A USPTO trademark application can be confusing when trying to determine not only the difference between filing basis (“in use” and “intent to use” applications), but which best suits your needs. The primary difference between these two versions comes down to whether your trademark is already in use commercially, or not, at the time of your application. Ultimately, the circumstances around your mark and how you plan to use it will determine the best trademark application to submit.
Want to learn more about working with Wilson Murphy Law to register your trademark? Fill out the form below and get your client prospect guide.
What are the Differences Between “Intent to Use” and “In Use” Trademark Applications?
Much like their names infer, the main difference between “intent to use” and “in use” trademark applications involves the current usage of it. Are you already using it in commerce, or do you not have a need to do so yet but want it ready for future use? These are the questions you need to ask yourself when submitting a trademark application.
Below is a quick overview of these two trademark application options:
In Use (Actual Use)
When applying for a trademark that is already in use for commerce relating to goods or services currently sold with this mark, Section 1(a) Actual Use Application is the correct option to choose for your trademarking plans. This means that you have put your product out on the market for customers to purchase or consume (if it’s a YouTube channel or blog).
Intent to Use Application
If you have plans to use your trademark in the future, but as of yet have not, a Section 1(b) Intent to Use application is ideal for your situation. If you have a coming soon sign on your website, you have not launched, never sold a product, or have not put any blog posts or videos out for consumption (if filing for your blog or YouTube channel), then you’ll have to file an Intent to Use application.
USPTO Trademark Application Process and Qualifications
Trademark owners that are currently using their trademark will apply by using an “in use application basis. For its registration to be accepted, a Trademark Examining Attorney must have an example of it showing its use in commerce when filed. Failing to do so will delay the process because an Office Action goes to the applicant demanding an active example of the trademark.
The owner will also have to share with the United States Patent and Trademark Office (USPTO) when the mark was first introduced into commerce and used. This means that the trademark is currently in use commercially when relating to products and services listed on the application. For example, if you were to submit an “in use” application for belts and hats, but you only show the mark used for hats, then belts do not qualify for this option.
In this scenario, one can apply under “intent to use” concerning the belts since the trademark has not yet entered commercial use. This flexibility has helped many up and coming entrepreneurs develop branding for products, slogans, and even product names, and have the trademark protection they need before ever entering commercial use.
Don’t Underestimate the Power of a Trademark
Protecting current and future business initiatives and products is of critical importance to maintain competitiveness, highlighting the importance of trademark law. Whether you decide to use an “intent to use” trademark application option or “in use”, this process helps support your efforts to protect your property in a competitive marketplace. And don’t forget, before even starting the trademark process, you need to do a trademark search first.
In December of 2019, I was about to pull the trigger on the $5k club coaching program. My biz girlfriend highly recommended it, but I was over investing in my business and not getting ANY results. I was investing in other coaches, copywriters, FB ads, and everything else with little to no results and I was OVER IT.
I know what it’s like to make these investments in your business, and it’s nothing to take lightly. And registering your trademark is no different.
By the end of this post, you’ll get a glimpse of what happens when you invest in your trademark, and how it advances your business.
1.Positive trademarks generate customer loyalty
We all have brand loyalty to certain companies. Mine? Target and Chik-Fil-A. Why? Because these companies have INCREDIBLE customer service. Any time I go to these companies, I know I’ll feel a certain way after I leave. They’ve built their trademarks on goodwill. But those aren’t the only ways that you can build brand loyalty with your trademarks.
One way to do this is to produce quality products consistently, so that your customer can’t imagine going to anyone else. A company that has done a great job of this is Subaru. They have a cult like following and their customers repeatedly buy their cars. When you have a registered trademark, you can protect your brand from infringers who try to use your good name. Many times they are trying to confuse your customers so that the customers buy from them thinking it’s your business
2. You can expand into other product types and new markets
Are you only selling luxury or high ticket offerings?
Would you like to sell a lower tier offering so that you can expand your mark even more? Having a registered trademark and a brand that you’ve already established helps with expanding your products and market.
Most registered trademark owners have a certain type of consumer buying their product. It’s easier to increase your client/customer base because the brand has already established a reputation. So what does this look like?
A brand like Mercedes started producing a less pricier car so that people who’s budget was lower could still purchase their product.
But maybe you’re on the other side of this, and mostly sell lower tiers, and want to offer a higher tier product.
