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So what is the trademarking process step-by-step?
I'm Andrei Mincov, the founder of Trademark Factory and we file d thousands of trademarks for hundreds of clients. And in this video. I'm going to share with you the step-by-step of the trademarking process. Let's go!
I’m going to share with you our proprietary process. We call it TMs into Rs that helps you visualize the whole journey from you have an idea of a brand to having a trademark registration certificate hanging on your wall. So the first step is for you to figure out what it is that you want to trademark. And believe it or not, it's probably one of the most important parts of the process because you need to understand, are you going to trademark the name, are you going to trademark the logo, are going to trademark the tagline, if it's a name, how are you going to do this? Is it going to be, you know, the full name, may be a part of the name, and there's a lot of a lot of interesting combinations again, depending on what you have as a brand, what you've picked as a brand for your product or your service, so assuming that you know exactly what you want to trademark, right and we call them brand elements because you have one brand right? Let's make it very clear. You are building one brand. But inside that one brand, can be as many brand elements as you can think of. Like, I recently did a video on Amazon. They've got close to 1300 trademarks in the US alone. Right? So you got one big brand and under that big brand, they've got brand elements. Okay.
So, most small businesses won't have anything close to 1300 trademarks or 1300 brand elements. But most of them will have several. Like I said the name, the logo, the tagline. Those are the things that you come up with when you're launching your business, launching your brand because you think that the brand is going to help you build a more successful business, right? So the first step is like I said for you to figure out what are those brand elements that are worth protecting.
The second step is to find out if they are even trademarkable? If those brand elements that you came up with can you even own them? Because if it turns out that you can’t, then sort of the end of the trademarking process, right? So this is accomplished by doing a trademark search and that involves checking the data basis of the relevant trademark agencies, trademark offices on those countries where you want to follow trademark and in theory, you could do it yourself. I strongly recommend that you don't. It doesn't cost too much for you to hire somebody who understands how to interpret the search results. And if you're planning to do something with your business, with your brand, it's certainly an investment worth making because what if you did the search, you interpreted the results incorrectly and you are overly optimistic. So let's say you pick a name, you do the search and then you start investing more and more and more money into building your business, building your brand and then it turns out that whoops! You can't trademark it. You get a rejection from the trademarks office and you can't overcome it. That’s the information you want to know as soon as possible, as soon as you've come up with a brand as to whether it's a brand you can own.
The third step is to file your trademark application. So let's say you know what you want to file, you know it’s trademarkable. Then you draft the application. There's a lot that goes into the trademark application. Usually it's four elements. One is the trademark itself. What is being trademarked? It's the same thing that you figured out in step one, the brand element, the name, the logo, the tagline. The second thing you got to figure out is who is going to own it. Is it use an individual? Is it going to be you as a company? Is it your LLC, but you need to decide who's going to be. The third part of the application is the goods and services that your application is going to cover. And this is also very important because trademarks don't give you an absolute monopoly over the trademark, of the name, of the logo, of the phrase, of the tagline, whatever. The trademarks are very specific to goods and services for which you claim protection. So, for example, Apple, they don't own the word Apple. They own the word Apple in connection with phone's software computers, things like that, but they don't own the word Apple for apples. They don't own the word Apple for I don't know excavators. They don't own the word Apple for spoons, right? So, when you file your trademark application, the third element of that is goods and services that your trademark application is going to cover.
And the fourth step the fourth element of the of the application is the dates of first use. So not all countries require that, most countries actually don't, but if we're talking about US, you would need to provide the information as to when you started using the trademark in business or if you're just planning to do that in the future. So that would be something that would go in your trademark application. And of course before you file it, well, one of the things you got to decide is where, which countries do you want to cover with your trademark. Because trademarks are down on a per country basis. And if you're a US business, you probably want the US trademark. And if you're selling your products or services to other countries, and those markets are important to you, you got to file those trademarks in those other countries as well. So I'm not going to spend too much time on the where because you'll find this the answer to that and by other videos, but just know that trademarks are done on a per country basis.
The fourth step of the trademarking process is to fight to get your trademark application approved and allowed. When you file your trademark application. Nothing happens. You just sit and wait. Sit and wait several months and sometimes several years really before you hear back from the trademarks office and in some cases, in about thirty percent of the cases, everything goes through smoothly. It gets your application gets approved and allowed right away and you're just like, yes, it was so easy. It's amazing. I'm so happy. But in more cases than not in about 70% of the cases, instead of congratulations from the trademarks office, you're going to get a letter that's called an office action that will list objections about the things that they didn't like about your trademark application. And you need to do something about it because if you don't your trademark will be rejected and that will be the end of your process. So this back and forth could involve you tweaking your application so that the trademarks office approves it or sometimes you have to fight with them. Sometimes you have to bring arguments that says that will prove to The Examiner that you're right and they're wrong and that's really where the most time is spent by trademark attorneys with the trademark application because a monkey can file your trademark application. That's why there are so many websites out there that will file your trademark for next to nothing. It's what happens after that matters. It's what happens after where you actually need experience. It’s what happens after where it really makes the difference between somebody who is just a trademark filer and somebody who is experienced in getting the job done. So that's the back and forth on the examination stage.
