Trademarks: How to File and Pick a Brand Name for Amazon #16

spk_0:   0:07
Welcome to the first, My Amazon guy podcast. My name is Stephen Pope. I'm the founder of my Amazon guy. It's an agency out of the Atlanta Georgia area. Get eight people over 65 active clients, and the reason we're starting this podcast is because we feel like there's not enough practical knowledge being explained or expressed in other podcasts. So I'm gonna be talking today to Corey Ray, who joins me now. Hey, Quarry, how's it going? And Corey is a trademark expert who works for me, and he's been filing trademarks. And so the theme of this particular podcast is gonna be entirely around trademarks and brand names. So Cory, appreciate you. You're joining me for this. And first question, is it difficult to file a trademark?

spk_1:   0:56
So the process of filing that trademark isn't difficult per se. Obviously it's a complicated process because it is very much a legal process. But using that going on the website for the U. S. PTO, there's actually a step by step process that kind of takes you through it. So actually feeling out it's not too difficult because there's something that explains each and every step that you need to enter in S O I. Myself, when I learned how to do a trademark, it took about a now and 1/2 just went through all the steps. Each by one by one. I kind of read what was needed and what was required. So it's pretty simple when you do it yourself. The actual Web site and the service itself recommend you have a lawyer. Do it with you, mainly because it'll make the three official approval process a little bit quicker. Love it smoother but is not required to actually have a lawyer.

spk_0:   1:49
So I filed a few trademarks myself, and I've noticed that Amazon has really changed how brand registry works as well as trademarks. With the U. S. P T. O and the United States, Patent and Trademark Office has kind of updated some of the rules in the past six months, for example, you can no longer file an international trademark, are sorry file a trademark for somebody internationally who's not domestically got a law degree. And so you know, there's much of other changes we've seen, and the reason why trademarks air so important, of course, is because it gets you access to brand registry with Amazon and through brand registry, you get the brand store, the A plus constant brand brand ads, brand dashboard and analytics. The laundry list of benefits goes on. So for a lot of new sellers, though, they don't have a trademark, and they should go get one s o the cost of file a trademark, you know, roughly $225 or so

spk_1:   2:49
to 75 for the recommended

spk_0:   2:52
form. And and so my Amazon guy we actually offer this is a service to file trademarks for our clients as well. You go to my Amazon guy dot com, click on the service's drop down, and we followed trademarks for 7 75 But in this podcast, we're gonna talk about how you could file it yourself if you so chose and what that kind of process looks like. So when when when I went and filed my first trademark, it was an overwhelming process. There's this word called specimen. What? What is a specimen? Cory.

spk_1:   3:21
So a specimen is pretty much your evidence of the trademark that you're going to be using. So what is basically just an image of your trademark on your product or your packaging that you provide to the trademark office as proof that you, in fact, are going to be using this product. They require certain certainly formats and things like that, yet created description about what it actually is. But basically, it's just an image of your product.

spk_0:   3:52
And just to clarify, it's not. The image has to be like a real photography shot. Can't just be like a graphically made one, right?

spk_1:   4:00
Yeah, it has to be proof that s b as if it was just a cell phone image. Because if I could just kind of do a computer image and going to get passed off, But they're pretty. They're Hitler's about what it actually is. They want to be authentic, actual image of the product.

spk_0:   4:15
And and so typically, you're putting some things under the packaging, such as the logo name you're trying to trademark, right? Correct. And And so when you do this, um, sometimes when we file trademarks, we basically don't have the item in stock yet, right? Like we're we're preemptively creating this brand name. It's this imaginary thing out there in the world and we're gonna try and make it come to fruition, but we don't have the product in hand. Can you follow a trademark yet?

spk_1:   4:44
Yes, you can. So there are two different ways to file a trademark. You can file it for a product that you have already in use and product that you're going to be using in the future. And so it's important to choose the right one because oftentimes the office will reject the trademark, or at least have become edited your form when they see that your date doesn't match when the product is actually alive.

spk_0:   5:09
And so if the product's not in use yet, the trademark office typically won't accept it. But if you print out some packaging on an item, you're probably gonna be good to go. So on that packaging, make sure the brand name exists. That's probably most important thing, right? Oh yeah. Barcode and expiration date. If if that applies or information like your website, all those things can be official signals to the trademark office to make sure that it looks more official to get accepted. That right?

spk_1:   5:39
Oh yeah, Yeah. Having a website is a great way to show that trademark office that you're you're official and in business with this kind of Brandon's mark,

spk_0:   5:47
and you don't have to have a new official website. You could just be an Amazon only business. But you know the cost of the domain 10 bucks a year. You might as well, even if you don't actually sell it through a Shopify account or something on your website. Just listing your product on your website and then saying bye on Amazon eyes beneficial not only because you get control of your Amazon catalogue should they say, Hey, prove you on this product. You can refer to your own website as additional proof. The trademark office will typically check that check that website as well. All right, so so when you file a trademark, it's a pretty lengthy process. Yeah,

spk_1:   6:24
obviously we knew for the first time it's gonna take the longest just because you're familiar with it.