A company that’s been able to do this is Toyota through their Lexus brand. Toyota also has a loyal following, so when they came out with their luxury brand, they were able to expand their market to customers who had bigger budgets and loved the Toyota quality. For my service based businesses, most of you have a high ticket offering, but you can expand your client base and allow people to test the water by offering lower ticket items before they invest in the big ones.
3. Investors are more likely to fund your business
Investors love trademark registration. They are risking their own money because they believe in your business. They want to ensure that their money isn’t going down the toilet.
Investors don’t want your competition swooping in and registering the trademark. They don’t want to risk their money going to a lawsuit because you didn’t do the due diligence to get a trademark search and file the trademark application. Investors want to be assured that their money will continue to grow and make money.
If you invest in your trademark, investors interpret it as you not believing in your business. If you’re not protecting your business’s future, why should they?
According to a 2018 study, Trademarks in Entrepreneurial Finance: Empirical Evidence from Venture Capital Investments in Private Firms and Venture-Backed IPOs, found that registering trademarks help with business health, venture capital investment, and even IPO success.
4. Registered trademarks increase in value over time
The longer your business is open, the more likely you’ll have business growth, and an increase in customers/clients. This means more people are becoming aware of your brand. More brand awareness = More clients
More clients = More money
More money = Increase in value in your business
Consumers and investors look at your business as a whole, and your intellectual property portfolio is included. If you ever wanted to sell your business, the buyer will want to know the valuation of your company including your trademarks. That’s why it’s so important to invest in your trademark.
A company like HoneyPot had less value 10 years ago than it does today because there is more brand awareness. And now, just the name HoneyPot, brings value to the company.
5. Don’t use the trademark any more? Then sell it!
The best part about your investment is that it lasts as long as you’re still using it. You’ll have to “renew” it every 10 years through the USPTO website, but as long as you’re using the trademark as stated on the application, you should have no issue.
And you know what you can do if you decide you don’t want to use the trademark any more?
You can sell it!
Trademarks are running out, and some people are dying to use ONE NAME because of emotional ties. Now you’re getting a return on your investment from selling off your trademark that you no longer use because you own it.
When you invest in your trademark, the sky’s the limit. There are so many opportunities and advantages of registering your trademark, and you can get started today for free.
By grabbing the trademark process roadmap! This roadmap is a step by step guide that discusses what to expect when going through the trademark registration process. It also includes common mistakes that I see with trademarks and filing your trademark applications.
Do you ever wonder why the heck you have a terms and conditions page on your website? Do you know what to include in your terms and conditions? Well, let’s chat about that today. I think it’s so important when it comes to the legal part of your business to know why you need to do certain things and not just blindly doing it because someone said so.
Terms and conditions (or Terms of Service) is an agreement that you put on your website that your visitors know how to behave when they are visiting your site. By setting out these expectations, it is easier to defend your right as the owner not allowing them on your website. Expectations are so much easier if you have a list telling someone what to do. If a visitor does violate your terms and service, you can ban them from your website or even sue them if it’s detrimental. Now that you know what terms and conditions are for, let’s get into what to include in your terms and conditions.
If you sell services or goods, then you need to have a refund policy. Your refund policy needs to be consistent across the board. If your refund policy isn’t consistent, then any chargeback will likely err on the side of the purchaser. Do you want to lose thousand dollar chargebacks? I didn’t think so. By having a refund policy, the purchaser agrees to how you handle refunds, and it’s harder to argue against it. Also, I recommend that you add refund policies to the pages of your products/services. Your refund policy should include the following:
The numbers of days a customer has to return a product
What kind of refund you will give to the customer after they return an item
Who will pay for the return? If you sell digital products, whether you accept refunds, and if so, in what cases.
Not sure what intellectual property is? Intellectual property is a work or invention that is the result of creativity. Intellectual property includes copyrights, trademarks, patents, and trade secrets. The content you produce on your website is copyrighted material. The name of your website and any courses you create are trademarks. The ultimate protection you get is by registering your intellectual property with the right federal agency. By including how people can use your intellectual property, it will keep visitors clear about whether or not they can share your content. Some people don’t want to share any of their blog content, but there are other websites like BuzzFeed who encourage their visitors to share.
