Do I have file more than one class for a trademark name?: I have a podcast show idea that I want to expand to YouTube and create a merchandise store using the name I've come up with. I researched a few times to see if that name was available via Google and the USPTO website and didn't find it. So, I'm looking to file the paperwork using legal zoom since it seems pretty straight forward and less costly. I noticed that you have to choose a "class" which means it's for goods and maybe possibly services but I'm not sure if I'd have to pay for the additional class if I'm using the name on t-shirts, cups, digital devices like cell phones, and using the name for my podcast show and as a YouTube page? That sounds like it could easily cost a lot more than I anticipated.
Trina’s answer:
You are not going to want to hear this, but I strongly recommend that you work with an attorney to draft and file your application. I cannot tell you how many clients I've gotten who originally filed the paperwork using an online filing "service" only to receive a refusal from the USPTO. Sometimes we are not able to fix the mistakes and a new application needs to be filed. Thus the original filing fee and any money paid to those services was just wasted. Inevitably, it would have been less expensive if the client used an attorney from the beginning and done it correctly. As mom always said, "You get what you pay for."
You also really need to work with an attorney to discuss your business plan to see what makes sense in terms of what classes to file for and when. He or she can come up with a filing strategy that meets your business needs and fits your budget.
Best of luck!
Can I use part of a registered trademark for my radio show?: I’ve had my radio show for the last 2 years. Beyond Surviving with Tammie. I just received a message asking go cease using. She said “Beyond Surviving” is registered and I unable to use.
Trina’s answer: You really need to find and engage a trademark attorney who can review all of the facts and counsel you on how best to respond. As mentioned by my colleague, whether you will be able to continue using "Beyond Surviving with Tammie" will depend largely on the similarity of the marks in their entireties and the nature of the goods and/or services provided under each mark. For example, if the person owns a federal trademark registration for BEYOND SURVIVING for curtains, your attorney will likely advise you that you can likely keep using "Beyond Surviving with Tammie" for your radio show (unless your show is about curtains). But if the federal registration covers radio or television programs, for example, and the registration pre-dates your use of "Beyond Surviving with Tammie", your attorney may advise you to change your mark. There are other facts and factors for your attorney to consider. Use AVVO to find a trademark attorney who can assist you. Best of luck!
I read that about 1/2 of all trademark applications get denied. That’s an awful lot. What is the most common reasons for denial?:
I’m filling out a lot of trademark applications and doing them myself due to the large costs associated with hiring a lawyer (especially for, let’s say, 5-10 of them). It’s for the brand’s various goods and services.
It’s intimidating of course to do all of this work knowing that there can be zero error.
What is the most common reason(s) for such a large number of trademark denials? If I can learn what the most common mistakes are, and the reasons for what impacts the majority of the denials, I think I’ll hopefully have a much higher success rate.
Thank you all for your help!
Trina’s answer:
Filing trademark applications is not a Do-It-Yourself type of project. There are many pitfalls for the inexperienced. The Trademark Act includes an entire list of grounds/reasons for rejecting a trademark application. One of these reasons is that the mark in an application is confusingly similar with a mark in a prior registration or prior-pending application. Did you have trademark searches run and analyzed by an experienced trademark attorney to see what prior marks are out there and whether any of your proposed marks is confusingly similar to those prior marks? If not, you could face refusals on that ground. And this is just one of the many grounds for refusal.
It is in your best interest to hire an experienced trademark attorney who can do the proper trademark searches and will also be able to advise you as to whether your marks might face refusal on any of the other many grounds for refusal. You may think that you don't have the money to afford competent counsel, but if you are serious about your business and protecting your brands, you can't afford to not do it correctly from the start by hiring experienced counsel.
There are many attorneys who charge reasonable fees and who can come up with a filing strategy so as to space out applications if necessary for your budget based on your business plans.
Use Avvo to find an attorney who can assist you. Best of luck to you!