Instagram account and is actively trading. Can I claim XYZ? And after TM has been approved I can take legal action against that firm? How does this exactly work? Thank you so much.
It is a bit complicated but generally you might be able to get the trademark but the other company would have "concurrent" rights as well (assuming they have been operating before you started sales). If they were making sales in that class using that trademark before you, they would have rights in places where they continuously are making sales (so if they are a local-only business, in their own state, for example). Generally what ends up happening is the parties have to negotiate to come to some resolution, like splitting up areas of exclusive use or one buys the trademark from the other.
Hi! Great video, really happy to find a resource that can guide every step of the way. I do have a question to my situation though. The trademark I’m trying to file is for a band’s name and after a deep search I found that there are couple profiles on social media for bands with same names, however neither of them have been active at all since 2018-2019 and they’re based in EU. There was one US based band with no activity since 2016. While doing a Google search I’ve also found a nightclub and a brewery using this name. When searching USPTO there is a live trademark for clothing and bags with the same name, but neither of the bands have either live or dead trademarks and neither do the brewery or nightclub. I realise that finding something more unique (although this seemed unique enough already lol) would probably be better, I’ve kind of gotten attached to the name by now and would like to keep it if I can… question is, will USPTO have a problem with any of these or is it still safe for me to file despite these? If so, what happens if for example one of these bands decides to resurface years later when I already have the trademark approved and live? Thank you so much in advance for your answer 🙏🏼
Well generally one must keep using a trademark to keep trademark rights (especially if they didn't get a USPTO trademark) so if someone stopped using it in 2019, not likely they'd have any rights over it. For the other business types, it really depends if there is an overlap. Like breweries are not also bands. Bands do sell t-shirts, except most bands are not t-shirt companies (they use some t-shirt company to print the shirts).
I'd like to trademark a two-word phrase, but am wondering how you protect against all the different versions of that phrase. Ex. Cat Plant (totally made up). Do I have to file separate trademark applications for each version CatPlant, Cat-Plant, Cat Plant? I intend to use one of the versions predominately, but I don't want others to use it just slightly differently and basically go around the trademark...assuming it is trademarkable. Thank you!
So the USPTO looks at it from the perspective of if the customer is confused. Typically it applies to misspellings and sound-a-likes, since the customer would think of them as the same.
If you start with one particular class can you later add a class as you scale your business? ❤ or should you do all your possibilities in the first place, if that makes sense…. ?❤
Right typically I have one application for the words and one for the logo. I don't always do the logo -- depends on the client's budget and how fixed they are on that logo (if the logo changes, then the logo trademark isn't useful).
Can you have your business name and logo used together on a website like a combination name and logo ,but only tradark the name by itself. That way you can change the logo when you wanted as long as it was not infringing on another tradark. Thank You.
Right yes you can have a logo w/ words, and then just trademark the words. That way you can change the logo later and you are not losing the trademark. Good strategy if you are not settled on a trademark or you have a small budget (and can't file multiple trademark applications).
@@ElizabethPW Thank you again for you sharing your knowledge . I have learned so much from your videos and greatly appreciate it. I am always interested in what videos that come out. Thanks again greatly appreciated
Thanks so much for this video super informative. My question is: can I trademark a logo I paid a designer from Fiverr? I been researching that info but getting different answers. Thanks 😊
You need to either own the IP on the logo or license the trademark rights from the designer. So check your contract or terms & conditions, or get specific written license (permission) from them
@@ElizabethPW Wow.. I had a feeling I would need something that can protect me but wasn’t sure. Thank you so much for the quick reply. You are helping a lot of people here. Thanks again
Great video, I have a question. The name I really like for my new business is untaken in the TMO database, however, from a Google search I found a small business using the name, in another state. I assume they haven't officially trademarked it. Is it possible to trademark the name and use it? What would you advise in this case? I want the national trademark because I intend to trade across the country.
Well first it depends if it is in the same or a related line of business, such that customers would be confused between the two businesses. Assuming that is true, then the issue is that the other company has some common law (state law) trademark rights, wherever they sell the products/services. If they are local in-person, that might be limited, but if they sell online, it could be in many places. The short answer is that it is messy / complicated to then get a trademark, if it is possible at all. Occasionally it can be done but you may need to have an agreement with them to define who has rights where (the scope of their concurrent rights).
Hm well it depends on what is the content and how is it being monetized. For example, a youtube or tiktok would mostly be a class about streaming video if monetized via ads, but if the channel is monetized via merch you'd file for the merch (t-shirts or whatever).