Also, if you register your trademarks, you must defend them, or you’ll dilute your brand and will no longer have the same type of protection. If you aren’t protecting your intellectual property, then it’s hard for people to distinguish you from the millions out there. So if someone violates your terms regarding your intellectual property, you should include the consequences, such as deactivating their account or sue them for damages.
Limitation of liability
A limitation of liability clause limits the amount and types of damages one party can recover from the other party. You can’t put a financial cap on death or personal injury arising out of negligence or fraud or fraudulent misrepresentation. You must follow the state’s laws, and the limitation must be reasonable, clear, and conspicuous. If your limitation is confusing or contradictory, the court will construe it in favor of the client/customer.
Because your website is yours, you can stop people from coming to it, if they don’t abide by your terms and conditions. When you have a termination clause, you can tell your visitors the expectations you have from them when they visit your site. If a visitor can’t follow this, then you are allowed to terminate use. Termination is especially useful for those who have memberships and subscriptions. Most termination clauses contain two standard points:
1. If you violate the terms and conditions, the owner can revoke access;
And 2. The business is allowed to terminate for any reason at the discretion of the business.
Some things that businesses include for grounds for termination are stealing your intellectual property, making disparaging comments, and not paying the fee if it’s a membership or subscription service.
Bonus: Include a clickwrap so that your visitor has to expressly agree to your terms. I’m still trying to figure out how to add a clickwrap pop up without a ton of pop-ups on my page. But in short, a clickwrap is a pop up that says, “I agree.” It is a legally secure and easy way of creating binding agreements with your visitors online. There are a few legal cases that discuss clickwrap.
Now that you know, are you going to include these sections in your terms and conditions? Do you have terms and conditions on your website at all? If you don’t, you can grab it from my contract template shop. It takes about 15-20 minutes to fill in, and costs 1/2 the price of hiring an attorney.
Your business is growing and you’ve been hearing the buzz about registering a trademark all over entertainment blogs.
You also know people who have had their trademarks stolen and it’s something that lingers in the back of your mind. Some days you think, “That’s never going to happen to me”, and then you go in your Facebook Group and see that it happened to one of your cohorts.
In this post, we are discussing why it is so important for to register a trademark for your business’s name because many times it’s put on the back burner. There are many benefits that business owners don’t realize they receive after registration. Business owners know how important the legal aspects are, but don’t know where to start or how to grow their business.
But today, you’ll find that the sooner you file your application, the better so you can take advantage of these benefits.
1. You have ownership rights
This is THE #1 reason to register a trademark. Having ownership rights means that you actually own the name (in the case of word marks) in association with the product or service that you sell. Being the owner of a registered trademark allows you to enforce your mark against any infringers (see more about this below).
You also know that when you trademark a business name, it is officially yours and that you aren’t infringing on someone else’s mark. Building a brand on a name that belongs to someone is costly. It can result in shutting down your business, excess attorney fees to defend a lawsuit, and damages because the other party will take action if you get caught.
2. Use of the (R) symbol
The registered symbol informs everyone that your mark is registered and that you are ready to defend it against infringers. When you use the registered symbol, you are claiming rights as the owner of the trademark. The registered symbol can be used whether you’re on the principal or supplemental register.
You are only allowed to use the registered symbol after the TM Office approves your TM. If you use the registered symbol before approval then your application is in danger of denial because it is illegal to use that mark if your mark is not registered.
3. When you register your trademark, you have the ability to sue infringers in Federal Court
Once you register a trademark, it is your duty and responsibility to defend it. If you are not defending your mark, you are risking dilution. If your trademark becomes diluted, it does not have the same type of protection as it does when you first registered your trademark. In a nutshell, dilution occurs when someone uses a famous mark in a manner that blurs or tarnishes the mark. The easiest way to ensure that no is infringing on your mark is to monitor your trademarks (link).
When you decide to sue your infringers, the Federal Court presumes that you own the mark, if registered. This means that you have less to prove in court. If you win your case, then you can be awarded the following:
Court order (injunction) that the defendant stop using the accused mark;
An order requiring the destruction or forfeiture of infringing articles;
Monetary relief, including defendant’s profits, any damages sustained by the plaintiff, and the costs of the action; and
An order that the defendant, in certain cases, pay the plaintiffs’ attorneys’ fees.
