Follow Along: File Intent-to-Use Trademark Application | in this video I file for a *real* trademark
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- เผยแพร่เมื่อ 24 ส.ค. 2024
- Follow along with me as I file a real intent-to-use USPTO trademark application for my side gig. This video is the first in a series -- in future videos I will share the USPTO responses and what I do & file to handle them.
I will also be posting follow-along videos for setting up the side gig's LLC etc., so make sure to subscribe if you want to watch those videos!!
BONUS: Here's the follow up video on how to file the Statement of Use:
• Tutorial: How to File ...
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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.
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Legal Disclosure: I am licensed to practice in the state of California and before the United States Patent and Trademark Office. Information contained in this video is not legal advice - please seek advice of counsel. This video and description may contain attorney advertising.
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Did your intent-to-use trademark get accepted? Here's the video on how to file the Statement of Use: th-cam.com/video/ai-EcO01o6A/w-d-xo.html
Hi Elizabeth, I just want to say, I stumbled upon your channel while looking up trademark information on here and I can't tell what a resource your step-by-step videos on how to submit a trademark were, especially this one as it was very relevant to my needs. I was literally pausing and rewinding your video here as I was filling out my trademark application, which I just successfully submitted! I felt like I had a lawyer in my back pocket that was rooting for me. Thank you so much for providing valuable information, especially for those of us who cannot afford pricey legal services yet ;). This is what this platform is all about, paying it forward
That's so great to hear! Thank you
@@ElizabethPW I had a question. Could I change the mailing address that I used (as my business address) while my application is still in review? Or is it better to hold off on making any changes until a decision is reached? Many thanks!
Elizabeth, thank you so much for your detailed and helpful videos. As a Start-up, being able to afford all these fees soon becomes a challenge and overwhelming, so again thank you!
You are so welcome!
The way you break this process down make me feel comfortable to moving forward on submitting myself
Great to hear!
Hello and thanks for this and the other videos about trademark with USPTO !
Question: because you filed with the intent of use (1b) , when and which forms you have to provide to USPTO later ? Cost? Thanks again Elizabeth !
Later you file a statement of use, which is $100 per class
Thank you so much for this! It gave me the confidence to finally go ahead and do it!!
Great to hear!
Thank you!
Thank you so much! The video was very easy to follow and I so appreciate you!
Glad it was helpful!
Hi Elizabeth, can you point me to the follow-up video where you explain next steps once you hear back? thank you this was super useful.
Ah I haven’t had to do that yet for this trademark! But yes I’ll post that video when it happens :)
This is fantastic!!
❤️
Super Helpful Thanks for sharing!!
You are so welcome!
Very informative & helpful! Thanks!
Glad it was helpful!
Fabulous work! thank you
Welcome!
Thanks!
Welcome & thank you!
(1) Am I protected if I use the trademark (make money) while I'm waiting for intent-to-use approval? (2) Once it's approved and I'm using it in commerce do I have to re-file something? (3) If I'm disapproved for the "intent to use", meanwhile I'm using it and making money, do I refile later under the standard filing method? (4) Is it better to just use the mark without filing an "intent to use", make money, then file for a regular trademark? (5) If I want to add another category later after it's approved can I do so? Thanks Elizabeth, I just subscribed to "Elizabeth Off Grid"! Looking forward to more content from you. Cheers.
1 - it is more than if the trademark goes through, it is back-dated to when you filed. 2 - yep you file a proof of use. 3 - depends on why it was rejected and if you can overcome that. 4 - if you file intent to use then you get that date instead of the date you first use. 5 - no you have to file a new application for the new class
@@ElizabethPW Thank you.
Oh my goodness! Some of the exact questions I had! Thank you!
Great Video, since you helped me I can help you make this into a Podcast Show with proper sound and netflix qualtiy video. I was debating the intent to use and use stuff, thanks for making it clear and will be watching your videos from now on, I already shared it with friends in the same places, thanks and subscribed
Great to hear, thanks!
Such great information.
Hi Elizabeth, I was wondering if we need to update the information on the trademark and if that's an extra cost? For example, if I start my business using an Etsy page/URL and then move to an independent website, do I need to refile to reflect that change?
Hm I have not updated a website URL but for basic stuff like contact info, you just file an update to correspondence www.uspto.gov/trademarks/apply/correspondence-and-attorneydomestic-representative
Very informative, thank you 😊
Welcome! 👍
What is the best way to determine the class of trademark that one would need. Just dig through the list?
th-cam.com/video/BMTMUAemYeQ/w-d-xo.html
@6:08 Are you able to transfer from LLC to individual? Great information!!