So let's assume that your trademark gets approved. Once it's approved, it will be published for opposition purposes. And what that means is your trademark application will go in some published form a newsletter or a journal or electronically and the purpose of that is to give the public the ability to raise their hand and say, oh, I don't want this trademark to be registered because it would impact my rights and I think I have prior rights to this name, to this logo, to this tagline. And so please dear trademarks office. Please don't give it to those people who just applied for that trademark. And that's called opposition. It happens very rarely because I mean who monitors those trademark applications that are filed right? There's 50,000 trademark applications fall in Canada every year.There's over 600,000 trademark applications filed in the US every year and over 7 million trademark applications filed in China every year. So, you know tiny percentage of business owners are monitoring whether somebody's trying to file a trademark similar to theirs. And so in the vast majority of cases your trademark application will go unopposed, and if it does, great, then it just gets allowed. But in about one percent of the cases, you will face the opposition and then you have to deal with the opposition and sometimes it can get so nasty. It really becomes an in-person hearing. Almost like a court, like a lawsuit, is just a lawsuit within the Trademarks Office’s system. So not in court, but within the trademarks office. It could be a trial and appeals division or the opposition board. Different countries have a different name for it, but that's where your disputes the opposition disputes can be heard. So let's assume, let's assume that your trademark got approved. It got allowed, then what?
The fifth step is for you to finalize your registration. There may be some formalities with your trademark application after it gets loud. In the US, if you filed for your trademark on an intent to use basis, so when you file your trademark before you start selling your products or before you start offering your services under that brand, you just like it's a name I want to own let's protect it first. Then I'm going to put the products and services on the market. That's an intent to use trademark. So if you're allowed, then you have to show to the trademarks office the evidence that you've started using the product or the service for example under that brand name. There may be some post allowance registration fees or some other formalities again, depending on the country. So once you have taken care of those, that's when you get your trademark registration certificate. And you could put it in a frame. You can put it on your wall. You can do whatever you want with it.
And the last step, you're like putting mean last step is already registered, right? Well, yes, but after your trademark gets registered, there's one well two more things that you need to do. One is you need to renew your trademark. In most countries, all you need to do is just to renew your trademark every 10 years. Every 10 years and the good thing about trademarks is that you can renew them forever over and over and over and over and over again. Coca-Cola has been renewing their trademark since 1892. And the second thing you need to do is monitor others trying to file a trademark similar to yours. Remember I mentioned opposition's how somebody can oppose your mark and how most people don't do that. Well, you need to monitor your brand to make sure that nobody is trying to get into the segment of the market that you value under a brand that's too close to yours. So that's the monitoring part of that and we call it follow-up.
So the six steps they all start with an F. If you haven't figured it out yet. So the first step is to figure out what it is that you want to trade mark then find out if its trademarkable, file it, fight to get it approved that allowed, finalized and then follow up to make sure you renew it and make sure you monitor others filing for a trademark that's similar to yours.
That's the trade marking process in a nutshell trademarking process step-by-step. And as you can see, it's a pretty difficult process. It takes on average 14 to 18 months. In some countries it takes longer than that and. And usually it's not the process that you want to go by yourself unless you know exactly what you're doing. So with Trademark Factory what makes us different, what makes us special, what makes us unique is that we have developed a process around these six steps that makes trademarking with Trademark Factory really the easiest way to protect your brand risk-free guaranteed anywhere. Here's how this works on the part of figuring it out figuring out what it is that you want to protect. What you do is you get on a call a free call with one of our strategy advisors and they'll listen to your story. They'll understand what your business is all about. They'll figure out what brand you got what Brenda's is that you're trying to build and they will help you identify the brand elements that you should be trademarking.
Then the second side of it, the second part, the second step is finding out whether or not it’s trademarkable. We offer a comprehensive trademark search that's included in all of our packages. And if it turns out that your brand is not trademarkable, you get all of your money back. So essentially you get a free consultation on why the brand you picked cannot be trademarked. So regularly, other firms charge about three - $400 per search per brand. With us, it's all covered. It's all included. You don't pay anything extra and if it turns out that your brand is not trademarkable, you get a full refund. We’ll file your application and this there's very little that can be done differently. Everybody can file the trademark.
Then the fourth step, fighting to get your trademark approved and allowed. With us, if you go with our all-inclusive package, you are covered no matter how many office actions we get. No matter how many hours we spend responding to those office actions. So unlike law firms that will charge you by the hour. And this can be many hours, you know, some office actions require 30-50 hours. And if you're paying the attorney I don't know three-four-five hundred dollars an hour, that's a chunk of money. With Trademark Factory, you have one flat fee that you pay upfront and it covers everything from start to finish. And if you go with our ultimate package, it even covers opposition's. Remember, I mentioned that they happen in one percent of the cases. We called an atomic bomb that almost never goes off. Well, the the ultimate package that we offer covers that atomic bomb as well.
And the finalized stage is when you file the specimens, you take care of formalities, and then you get your trademark registration certificate. What we do differently is that instead of sending you a PDF of your trademark registration or just an email saying hey congratulations, you got it. We also send you your trademark registration certificate in a custom frame. We put it in a frame because we know how important this milestone is. And we know that once you hold it in your hand, something tangible, you will never feel the same about your business. We know that this is a magical moment and we want to be a part of it for you.
And the last step, the following up is we will help you with renewals, will remind you of the renewals. And if you're still around if you're still there, 10 years after the registration, we will help you take care of all the paperwork that needs to happen for you to renew your trademark. And we also offer a service to monitor your brand to see if somebody's trying to follow trademark similar to yours. So that's what makes Trademark Factory special. We make trademarking really easy to understand and really easy to get it done.
I hope you found this video useful. I hope you see how the trademarking process works. You've got a brand that you want to protect. You can either go the process yourself. You can find somebody else other than Trademark Factory, but be warned because usually things are not as easy as they seem. Or you can use us and like I said, all you need to do for that is go to trademarkfactory.com, book a free call with our strategy advisors and see how we can help you protect your brand. And if you're just curious about brands, if you're here because you like learning things, you like hearing stories about trademarks, you like you want to understand this area of law better. Subscribe right now and get notified whenever the next video goes live. And until then, I will see you in the next video.
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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.