4. When you register a trademark, you own a valuable asset
Trademarks are one of the most valuable assets of your business. As you continue to grow, your trademark gains value. Brands like Apple, Coca Cola, Google, and Netflix have brands valued in the BILLIONS due to the brand recognition they’ve acquired. Once your brand is earning more and more recognition, other companies are going to notice you.
You can license your mark to another company to use for collaborations. A license is when you allow another company or person to use your trademark to make products or conduct services under a trademark licensing agreement.
Another way that you can use your trademark is to sell it. There are plenty of companies looking to acquire names that they love and have built their brand on, but you have the trademark. If you are no longer using the mark and have no plans on using it, you can sell and assign the mark over to that company. In the end, either of these strategies means money for your company. When you invest in your trademark, there’s many things you can do so that it earns money for you.
5. Use it for foreign trademark filing
Remember that filing your trademark in the USA only gives you exclusive rights in the 50 states of the USA. But you can file your trademark in other countries which many companies do for strategic reasons before they even file in the US, but that’s another story.
If you have your US trademark registration, you can use your US trademark registration as a basis for filing in another country. The Madrid Protocol allows you to seek registration in any of the countries that have joined the Madrid Protocol. You can file a single application, called an “international application,” with the International Bureau of the World Property Intellectual Organization (WIPO), through the USPTO.
Final thoughts on the benefits of registering a trademark for your business
There you have it, the 5 reasons that you need to register a trademark. If you have a name that you want to trademark, but aren’t sure that it’s up to par, then snag the trademark freebie below. It’s a guide that helps you understand the trademark process and mistakes to avoid when picking a name and filing an application.
Online courses are huge right now, but creators have to deal with their online course being stolen. It is one of the most common questions from my clients. If you’re putting the course out there, there is no sure-fire way that it won’t get taken. But in this post, I am going to share with you the inside scoop to prevent it from happening and even if it does, there are consequences.
To prevent someone from trying to steal your content, which may include your course, make sure you include information on how content on your site should be used. A good example is from Buzzfeed’s Terms of Service:
“The Services may contain Content specifically provided by us, our partners or our users and such Content is protected by copyrights, trademarks, service marks, patents, trade secrets or other proprietary rights and laws. You shall abide by all copyright notices, information, and restrictions contained in any Content accessed through the Services. The trademarks, logos, trade names and service marks, whether registered or unregistered (collectively the “Trademarks”) displayed on the Site are Trademarks of BuzzFeed and its third-party partners.”
This is only part of the intellectual property section of Buzzfeed’s term of use, but you get the idea. Buzzfeed’s terms also include a use license, which gives users permission to use their content in a specific manner.
“By purchasing your template or any product from The AW Shop™, you are granted one revocable, worldwide, non-exclusive license to the product(s) You have purchased. If you violate this license by giving or selling a copy of Our template(s)/product(s) to anyone other, or if you imply that anyone who gets access to our template/product(s) has the right to use it for his/her/its commercial purposes, We reserve the right to invoice you for the licenses you have gifted to others and revoke your access to our template(s)/product(s) permanently.”
This addresses how many people can use her product, and what happens to you if you violate her license agreement.
Watermark your content for videos and/or use the copyright symbol to prevent someone from stealing your online course
If you are conducting webinars, make sure you pop your head in the videos. This shows that you are the person who is instructing the course. Additionally, by adding a watermark to your webinar videos, your followers can recognize your videos and alert you if someone else is selling them.
Last but not least, use the copyright symbol on all of your courses, e-books, freebies, and anything you give or sell to your clients/customers. This puts everyone on notice that you are the creator of the material. The copyright notice format is:
Will this stop everyone from trying to steal your course? No, because some people just don’t have a moral compass and think they can get away with any and everything. But every Regina George is hit by the bus at some point, and they will eventually see their day in court. After you read this, go to your website and content that you have created, and implement these strategies.
Trademark the name of your course
Trademarking the name of your course will not protect the online course content from being stolen. BUT when someone comes to you saying that your course name has been stolen, you can send a cease and desist letter. Then, the course creator will have to stop selling that course. Trademarking is insurance for your company name because consumers associate it with your brand.
Want some examples of business owners who have trademarked their course?
Marie Forleo- “Copy Cure”
Marie Forleo- “B- School”
Amy Porterfield- “List Builder’s Lab”
Ashlyn Carter- “Copywriter’s For Creatives”
Want to make sure that you have the legal “stuff” in place for your online course? Fill out the form below and I’ll see how I can help.
