Here at the Law Office of Vincent Miletti, Esq. and the home of the #UnusuallyMotivated movement, we take pride as a resilient and dependable legal services firm, providing such services in both a traditional and online, web-based environment. With mastered specialization in areas such as Employment and Labor Law, Intellectual Property (IP) (trademark, copyright, patent), Entertainment Law, and e-Commerce (Supply Chain, Distribution, Fulfillment, Standard Legal & Regulatory), we provide a range of legal services including, but not limited to traditional legal representation (litigation, mediation, arbitration, opinion letters and advisory), non-litigated business legal representation and legal counsel, and unique, online legal services such as smart forms, mobile training, legal marketing and development.

Still, we, here at Miletti Law®, feel obligated to enlighten, educate, and create awareness, free of charge, about how these issues and many others affect our unusually motivated® readers and/or their businesses. Accordingly, in order to achieve this goal, we have committed ourselves to creating authoritative, trustworthy & distinctive content. Usually, this content is featured as videos that are posted on our YouTube Channel https://www.youtube.com/channel/UCtvUryqkkMAJLwrLu2BBt6w and blogs that are published on our website WWW.MILETTILAW.COM. With that, the ball is in your court and you have an effortless obligation to subscribe to the channel and sign up for the Newsletter on the website, which encompasses the best way to ensure that you stay in the loop and feel the positive impact of the knowledge bombs that we drop here!

Here at Miletti Law®, we are bound by the commitment to creating fresh, verifiable, and credible content, which looks to not only educate, but also deliver in a sense that only Miletti Law® can. In that spirit, this blog introduces you to our video titled “Quick Guide To Filing For Trademarks – 1(B)” which is accessible through the link provided at the end. Through this video, we hope to provide you with a hands-on guide on how to file for a 1(B) trademark. Before we dive into the “how,” it is crucial to mention that we have covered trademarks in our blogs on the intellectual property rights series. In our blog accessible at https://milettilaw.com/f/intellectual-property-rights-part-1?blogcategory=Hiring, we mentioned that a trademark is a unique sign or symbol that distinguishes an entity’s goods and services from those of other entities. Usually, if you want to protect your brand, you file for a trademark. A brand is simply a symbol, design (e.g. logo), term, name, or any other feature through which the good or service of a business, company, or organization are differentiated from those of others. Our own Miletti Law® and the logo (gladiator bicep pose) is a perfect example of a brand. This legal brand presents us as an unusually motivated, aggressive, and a business-oriented law firm to you. In order to give our brand a legal protection, we have filed for a trademark and, hence, Miletti Law®.

That being said, let us now dive right into how to file for a trademark.

For starters, when you apply for trademark protection, you file for either a 1(A) or 1(B) trademark. A 1(A) is used when you are applying for a trademark that is already in use, while a 1(B) applies to a trademark that you intend to be used in the future. The latter is referred to as a trademark protection with the intent to use and is registered and granted after review for infringement or possible confusion of a likelihood (2d refusal) by the United States Patent and Trademark Office (USPTO). You can learn more about the likelihood of confusion (2d) determination problem and how to circumvent it from our video accessible at https://www.youtube.com/watch?v=veHJQ0NcocE. In our video, we have provided an overview of how to apply for a 1(B) trademark because that is the cradle of everything about trademarks.

Step 1: Due Diligence

Before everything, you need to do what is known as due diligence. You need to visit the trademark application website and check whether is using a similar trademark brand as the one you intend to use in the future. This is important because if someone else has been using it, then yours will lead to confusion and face ultimate rejection.

Step 2: Start a TEAS Application

You need to go to the USPTO website and start an online application and complete the steps as required. Here, you need to identify if you are an attorney or not whether you want to apply for a TEAS plus application.

Step 3: Complete the Application

Under this step, you will be required to fill in details of your application. Examples of information you will be required to provide include:

  • Applicant information – here, you will be asked to provide details regarding who the owner of the market is. You need to indicate whether you are an individual person, a corporation, or an LLC or any other type applicable. You also need to provide your home address (City, State, Zip Code), email address, Fax number, and any other contact information you may have. If you have a website, then you will be asked for the address.
  • Mark Information – The mark refers to the actual thing you are trying to protect. Examples include word marks (brand name), special form mark (e.g. a logo), or sound mark (e.g. a theme song). Here you can also include additional disclaimers if necessary.
  • Basis & Class of Goods / Services – in this part, you should include the basics of your filing. In addition to the 1(A) (it is actually being used now) and 1(B) (intent to use in the future) trademark mentioned earlier, others may include a 44(D) (you have another application somewhere else like in an overseas country) and 44(E) (when you have a registration overseas). Further, you should also identify and indicate your international class of goods and services. Usually, every good or service has its universally-accepted international class. For instance, while class 25 comprises of items like shirts, hats, pants, etc., online e-commerce belongs to class 35. The trick here is that you should probably take a moment to decide how you want to market your brand before you just go ahead and file for numerous classes. You may end up losing a lot of money if you simply pick a lot of classes that do not bring income to your business as each class costs the filing party $250.  If you select just 1 class, but know you are going to market the brand in multiple classes, you will have limited protection. If you select 50 classes, but really only market it in 1 or 2 classes, then you will not be able to get protection since you will be unable to prove use in commerce when time comes. The trick is that you should have a vision of how you picture driving the brand, and that is how many classes you should seek to secure.
  • Correspondence – next, you identify to whom the correspondence is going to, the mailing address, and any other relevant contact information. You should also include any additional correspondence if available.
  • Fee Information & Declaration – the fee information will include the total costs for the total number of classes you have identified. The charge for each class is $250. Finally, you need to include your declaration. In a declaration, you attest or certify to the truthfulness of all the information you have provided and everything you have done regarding the application for a trademark. You must sign you name, include the date, and add a signature.

After that, you just submit your application and wait for feedback after it has been reviewed by the USPTO. Since they have your contact and address, they will reach out to you in case they need to clarify any piece of information. For instance, if they ask whether you paid for the classes, you just send them a specimen of the receipt you obtained after paying the fees.

Feel welcome to view our video at https://www.youtube.com/watch?v=VkmWeLODvRw.

Stay tuned for more legal training, guidance, and counsel. In the interim, reach out to us with questions and/or comments on our website at the Contact Us page!

Always rising above the bar,

Isaac T.,

Legal Writer & Author.