@@ElizabethPW The socials are for a non-profit fandom community, we host fan giveaways, actively take donations, and also sell merch in the form of t-shirts, lanyards, campaign buttons, stickers, etc... to fund our fandom community events...so our socials are for many purposes... which makes the trademarking difficult, just wanted your take on it.
Ah so generally you would pick (1) what category/class is most important or vital to you, (2) what category/class is most likely to be copied, and/or (3) what category/class is most likely to be granted a trademark. You balance those three factors, along with your budget (since each numbered class is more $$).
@Elizabeth Potts Weinstein, hi, what you do is amazing and super helpful! I did the research following your advise. So far so good. And now how do we overcome potential likelihood of confusion if we want to register a trademark Glowicum and there is a trademark Glow already registered in the same class? Is adding words to the trademark decreasing the risk of rejection, i.e. Glowicum Natural Cosmetics or Glowicum Cosmetics? Thank you!
Generally adding additional words doesn't change anything, unless those words create a meaning that is overall different. So generic words for what is being sold like "cosmetics" does not matter -- it would only be something that makes the word have a different meaning or connotation in the mind of consumers. All of the analysis is from the perspective of whether consumers are confused by the two brands. Now if someone is trying to trademark a word that is just similar to what is already trademarked, sometimes that can be overcome, but that's a bit beyond the scope of what can be addressed in a youtube comment -- you'd need to talk to a an attorney about how to make that legal argument, if it needed to be made.
Thanks a lot for this video, pretty helpful! Here's my question: What about if there is another company with similar name, but different Good/services? Can I still register my trademark?
It all depends if the classes overlap such that consumers are confused as to the source of the products/goods. Typically what happens is the trademark examiner looks to see if other companies in class A also typically sell in class B, such that customers would expect a company to sell in both class A and class B.
Your video states that when the USPTO office searches when looking at one's application they will do a TESS search and a google search. I am currently engaged in commerce with my own website, how do I make sure that they don't deny my trademark application because they find my own website? You might answer this question in a later video, and if you do please feel free to send me in that direction! Thanks,
Thank you so much Elizabeth and this is so helpful for those of us that can't afford to file under an attorney. Question if my Mark is used with a plural added to it without giving away my name but it's not trademarked under UTPSO do you think I'm safe to file? I'm selling my Merch under that name (apparel, makeup pouch etc) so I can file that under 1A. I did a google search and someone is using the name without an "s" attached to it *collection vs "collections" selling something beauty related but there's no trademark attached to it.
Assuming that otherwise the brand names are identical, and they are in the same/similar product/service, then an "s" plural would not be enough to make them be different. The idea is that a customer wouldn't really distinguish them (they might not even notice the "s"). The USPTO does do a google search because if the other company is selling products, they have trademark rights under the laws of the state where they operate. But it does depend if the USPTO finds it and if the product/services are similar enough.
Good afternoon to you! I have a question. But first, thank you for your knowledge and willingness to share. My question is this: Let's say I have a coffee shop only that I named Johnny be good. this other place sells smoothies and coffee too. Their name is completely different but they have an item( coffee related) called "Be good to Johnny. Am I in the clear for trademarking?
I would not say “in the clear” because it is all from the perspective of the consumer - would they be confused? Really depends on the exact circumstances and you can make an argument either way.
Hi, I have a question, so if I choose a trademark which already exists but not in the category I am going to choose and I just ‘s’ at the end to make it unique as well, will it work or is it going to be a problem?
Depends if the categories commonly overlap. Like if one is life coaching and the other is shoes, then no. But if one is shoes and the other is clothing, maybe yes.
i am trying to register my brand and i found a similar name just with a simbol and two extra letters, in the same class i want to register my brand. It sounds different and looks different but I dont want to move forward if it will give me a problem.
Think about it from the perspective of consumers -- would they be confused by the two names, and mix them up, because they are too close/confusing? That's the standard to think about
What do you suggest if the name I chose for my business & domain that I own isn't trademarked BUT I found another company that is also a clothing business with the same name in another state?
Hm so the other business has trademark rights under state law, in their other state where they sell products. So if you are only a brick-and-mortar business, both could operate fine in each state. But if you are doing business online, it may be a problem because there will be overlap. Also you probably won't be able to get a registered trademark, which might matter later (if you want to sell your business, sell wholesale to retailers, etc.).