Growing a business is not easy and business owners make the same costly legal mistakes.
You’re working hard and churning your wheels, but there’s this nagging in the back of your brain about all of the legal aspects that still need to be taken care of. Although, I can’t help with the overwhelm (therapy and meditation helps, I promise!), today I am going to give you 5 tips on how to grow a businessonline. When you are growing your business online, there are steps you will need to take to protect yourself and your business from liability. The legal business growth tips below are some steps are just the tip of the iceberg on steps that you should be taking.
1. Form an LLC or corporation.
There are 4 types of business entities: sole proprietorship, partnership, limited liability company (LLC), and a corporation. When you are forming your business, you may start as a sole proprietorship or partnership. As you grow, you’ll want to create an LLC or corporation depending on the type of business you have and how you want to be taxed.
An LLC is a business entity that shields the owners from being personally responsible for the LLC’s debts and lawsuits. If the company gets sued, you’re less at risk of losing your home or personal bank accounts to pay a judgment.
If you form an LLC or corporation, this entity shields your personal assets if someone sues you. Depending on your election with the IRS, you may be able to save money on self-employment taxes. In addition, if your business is a start up or you plan on having investors, forming a corporation makes you look professional and it is easier to raise capital because of the sale of stocks. Also, investors are more likely to work with a corporation as they are most familiar with this type of entity. It’s much easier to scale and grow a business once you have investors in place.
2. Choose your tax designation.
LLCs and S- Corporations are pass through entities which means that the entities are not subject to federal income tax. The IRS will tax the owner individually on their income. The IRS taxes LLCs as one of a sole proprietorship or partnership, depending on the number of owners. Basically, the owner will report all of the income from the LLC on their personal income tax return and pay personal income tax on the company’s profits. A C-Corporation is subject to double taxation. The IRS taxes a C-Corporation’s profits, as well as the shareholders dividends if the corporation distributes the profits as dividends.
If you elect an S-Corporation, you can bypass double taxation and possibly paying personal income tax on all of the company’s profits. The LLC or corporation must meet certain requirements, but instead of reporting all of the income of the company on a personal income tax, the owner(s) must pay themselves a reasonable salary, which will be subject to Social Security, Medicare, federal, and state income tax (if applicable). If there are remaining profits after you pay yourself a reasonable salary, that profit will not be subject to self employment tax, and you can take it as a dividend (bonus).
As you are growing your business, your business will start getting brand recognition. A consumer can recognize your brand by words, a design (logo), or a sound (like the NBC chimes). By trademarking your name or logo, no one else can use your name or logo to profit off of the brand you created.
If you want to register a trademark, you will have to register the word, logo, or sound with the United States Patent and Trademark Office (USPTO). You’ll want to make sure that your name is not similar to an already registered trademark before applying using the USPTO trademark search engine.
Once you apply, the USPTO checks your trademark against their database. The USPTO has to confirm that the mark was not previously registered or a likelihood of confusion. If everything checks out with the USPTO, they will register your trademark and no one else can use it without your permission.
4. Copyright your content.
As an influencer, blogger, or business, you have worked too hard for someone to just swoop in and copy your ideas. While growing your business, you want to make sure that copyright your creations. A copyright can be a book, website, photography, music, plays, and the list goes on. Copyrighting gives you the legal rights to use your content in anyway that you want.
To register for a copyright you have to go through the Copyright Office. There are different categories to copyright your content, such as literary works, visual arts, performing arts, sound recordings, and single serial issues. Once the Copyright Office approves your registration, you will receive a certificate of registration.
These terms and conditions guide users how to behave on your site and how visitors should use your information. Your terms and conditions should include:
Intellectual property rights
Limitation of liability
Final thoughts on how to grow a business
Growing a business online is a lot of work and it will not happen overnight. You need to make sure you have the correct legal foundation so that as your business continues to grow, your business isn’t costing you more than it’s making. You’ll want to be sure to protect yourself from liabilities and prevent lawsuits before they happen.
Have you implemented these tips in your business yet? If you haven’t, use these tips on how to grow your business online to get your business off the ground.
If you’re still spinning your wheels about what you need to do for legal protection in your business, pick up The CEO Legal Kit. This guide helps you understand how to implement the legal aspects into your business so that your business can grow and scale.
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