Sure! Anyone can assign a tradmeark to anyone else
Hello Elizabeth. Thank you for this information! I have a few questions.
-Is transferring ownership to my future LLC challenging and/or expensive?
-Can I update the email address and mailing address when I get my business email and mailing address later?
-I understand that I can't add more codes down the line, but how does this affect the trademark if I provide more services down the line? For example, a fitness trainer company decides to hire/contract massage therapists (they are two different codes).
Thank you for your time!
It's not hard exactly to transfer ownership, but you do have to file paperwork to do it & pay a fee. Yes you can update the email and mailing address by updating the "correspondence" information www.uspto.gov/trademarks/apply/correspondence-and-attorneydomestic-representative . You can provide other services/products -- at that time you'll have to decide if you also want to file a new application for those lines too.
Are you required to submit a specimen of use in each class of goods you submit.
Yes for each numbered class
Great video and content! After you click on the 1(b) it read that there will be additional fees. What are the additional fees and how much more?
It does depend -- but at minimum you will file a statement of use, which is $100 per class. If you need an extension to file the statement of use, it is $125 per class, for every 6 month extension (up to 3 years).
@@ElizabethPW thank you
Hi Elizabeth, this is extremely helpful! This video answered more of my questions than other videos I found online combined! I really appreciate your content. One thing I want to ask is if I picked more than one goods/service under the same class, but I don't sell the products in some of the descriptions, is it going to be a problem? Will I then need to remove the goods/service later with the office action?
If you end up not selling in some of them, yes you'd remove them later by amending the application
Ma’am you never posed the statement in case you don’t have either what are you to do?
Not sure what statement you are talking about?
Awesome video ❤
thanks!
Does the TM always reference the business,or could the TM be a subset of services that no one else is providing?
Thanks
To get a trademark finalized, the business must be selling the product or service.
Hi Elizabeth, do I need to submit any photos for intent-to-use packaging to proof of logo usage?
You submit the photos for intent to use later
I want to thank you for the very informative and professional videos you've produced about trademarks, Elizabeth. A quick question about the effect of filing an intent to use application. We presently have a brand we are using and are considering trademarking a slogan. The question, is when does our proposed slogan establish itself as ours for use online and in marketing? Our intent is to use this slogan in the marketing and sale of products created for the consumer at the time of purchase. It would include the applying of the slogan in our advertising and promotion (ID Class 35) of items normally classified in ID Class 25, 14, 16, and 21. The slogan would not be part of the physical items classified within ID Classes 25, 24, 26, and 21. We've already done a basic search for the slogan and there does not appear to be any current registrations for the slogan sought. Thanks in advance for clarifying this for us.
You need to be using the slogan to identify the business as the source of the class 25, 14, 16, and 21 services, for it to be "in commerce" as a trademark. Now if you are filing intent to use, you don't have to be using it that way yet but you will whenever the trademark is issued (finalized).
@@ElizabethPW Thank you for the prompt response on this Holiday, Elizabeth. So am I correct in my understanding that as long as it is a slogan that can be applied to a product contained within one of the categories, and not the item itself, it would require a single trademark and not four trademark licenses? For example, a comforter "created on demand", a backpack "created on demand", canvas art "created on demand", an online home for "created on demand'", etc?
Well trademark isn't really a license and isn't required -- it is to protect your rights -- assuming no one else has a trademark on that phrase, you can just use it. You can apply to register a trademark in four classes / categories, and it can be done all together in one application, but it is in four classes which is four class fees.
@@ElizabethPW Thanks, much appreciated.
How to send SOU in the uspto ? Thank you
I will be making a video on this
Question, for the “standard characters”.. for example if your company was “Elizabeth off grid consulting” would you just do Elizabeth off grid? If you just did that name could someone try to do “Elizabeth off grid repairs” or would Elizabeth off grid be off limits entirely?
Thank you ☺️
You'd want the name to match up what the specimen has on it. So for consulting, a service, it would depend if the "consulting" part is on my specimen. Whether someone can add a word depends on the word but generally less words is broader so it has dibs (can't just add a word to get around it).
Do you have to put “the additional stamens even tho we aren’t using our name in the trademark?
No you only put the additional statements if something special applies, like using your name or using the name of a location
Thank you very much for your time in doing this video. Super helpful!! Quick question(s)1. If my brand has standard characters (business/brand name) a design (logo) and a slogan, how do I later trademark all three so the USPTO knows they are all connected to the same brand? 2. Should i hold off using it in commerce until I am approved? Thank you in advance!!