@@ElizabethPW I own a domain and the plan was to set up an online shop. I already registered an LLC in CA and have all social media pages should I just give it up & start from scratch again? I'm not planning on selling later btw
@@ElizabethPW Hi Elizabeth I’m on the same boat right now. I was working on all the legal side of my business in California for a online store then I started creating my social media pages and I came across a page that is using the exact name. I had also already bought a domain. Do you suggest to drop it and rethink a name? It’s in the same field as well.
So if another state has a business (without a trademark) 2 of the 3 words I'm trying to trademark but not the full 3 words. I can not trademark the name? I do plan on it going national. My mission and the other business mission are similar.
They may have "concurrent rights" in the place where they operate. It also depends on the words being trademarked, which words are the most important words vs generic words (system, consulting, clothing, etc.) in the name. The short answer is that it makes it more complicated and you may need to negotiate with them to work out the rights.
Hi, i have one more question, actually two, 1- if I register my trademark for one class such as household and kitchen then later I want to launch clothing for the same trademark, do i have to register that same trademark in clothing class again? How does it work? 2- do i have to register LLC to register trademark? Please advise. Thanks
I have one more confusion , i am not using the brand name i am going to choose anywhere, it’s completely new and it will be for products (not services) so do i still need to submit the specimen when filing the application? Or it’s not necessary at this point? Please advise. Thanks!
@ElizabethPW can you explain the potential conflict if I'm filing a trademark for a phrase that is used by another business, but let's say they didn't trademark it. How can I get in trouble if another business doesn't protect the phrase? I plan to trademark the phrase with a logo for differentiation.
Well if they are already using it in commerce then they probably have some state law rights (aka concurrent rights). So the short answer is that it can make it very messy and you may need to negotiate with them about it to work out some kind of arrangement
In theory yes because trademarks are country-by-country, but you might have complications if they are actually selling in the US (but just neglected to file a trademark)
What about names that sound the same but are in two different classes. Example. One sells clothing. The other is a bar. Would that be considered confusing for the trademark application?
It is about whether people would be confused because it is a common overlap. For example, I've had someone get rejected because they are filing as a podcast and the other trademark is a life coach, because many life coaches have podcasts. It is hard to give you an idea because the trademark office a bit random about what they think overlaps.
Hi Elizabeth! Thank you so much for the video! I am wanting to trademark Lienne and company. However upon doing a google search, I found a company using the name Lienne Foam and Industrial Company, They are located in China. I am located in the US. The term "lienne" isnt trademarked and neither has this company trademarked their name. I am wondering if I can still apply for the trademark since they didn't trademark their name?
After following these steps, I think I’m clear to file my brand name. I have an LLC I want do it under. Not the same name though. Does my LLC also need to be trademarked? Its not a name I’ll be using for branding purposes. It’s just for protection.
If you are not using the LLC for branding, then it can't be trademarked -- the trademark is for the brand that is use for marketing/sales purposes, to identify the source of the products in the mind of the customers
Hey Elizabeth! I hope you’re doing awesome, I've found your videos super interesting! And I doubt a product that I want to launch, with a specific formulation that I want to patent.. I've seen a few names that are close to mine, and even one that have the same name, bit of dead... So I would like a recommendation from you if that would be possible.. Thanks I'm advance!! I hope to hear from you soon
If you are planning to patent a formula, then I recommend speaking with a patent attorney about that. If someone has a trade name that is similar to yours, then you may need to speak with a trademark attorney about whether it makes sense to move forward with that name.
@@ElizabethPW thanks for the answer, and the name issue that I have.. is for a patented name that has been dead for at least 15 years, and has no presence on web search or uspto... And could you.recommend a trademark lawyer that you know.who.cpuls take my case?
If a trademark has not had the maintenance filings done and it is "dead" at the USPTO, and no one uses it, then it is not likely to be a problem unless something else comes up. No I don't have any referrals. Best of luck with your search!
I am a foreign lawyer but i am living in the United States. Can i do the trademark search and application for other people? Or do i have to be licensed? I know that court appearance or legal advice it reserved for attorneys.
So it depends on the state law and you'd want to look up their rules about "unauthorized practice of law" and see their exceptions. Typically you can fill out forms and run a search, but you cannot give advice of course or be the attorney on the trademark application. Think about what a paralegal or legal assistant can do versus an attorney.
