Transcript: Can I file one trademark application and protect that word for everything? Hi, JJ, trademark attorney for over 15 years, we've successfully registered over 7,000 trademark applications. The answer to that question is no. The USPTO requires you to select different classes and pay for each of those classes to register with the U.S. Patent and Trademark Office. And there's about 45 different classes. In another video, I talk about it in more detail. What we're talking about here is whether or not a single trademark application can protect everything, and it cannot. Your implementation of your trademark has to be for a specific good or service.
Otherwise, USPTO is going to say it's too broad that you have to narrow it to very specific goods or services. This is why you have similar names in non-related services, like Delta Airlines, Delta Faucet, Delta Dental. Those are all Delta brands, but under different categories, goods or services.
TRADEMARK NEWS
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Alibaba Group Holding Ltd sued a Dubai-based firm it said has caused confusion by using its trademarked name to raise more than $3.5 million in cryptocurrency known as "Alibabacoins."
This is Week 6 and Chapter 6 of our 20-part Atomic Habits by James Clear weekly read through! Get the book and join us every week!
Transcript: Hi, it's week six, chapter six. [James Clear] makes a great point about environment, changing small cues in your environment to change your habits.
If you want to play the guitar more, put the guitar in the middle of the living room rather than hide it away. And because of the small cues. You will tend to change your behavior because they're more obvious. A great example he gives is buying apples. He wanted to eat more apples, but he put it in the crisper in the refrigerator and because it was hidden away, he only remembered about them later when they were bad to eat and he would throw them that out.
But one change that he actually made was to put them in the middle of the kitchen. That way it was a visible cue that he can always refer to. Just like bad habits. If donuts and bagels are always in the office, when you walk in, you're going to have a tendency or habit to pick up those bagels and donuts because they're right there for you.
So adjust your environment to fit the habits that you want to create. He says we're so used to being controlled by our environment, that instead we should be architects of our own environment to create the habits that we want. So, alright, that's chapter 6. There's so much more in there. It's a great book.
Follow along with us next week will be chapter 7. See you soon.
If you would like to follow along with the series, here is our Atomic Habits by James Clear playlist:
Thank you for being a part of our community, and we look forward to helping you safeguard your brand's identity and thrive in the world of trademarks!
Warm regards, J.J. Lee and the Trademark Lawyer Law Firm Team!
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Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
What are Disclaimers for Trademarks?
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.
What is the Supplemental Registry?
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
What is the Date of First Use?
Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
What is the Renewal Timeframe for a Trademark?
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
Meet Your Team
J.J. Lee
Principal and Founder
Erin C. Bray
Trademark Attorney
Experienced Trademark Attorneys Committed to Protecting Your Brand
Founded by J.J. Lee, the Trademark Lawyer Law Firm, PLLC has successfully registered more than 6,500 trademarks with the USPTO. Dedicated to ensuring that your mark is protected from misuse or theft, our attorneys and staff work closely with clients, taking the time to understand the specific needs of their businesses. Professionally handling each matter with integrity, efficiency, and the personalized attention it deserves, you can rest assured that you have a team on your side who is committed to safeguarding your unique brand.