1 - you'd file three trademark applications, one for each. 2 - if you have the money, usually better to file intent-to-use as soon as you can so you get the earliest filing date and can find out sooner rather than later whether you will get the trademark(s)
@@ElizabethPW perfect! Thank you so much for your help and speedy reply.
Hello, could you help in filling out the 'Statement of Use / Allegation of Use' in the USPTO website?
I'll be doing a tutorial soon about this (for two of my own trademark applications)
@@ElizabethPW
Thank you, I’m looking forward in seeing that tutorial. I did my trademark application all by myself and I think this will be the last step. Your videos have been very helpful.
Hello, I was wondering if you file an intent to use application, can you start using the trademark in commerce the day after or as soon as you file an intent to trademark application. For example if you'r starting a clothing brand, as soon as you file the intent to use application, can you start selling clothes with trademark on them.
Yes you can start using it as soon as you like
So Elizabeth am I supposed to create a consent form as well?😊
Only if you’re using the name of a live person
Hi Elizabeth, are these the same steps to take to trademark a pen name for intent to use? Thank you.
Generally it is about the same process but trademarking a pen name is a bit more complicated, because you cannot trademark word(s) for an individual book or movie etc, but only for a series. So you'd need to think about how long it will take to come out with at least 2 books, and make sure you have enough time to get that done so you can file the proof of use (you have a total of 3 years but that means paying an extension fee every 6 months).
Hi, quick question my business is a website that shares deals . Where I make money advertising with posts on social media . Should I put 1a or 1b ? 1a says commerce but I don’t sell any merchandise . I sell services . So I am in doubt . Thanks for all you doing to help
1a includes for services, like advertising, so that's fine.
Hi Elizabeth, I'm so grateful that I've found your channel and I appreciate your thorough step -by- step tutorials. I have question, I'm starting a podcast that gives words of encouragement about marriage, family etc, and thanks to your video I now know I can file an intent to use although I intend to release merchandise this fall. I currently have the following: LLC, Domain, and EIN. How can I trademark my company name it self or is that possible since I have not released the podcast show on Spotify or released anything for that matter?
Thanks so much!
Well you don't necessarily trademark the company name itself, unless it is being used as a "brand" to identify the source of a product or service. So think about what you are selling, how you make money -- how is that branded, what specimen would you submit to the USPTO as proof of your use, what brand is on that product label or service sales page, etc. -- that is what you trademark.
Hi, thanks for your response, yes my company name is the brand, it will be used for both the podcast and on the merchandise. Thanks again.
Can i use my Dba name same as trademark name? Please let me know
Yes you could have the DBA and the trademark be the same, if the name is used for the business name (the DBA) and as the branding (the trademark)
Hi Elizabeth, I just received my notice of allowance for my trademark. What do I need to do now? Do I need to show proof that I'm using my trademark? I did not have proof at the time of filing.
Ah yes if you filed as "intent to use" yes now you file a Statement of Use - www.uspto.gov/trademarks/apply/intent-use-itu-forms
Does this require a new application?
Thanks again for this series of videos. Question: Does registering a trademark logo automatically protect the mark's literal elements, or does one need to also register a standard character claim at additional filing expense?
You'd want to also get the standard characters, too, if possible
@@ElizabethPW thank you so much!
Thanks for all your help. We actually did 2 trademarks in the last month because we needed to change the class, mark and owner because we ran into issue with Amazon getting brand registry and was advised to submit a new one. Should we just keep both trademarks when they get reviewed in 9 months ish?
Well if the first can get approved because it is a trademark you are using, then yes keep it -- but if it was wrong then probably you are not using it :)
Question: my sister and I just filed a intent to use trademark for the name/logo of a business we are looking to start. However, we filed as individual. Was that the correct thing to do, since we technically don’t have a business yet?
If two people own it, then it would usually be filed as a partnership
Can I register the owner of the trademark as my LLC and myself as the owner? (Since it says if there is more than one owner), or just file as the LLC even if I don’t have an actual office location only a virtual mailbox (with a real street address).
Hm well you and the LLC could own the trademarks as partners but I'm not quite sure why that would make sense. The LLC can just own it and the "residence" address for the LLC would be the owner's home office, where the owner does the work.
Hi, i received my notice of allowance and am at the next step for statement of use. Is this the same thing as intent to use? I'm DBA even though i haven't made that much from my services do i file under intent to use class b?