Yes i was kinda looking for a paralegal sort of function until i do an LLM and try the bar exam. As a matter of fact i have just finished a paralegal course on immigration so i was looking for something similar but for trademark. Thanks and your videos are really nice.
Hi! Thanks for making this! My main issue is a name that I made up for my business that i’m now noticing others are using for the same concept. Its not a real word so wondering if the basic search is enough because its just one word. So how does this work for things like that?
Hm I'm not sure what you mean by basic search, but you do want to search variations of the word, like misspellings, sound-alikes, etc. Sometimes a word isn't trademark-able because too many people are using it as the generic concept for something.
I looked up for a Spanish word and nothing came up regarding trademark I started have been using it for the past year and would like to trademark it, however the English translation is trademarked in the same class, does this mean I probably won’t be able to trademark it?
Hi, thankyou for the video! I'm not from usa but if i might start small business on amazon from my country, do i need an attorney to file trademark for me or can i do it myself?
If the business does not have a residency (actual location / office) address in the U.S., or if you are not able to use id.me to get a USPTO login (if you are not located in the U.S.), then yes you need someone to file the trademark for you. Check out: trademarkia.com
It really depends on whether consumers would find that confusing. So like there could be a little kid's song with a name where that name is also for kids toys -- that might be too close.
Doubt there's the same issue. There's 3 different songs by different artists all called "rockstar" that have topped the billboard charts. One by Nickleback, one by Post Malone, one by DaBaby.
Hey Elizabeth I m just starting this process. I'm a little fuzzy on searching for logos. No trademark with my name but if I wanted to focus on logo...Is that possible? Thanks Nanette
That's a good question - sometime I will do a video on logo trademark searches. The short answer is to (1) do reverse-image searches (like support.google.com/websearch/answer/1325808) and also (2) search trademark design codes (www.uspto.gov/trademarks/search/get-ready-search-classification-and-design)
If my trademark search comes up with no results but then I can find a domain that has the same sounding name, same name but spelled differently, but is based out of the US would I be ok?
If someone else is using the same name (even if it is spelled differently) in the same or a similar enough industry, then that may be a problem. The USPTO does a google search when evaluating a trademark application, so they look for that kind of overlap.
I am wanting to trademark my business name LLC & it’s DBA. In your opinion, is it best to do the full domain name, or the shortened version or should I stick with the fullness of each to trademark?
You should trademark however you use it -- think about what specimen you will submit to the trademark office (tag/label if a product or screenshot if a service). Match the trademark to what branding you are using as part of your sales.
@@ElizabethPW thank you so much this is very helpful. Love your videos and appreciate what you are doing! I’m a bit nervous but I’m wanting to trademark without a lawyer due to tight budget and your videos are helping me make it happen to protect my business. Thanks so much! Wish me luck 🤗
Hi Tom - my regular fee for a trademark plan is $850, but that does not include the USPTO filing fee (usually $250 per class). You can learn more about my trademark service here: www.elizabethpottsweinstein.com/trademarks/
@@ElizabethPW Hi! Very informative video. I appreciate the tremendous value you give, it makes you stand out in this space. The fee you quoted above here ^ this is the amount it cost for just applying, therefore, not knowing if you're approved or not? Just wanted to make sure I understood this process. And if you are approved, what other fees should we expect to complete the trademark? Thanks!
When I am open for new clients, my Trademark Package is currently priced at $1050, plus the USPTO filing fees. If you're interested, email me at elizabeth at elizabethpw.com
Want to work with me on your USPTO Trademark application? I have a few spots in my schedule for new clients for Trademark Packages ($850 plus USPTO filing fees), where I will represent you & file your trademark with the United States Patent & Trademark Office. This includes doing a trademark search, consulting about strategy, filing the application, and facilitating it through the trademark office process. If you're interested, email me at elizabeth@elizabethpw.com and we can get started discussing if this is a good fit for you and next steps.
Taking into account the laws of the US Trademark Office (USPTO). It is possible for my brand to be approved, which will be a brand of computer peripherals, smartphones, notebooks and other technology products, in addition to own software in relation to an existing brand, but with almost similar pronunciation and spelling that develops specific software for the molecular area called MOLSOFT and my brand is called MOLROFT? 🤝🏿🇧🇷🇧🇷
If the two brand names are similar in pronunciation and spelling, and are in the same or a similar class, there is a good chance a trademark examiner will find it to be confusing to overlapping customers and will reject the application. So it is not just the names being similar, but also the classes being the same or similar.
