Latest / Earn Your Leisure / Trademark Renewal Process: Key Information from Trademark Attorney Rosezena Pierce

Transcript

Trademark Renewal Process: Key Information from Trademark Attorney Rosezena Pierce · Earn Your Leisure

• 0:00
  Speaker 1: So is there a time because I mean we've gotten
• 0:03
  Speaker 1: emails when you have to actually renew the trademark. Do
• 0:05
  Speaker 1: they expire at some point? And what is that process
• 0:09
  Speaker 1: like when you have to renew it.
• 0:10
  Speaker 2: Yeah, that's a good question.
• 0:12
  Speaker 3: So unlike your annual reports, because a lot of people think, well,
• 0:16
  Speaker 3: I got to do this every year like I do
• 0:17
  Speaker 3: my you know, my corporations and things.
• 0:19
  Speaker 2: No, it's a trademark registration.
• 0:23
  Speaker 3: After you have it registered, you have to maintain the
• 0:26
  Speaker 3: registration between your fifth and six year anniversary and then
• 0:29
  Speaker 3: your ninth and tenth year anniversary, and then every ten
• 0:32
  Speaker 3: years after right, So what you're showing the government is
• 0:36
  Speaker 3: that you're still using a brand. So remember I told
• 0:38
  Speaker 3: you guys earlier Coca Cola was registered in eighteen ninety three.
• 0:42
  Speaker 3: Now the thing is Coca Cola when they filed the trademark,
• 0:45
  Speaker 3: they filed it for their actual logo at the time,
• 0:49
  Speaker 3: right with the cursive writing and things like that. So
• 0:51
  Speaker 3: now every ten years, Coca Cola have to show that
• 0:54
  Speaker 3: they're still using that same logo in order to keep
• 0:58
  Speaker 3: that historically mark trademark. And so sometimes you'll see them
• 1:01
  Speaker 3: come out with a retro line and things like that,
• 1:03
  Speaker 3: and that's to continue.
• 1:05
  Speaker 2: To show the actual use.
• 1:06
  Speaker 3: And you know, sometimes we get on this topic because
• 1:08
  Speaker 3: people be like, but should I trademark my logo or
• 1:11
  Speaker 3: should I just trademark my name?
• 1:13
  Speaker 2: Right?
• 1:13
  Speaker 3: And I say sometimes you should do both. It depends.
• 1:16
  Speaker 3: But the thing is when you just do your logo,
• 1:20
  Speaker 3: that's the brand, that's the trademark. So it's so important
• 1:23
  Speaker 3: like a McDonald's, McDonald's did the trademark and standard characters
• 1:27
  Speaker 3: where they own McDonald's and steering their characters, but.
• 1:29
  Speaker 2: They also own the logo with the golden.
• 1:32
  Speaker 3: Archers for McDonald's because McDonald's has changed their logos about
• 1:36
  Speaker 3: nine different times over the past seventy years. So a
• 1:38
  Speaker 3: trademark will last as long as you use it. You
• 1:41
  Speaker 3: will not lose it. But you do have to keep
• 1:43
  Speaker 3: up the registration matence and each time you pay, you
• 1:46
  Speaker 3: pay absolutely. But here's the thing, because I know why
• 1:49
  Speaker 3: you're asking that question, because you're probably getting a lot
• 1:52
  Speaker 3: of spam mail asking you to pay these random people.
• 1:56
  Speaker 3: So you gotta be careful with that because Okay, when
• 1:59
  Speaker 3: we file our trade, the USPTO is public record, right,
• 2:03
  Speaker 3: so all you're gonna get all type of spam mail.
• 2:06
  Speaker 3: You're gonna get all type and this is why it's
• 2:07
  Speaker 3: important that you're represented by an attorney because the government
• 2:10
  Speaker 3: will never contact you. They're gonna contact your attorney, right
• 2:14
  Speaker 3: but the spammers and the scammers, they'll send you saying
• 2:18
  Speaker 3: you gotta maintain your registration at year four, so you
• 2:21
  Speaker 3: could go ahead and pay them. And then now a
• 2:24
  Speaker 3: lot of people trademarks get counseled because they think they
• 2:27
  Speaker 3: paid the government to maintain it when they paid a scammer.