You don't have to make much -- just at least one sale. You file the statement of use - www.uspto.gov/trademarks/apply/intent-use-itu-forms
HI Elizabeth, thank you for the information. Question You use a consent form, what if one is using a different name other than their birth name is a consent form needed?
If you are using a different name from your legal name, then you shouldn't need to consent. It's not about your birth name -- it is about your legal name (which may be the same for some people, but many have changed their legal name from their birth name).
Thank you so much for your amazing content and guidance. I’ve filed my Intent app. 😁
I do have one more question, I’m going to file for my slogan (wish I would have done it with my other app). Would that be “intent to use” as well since it’s attached to my business? Do I follow the same steps as I did filing my name?
Last question, if there are 2 words in my slogan that already has a trademark would mine be denied? (For example if it was something like “time flies when you’re having fun” , what if there is trademark named “HavingFun”.
Thank you
Congrats on the filing! So yes a slogan is done in the same way. For a trademark with 2 of the same words, it depends on whether the additional words creates a different meaning / context -- they might deny and then you have to file paperwork with arguments
I love your page and it's been very helpful. My question is I have a boutique but I do stylist work under my brands LLC which I have that name listed as a DBA under my main brand... when you register would I check the box that says DBA and add my new stylist business name? And if you submit the application do you add the TM symbol until it's approved for R? And lastly do you file an application for each name on your business license or 3 separate applications under the same class?
The owner would be the LLC and that's the most important (but you can also add the dba if you want). You don't add the TM in the application, but yes you can use it in your marketing until the registration is granted. It is up to you whether you file on every business name you are using (it is not about business license -- it is about what you are using to brand the products/services), and if you file for three names, it would be three separate applications.
@@ElizabethPW Ok. Great thanks for the response. My clothing boutique will be my LLC and wardrobe stylist DBA under the brand will be listed and I will file the trademark for the styling services. I was a resident of DE and that's where my online boutique was registered as a SP and I still own the house there but now reside in NC can I still file the LLC in DE or should I do it in NC and file for my residence... it will all still be an online boutique, Virtual Stylist & Digital wardrobe look books etc. Very rarely would I do in person services here.
Usually you want to file the LLC where you are located, so you can avoiding needing to file stuff in two states (both where the LLC is and a foreign LLC registration where you are) -- if you do anything in person, you'd probably need to file where you are located too
@@ElizabethPW awesome feedback 😎..I will set it all up here in NC👍🏽
Hello Elizabeth, if I already have a website with the brand name I want to trademark, is it considered already in use if we don't have a product yet?
No you have to make a sale
@@ElizabethPW thank you.
Is it better to form your trademark under your personal name or your LLC if you're wanting to eventually sell your business?
Depends if you want the trademark to be part of what gets sold. If you do, then the LLC owning it usually makes sense so it is another asset
This was so helpful!!! I have a question. I have a slogan I want to use on my hats and shirts but I know as soon as I put it out there some one is going try and take it. My best route is intent to use correct? In other words I can file today and start selling tomorrow and no one else can trademark but me? Would they take my money if the slogan is already taken or immediately tell me not available? I am so sorry I am confused a bit😂❤new sub !!!
Yes that's the idea of intent to use. If the trademark is approved, you get the filing date when you file (so if someone sells the next day, you are in theory protected), but that assumes it eventually gets approved. No they will not let you know immediately -- it will take 9-12 months before you hear anything and you get no refund of money if rejected.
@@ElizabethPW ty so much
Can not tell you how great this video is. I have two more questions.Can I use a P.O. Box for mailing address ? And I know this is not what this video is about but do you know if words out the Bible need to be trademarked with its verse? For instance, “The Lord is my Shepard “on a t shirt. If I put Psalms 23 on it as well do I have to add scripture in my trademark application ?Ty you so much 😂
I am sorry I was trying to put a ❤🤦♀️
Yes you can use the PO Box for a mailing address (but not for the "residency" address). Well nothing really "needs" to be trademarked exactly -- it is about how you are using it. Usually what is on the front of the shirt is not trademarked -- it is what you have on the tag or label, the branding of the shirt.
@@ElizabethPW ty so much for responding. It will be a slogan. Doesn’t that suppose to be trademark. For instance if my brand is called Kingdom but I want my shirts to say “ Be Still” I need to trademark both right? I was asking because I heard someone say you can not quote scripture on shirts because it is for public use if not a copyright version. But “ Be still” isn’t the entire verse just two words I chose to use out the full text. I am sorry if I am confusing you.
