334 - Lessons Learned One Year Into Trademarks Unf*ck Your Biz With Braden

On today's episode of the podcast we're chatting trademarks and what we've learned about the trademark filing process over the last year. In the past year we've filled 22 trademark registration applications and we've gotten back eight of those thus far. The way we kick off our trademark application process is through what we call Trademark Quickie Searches (notavglaw.com/tmquickie). A traditional law firm would charge you their trademark fee up front (typically $1k - $3k for smaller business, up to like $10k for big businesses like Procter&Gamble because there's a lot more that goes into it). Once you retain them they'll do a trademark search and chat with you about the likelihood of approval of your application and if you have over like 50% odds they'll file the application. Sometimes they'll also look into alternative trademarks for you. We do Trademark Quickie Searches first (these started at $10, then became $25, $50 and are now $100).We raised our price point to help with conversions because at $10 we were getting more people who were just curious about trademarks, not because they were interested in getting one. These searches are time intensive for us, it's not something you can just click a button to search. We are currently accepting five new TM Quickies. You can get started at notavglaw.com/tmquickie Registering a trademark at the federal level has several benefits including: • The right to exclusive nationwide ownership of the mark (except where it’s being used by prior users). • The right to put the ® symbol after the mark. This puts others on notice that you own the registered mark. • A legal presumption that the registrant owns the mark. Trademark rights are given to the person who first uses the mark in commerce, not the first person to file, although filing is still a great idea rather than relying on being first inuse. “Use in commerce” means you’re actually using the mark to sell a thing. If you rebrand, your new mark isn’t being used in commerce until you release it to the world. What we've learned from filing trademarks: 1. Likelihood of confusion is maybe not as big of a deal as we thought it would be, at least it hasn't come up in the eight marks we've had processed by the US Patent and Trademark Office (PTO). Likelihood of confusion means they can get approved of they're likely not to be confused with someone else's mark. This tells me we can be a little bit more aggressive with the terms we file. 2. People really need to stop filing their own trademark applications. This is because trademarks are more of an art and a science and the way you craft your application impacts approval odds and your ability to enforce the application. Even if it gets approved, you may find your application doesn't have many teeth to it when you try to enforce it. And if it's not approved and you get something back from the PTO asking you to fix it, hiring a law firm to fix it is going to cost a lot more than just hiring them from the get-go. 3. Nearly descriptive marks are a big deal and something most folks wouldn't inherently think about. Some marks actually are much easier to protect than others. Some can’t even be registered. Trademark law has invented a system based on the “strength” of a mark. Astrong mark is easy to protect, while a weak mark may be difficult or impossible to protect. There are five levels of strength with varying rules: Generic: No protection (ex: coffee) Descriptive: No protection unless you can prove secondary meaning. (ex: Coldstone Creamery) Suggestive: Protection (ex: Netflix) Arbitrary: High protection (ex: Apple) Fanciful: Highest protection (ex: Xerox) At a minimum we want it to be suggestive. I experienced this personally when I went to file a TM for the Contract Club. It was at first denied because it was merely descriptive of a club that you can join that provides contract templates. I worked with another attorney on this and we submitted a brief to argue against t