• 2:30
  Speaker 3: So it's very important, and I want to just say this,
• 2:33
  Speaker 3: as of November of twenty twenty three, they are now
• 2:36
  Speaker 3: calling people when you file your trademark because the government
• 2:40
  Speaker 3: acts for your phone number. They're calling demanding that you
• 2:43
  Speaker 3: pay four hundred and twenty five dollars or they're going
• 2:45
  Speaker 3: to counsel your trademark. They're acting like they're the government
• 2:48
  Speaker 3: and that type of do not file for the scam
• 2:52
  Speaker 3: hang up automatically and tell them you know you will
• 2:55
  Speaker 3: contact the USPTO directly. A government official from the USPTO
• 2:59
  Speaker 3: would never do man you pay them over the phone.
• 3:01
  Speaker 3: You have to pay your fees through the website. So
• 3:04
  Speaker 3: what's a service mark? So a service mark is basically
• 3:08
  Speaker 3: like I'm a lawyer, right, and so I offer a service.
• 3:11
  Speaker 3: It's just a word you can use interchangeably with the trademark.
• 3:15
  Speaker 3: So you can say I have a service mark or
• 3:16
  Speaker 3: a trademark. It doesn't matter. It's the same thing. It's
• 3:18
  Speaker 3: the same thing. Yeah, But you wouldn't say a service
• 3:22
  Speaker 3: mark for a product.
• 3:23
  Speaker 2: Basically, what about So we.
• 3:26
  Speaker 1: Got the different categories here, but some of these brands
• 3:30
  Speaker 1: are global and so the international trademark this is something
• 3:34
  Speaker 1: that people have little to know knowledge about, right, And
• 3:38
  Speaker 1: having to trademark internationally requires a lot of things capital
• 3:41
  Speaker 1: number one, but making sure you have the trademark in
• 3:44
  Speaker 1: each different country. So about that process.
• 3:46
  Speaker 3: That is so very important, especially if you are going
• 3:50
  Speaker 3: to have an international brand.
• 3:52
  Speaker 2: Right.
• 3:53
  Speaker 3: I'm working with some clients in Ghana right now that
• 3:56
  Speaker 3: has a really huge brand where they do a really
• 3:58
  Speaker 3: big festival and you know a lot of us are
• 4:01
  Speaker 3: going over there for the festival in December, right, And
• 4:04
  Speaker 3: so it's not only important, yes, but it's so important
• 4:09
  Speaker 3: that you know, we protect that brand not only here
• 4:13
  Speaker 3: in the States but also in Africa as well. But
• 4:16
  Speaker 3: the thing is, so there is a there's a treaty
• 4:21
  Speaker 3: that the government has, what about eighty other different countries
• 4:24
  Speaker 3: where you can actually it's called the Madrid Protocol where
• 4:27
  Speaker 3: you can actually when you file your trademark with the US,
• 4:30
  Speaker 3: you can apply with all these different countries, but you
• 4:33
  Speaker 3: have to pay all these different country fees and things
• 4:36
  Speaker 3: like that. Now that is available to you. I don't
• 4:39
  Speaker 3: recommend it. The reason I don't recommend it is because
• 4:42
  Speaker 3: each country has their own laws, they have their own
• 4:45
  Speaker 3: different processes, and also too, we want to clear those
• 4:48
  Speaker 3: marks in those countries. So when I have a client
• 4:51
  Speaker 3: that wants to do an international brand, we hire local
• 4:55
  Speaker 3: council in those countries and you'll be surprised. Like we
• 4:58
  Speaker 3: did a trademark in Yeah, and just because of the
• 5:02
  Speaker 3: conversion rate, it was very affordable.
• 5:04
  Speaker 2: For my client to do what he needed to do
• 5:07
  Speaker 2: in there.
• 5:07
  Speaker 3: But it's just a different process, and you know, we
• 5:10
  Speaker 3: want someone local of the land so that they can
• 5:13
  Speaker 3: guide us and counsel us.
• 5:15
  Speaker 2: Right.
• 5:15
  Speaker 3: I wouldn't be a good attorney if I say, yeah,
• 5:17
  Speaker 3: let's just put it through the system and not blindly.
• 5:20
  Speaker 2: Right.
• 5:20
  Speaker 3: We need to clear that and we need counsel and
• 5:23
  Speaker 3: advisement from that region to help us with that.
• 5:25
  Speaker 2: So how much does it cost to trademark something? So
• 5:28
  Speaker 2: it could cost well, let me tell you this.
• 5:30
  Speaker 3: The ballance fees with the government starts at two hundred
• 5:34
  Speaker 3: and fifty dollars and can go up to like four
• 5:35
  Speaker 3: to twenty five, right, depending on who you work with. Right,
• 5:39
  Speaker 3: there's a you know attorneys that charge you know from
• 5:42
  Speaker 3: here all the way to five thousand dollars.