So the copyright issues are to do with the translation, the copyright owned by the human person who did the translation. You can use a translation that was done before 1927 (this changes every year) because it is expired and is now in the public domain. That is probably why a lot of people use king james version, since that's from a very long time ago and is public domain. Also the World English Bible is in the public domain (worldenglish.bible/) so that can be used.
@@ElizabethPW ty soooo much🧡
This is good info, but I'm lost because site keeps redirecting me to the ID verification process, which I've verified. Does it take 24 hours for or do you know a work around? Thank you!
Hm since ID.me is a separate company, yes it may take a bit for the systems to coordinate so you can login to uspto.gov
I just want to say thank you for posting this helpful video. I do have a question - if I have already formed an LLC with the state but I just have not started earning money yet because business hasn’t picked up do I do the intent to use application? Or since I already have an LLC registered with the state I shouldn’t do the intent to use application and go through the regular route?
It's not about whether you have an LLC. You file intent-to-use if you are not yet using the trademark "in commerce" (you haven't made any sales / money).
@@ElizabethPW thank you! What if we expect to use it “in commerce” about 1-2 months after we file the trademark application? Will that be an issue especially given that it takes some time for the application to be reviewed?
It's not really an issue exactly but yes you'd have to see if they approve it (which will take a while) and then you'd file the statement of use.
Hi Elizabeth, thanks for your video. How long do you have after the application is filed to show proof of use in commerce, what do you show as proof and how much is it to submit this later?
So you wait until you hear back from them (typically taking 6-12 months right now) and then if they accept it, they give you a timeframe at that time -- you can extend the deadline for 6 months at a time, for up to 3 years, by filing forms and paying more fees. Here's some info on specimens: th-cam.com/video/2av_9Mi4Onk/w-d-xo.html
@@ElizabethPW really appreciate this, many thanks.
Hi Elizabet thanks again for such great video. I have an LLC already and so I just want to make sure that the trademark is assigned to the LLC and the address will be the virtual LLC address not my physical address. Is that correct?
Also, my trademark will be related to selling goods for children (goods in general from A-Z) nothing specific. I have been for days searching for names all over to make sure the name/logo I have in mind are not taken and so my question is.. would any random name(considering is not taken) would suffice to sell good for children. I want a brand that would allow me to sell everything for kids. I hope I made myself clear and thanks again for such great help with your informative videos.
So if you want the LLC to own it, yes the LLC is the owner and the mailing address is the virtual address (but the residency address must be a real address -- that address is non-public). For products, if your branding is going to be on the tag/label/packaing, then you need to file in the classes of the types of products -- toys, clothing, etc. There isn't one class for all kid-related goods -- it is based on the type of product
@@ElizabethPW thank you
If I file the “intent to use” application (because my business isn’t up and running yet or making money yet), once I start the business and make money from it will I have to pay another fee to file the actual application again?
(There is a fee to pay to file the intent to use correct?)
You have to pay a fee to file the Statement of Use but it’s not filing a new application - just finishing up the one you have
Random question: would your first description (the one on top) cover all social media videos and posts, or would you need to check something else for social media platforms like FB, IG, and Twitter, etc?
It could cover videos on any platform, or even on a website, but not other content. You'd have another description for photos or written content
@@ElizabethPW Thank you!
Were you approved?
Yep! I’m going to shoot a vid soon of filing the statement of use :)
Hey, do I trademark my slogan the same way?
Yes slogans can be trademarked, if it is being used to identify the source of the product/service
I did the application for my business but didn’t put the slogan. Should I have done that?
It really is up to you, how much value it has for your brand
Okay, would I have to put it under all the class I filled for the brand name? I submitted the application for my brand name already
I’m at about 7:57 and realized my attorney did wrong 🤦🏾♀️ and I’m left holding the bag needing to file a noi 🤦🏾♀️ now trying to complete on my own after filing for 3-classes where I had to drop a class because of similarity with another business. I thought attorney should have found that in initial search 😠
Yes I'd hope they would -- sometimes stuff falls through the cracks on a search and also some attorneys are not good at searching
@@ElizabethPW spending my money at $100 a hour, it made me mad. I felt like she was practicing on me and squeezing me for money. It was an easy find, at least with said company. I just didn’t have the time, but I’m about to make time and get my trademark. She signed her name where my name was supposed to be in which I had to answer to the examiner. And then turned around and tried to charge me for her mistake; that’s when I lost it. Now I’m having to buckle down and get it done on my own.
Attorney has my address showing publicly 😡
Sorry to hear that!
Want more about filing your own trademark application? check out this playlist: th-cam.com/play/PLd0wcIHXfOTffWuy8MRFgQuGrPza1HAgQ.html