• 5:44
  Speaker 2: And I can tell you what we charge at our firm.
• 5:46
  Speaker 3: We charged fifteen hundred dollars to trademark a mark that
• 5:49
  Speaker 3: includes the filing, that includes the class, and that includes
• 5:53
  Speaker 3: us doing the research the class that's that's the forty
• 5:56
  Speaker 3: five so one class, right, and so if they want
• 5:59
  Speaker 3: us to add additional classes, it's an additional thousand dollars.
• 6:02
  Speaker 1: I want to do media education three classes.
• 6:05
  Speaker 3: Fifteen because media actually falls under the same class as education. Right,
• 6:11
  Speaker 3: So like, well, so my favor okay, I'll tell you
• 6:14
  Speaker 3: my favorite class is class forty one and it's the
• 6:17
  Speaker 3: education and entertainment class.
• 6:19
  Speaker 2: Right. And so some of.
• 6:21
  Speaker 3: My clients love me, and the reason being is because
• 6:23
  Speaker 3: they'll come to me and be like Rosina, I want
• 6:25
  Speaker 3: to trademark for coaching because I'm a coach, I'll be like, okay,
• 6:28
  Speaker 3: but you also have a podcast, you also have this course.
• 6:31
  Speaker 3: You're also educating people, you do events, you you're hiring
• 6:35
  Speaker 3: people to come speak, and all that can be covered
• 6:38
  Speaker 3: under that one class.
• 6:40
  Speaker 1: So okay, So people can do it themselves though too.
• 6:45
  Speaker 3: Right, Like people can do it well, I see, I
• 6:48
  Speaker 3: don't want to say they name, but you said it's
• 6:49
  Speaker 3: so since you said their name fall short there as well,
• 6:55
  Speaker 3: and they because they're not gonna offer you legal counsel
• 6:59
  Speaker 3: and if they say, you can pay more for that
• 7:03
  Speaker 3: and they'll connect you with someone, right, But it's it's
• 7:07
  Speaker 3: kind of chaotic because you don't have that relationship, you know,
• 7:11
  Speaker 3: And people always ask us what's the difference between you
• 7:14
  Speaker 3: and legal Zoom And I tell them the value is
• 7:16
  Speaker 3: in a relationship. You know, I run a law firm, right,
• 7:19
  Speaker 3: I care about my clients, and you know I'm promoting
• 7:23
  Speaker 3: my client's business.
• 7:24
  Speaker 2: My client success is my success. Right.
• 7:26
  Speaker 3: If I'm in a situation where I can present an
• 7:29
  Speaker 3: opportunity to someone who can help bring my client alan,
• 7:32
  Speaker 3: I'm gonna do that for my client, right. But also too,
• 7:35
  Speaker 3: I'm like, so with those type of companies you're filling
• 7:39
  Speaker 3: out that paperwork, right, and they're gonna just take the
• 7:41
  Speaker 3: information you gave them and put it into the system. Right.
• 7:45
  Speaker 3: But again, like I just said, I have clients come
• 7:47
  Speaker 3: to me and be like Rosie, I'm doing I want
• 7:48
  Speaker 3: to do coaching.
• 7:49
  Speaker 2: But then I see so much more for them. Right.
• 7:52
  Speaker 3: So it's the custom made like you know, it's not
• 7:55
  Speaker 3: this cookie cutter service. It's like me having my CPA. Right,
• 8:00
  Speaker 3: I'm able to have conversations with my CPA, like, look, CPA,
• 8:05
  Speaker 3: I want to buy a house this year. And because
• 8:07
  Speaker 3: I want to buy a house, right, I need my
• 8:09
  Speaker 3: taxes to show you this, and I want my you know,
• 8:13
  Speaker 3: my business to show profit because I want to file
• 8:16
  Speaker 3: my taxes. Yes, I really don't want to pay a
• 8:18
  Speaker 3: lot of money, but in order to qualify to get
• 8:20
  Speaker 3: for this loan, I need, you know, my taxes to
• 8:23
  Speaker 3: look a certain type of way. So it's that value
• 8:27
  Speaker 3: of the relationship instead of somebody going and filing your
• 8:30
  Speaker 3: taxes and then writing everything off as a deduction and
• 8:32
  Speaker 3: now it looks like your business.
• 8:34
  Speaker 2: Have no value.
• 8:34
  Speaker 3: And now it's like I look like a business owner
• 8:38
  Speaker 3: who is not generating money.