spk_0:   6:28
But like, how long does it take until it goes live? Once you file

spk_1:   6:31
it, once you file it, that is actually quite a lengthy process. It's about six months from the date that you file it when it's actually going to be live. When you use it, when you can go on Amazon and file for brand registry. It's going to be obviously reviewed by a lawyer, a trademark office. And so that process obviously takes a long time officially.

spk_0:   6:53
So let's go through that timeline. So it's a six month process, so you file it wins the first time you hear back from the uspto,

spk_1:   6:59
so you should hear back within the 1st 2 to 3 months. That's typically once the first official review has gone through by the lawyer. That usually respond whether they need you to provide any more information or adding more disclaimers or reasons that it might be rejected.

spk_0:   7:19
And that gives you an opportunity to respond. So what are some common things? Need a better specimen? Need? Need some clarification? Hey, that trademark name is too generic, right? Absolutely. So you know, for example, Hey, I sell really big artwork and I wanna call it Big Art pits. Well, that one's not gonna fly with the trademark office because it's too descriptive. But if you had a brand name such a cz, uh, that's not the word our big or picks. And it was, I don't know. Let's just say randomly, I'm looking around the room right now trying to come with a brand name on the fly. It's not my similar my forte, but let's let's say that the brand name was E no artistic nature, so I don't know, doesn't matter morally more likely to get accepted if it was a non descriptive word that doesn't have meaning to people in a day to day use. So when you when you go to file your trademark, you're choosing your brand name is probably the most important thing you d'oh! And it's to think about. What does the brand name mean? How does this convey messaging to consumer? And and to make sure that the trademark will go through, make sure it's not too descriptive of what the nature of it ISS. So it's It's interesting that you have kind of a more luxurious names. Some things you could do right? You could. You could do a misspelling right?

spk_1:   8:43
Oh, yeah, that's a great example of a trademark that you can use that will pass without problem.

spk_0:   8:50
Or you could combine a couple different words or at a letter in front of another word. So those are some of the things you could do to make sure your trademark name will work, and before you file it, what's the first thing you do? You should go check to see.

spk_1:   9:03
Make sure it's already not registered.

spk_0:   9:05
That's the first thing, and and lo and behold, you search that name in. You may see dozens of other trademarks. Does that mean you can't file it yet

spk_1:   9:13
now? So there are different reasons that will allow you to file it if it's already in the system, trademarks can be abandoned and no longer live for those particular persons because they for whatever reason, whether they didn't renew the trademark or in their process, they failed to comply with the policies and were eventually rejected. That caused the trademark to be abandoned, so it makes it available for for you to go in and use that trademark and file it on your own behalf.

spk_0:   9:45
You know, the other thing that was interesting the other day, you know? So we've got the name, my Amazon guy, and we have the word Amazon in our brand name. Um, at the time when we made the agency a couple of years ago, there was no trademark on the word Amazon. So get this as of 2019 in October, Amazon now has a trademark on board Amazon. They also trademark on the words seller central, which is interesting because Wal Mart also has a solar central. So I'm not sure how that's gonna play out, but it's possible to have a trademark on a word that also has other categories. So, for example, if somebody wanted to trademark the phrase, I don't know the Amazon rainforest, their trade, my probably would go through because it wasn't related to selling selling on a marketplace. Whereas if we tried to file my Amazon guy right now, I bet it would get rejected because it's consulting. Service is to sell the goods on on Amazon. So we're actually thinking about you know, whether we have any risk there. But that's a story for another day. So So let's go back to that timeline. So first thing you need to dio is you need to search on the trademark office to see. Is there somebody that already has the name? That's the That's the first and most important thing we do when we go file trademarks for other companies. And then after that you filed a trademark. You get that 2 to 3 months response, and then what happens next?

spk_1:   11:07
So depending on the response, you get that. Typically it will be one of those common rejections that we see from the the office that would prevent a trademark from going through like a name being too broad or the specimen is not clear enough for when the class declaration issues. What you do then is fill out a response form on the website when you file your trademark officially, when you actually submit it, they provide you a serial number, which you can then use to go back to the website and look up the status of your your form. You could then use that to see what the lawyers have their response and kind of their advice of what you could do next. And it provides a a way for you to respond to their inquiry.

spk_0:   11:51
And so let's say that that goes through what happens then.

spk_1:   11:55
So when you pass it through, the horse can review the response and then through those

spk_0:   12:01
so it doesn't go for, like, opposition.

spk_1:   12:04
Yeah, so there's there is the opposition. So after you have your initial review. They then search through the trademark system to find, to make sure there's no other train marks they're competing against that that would prevent it from being approved.

spk_0:   12:20
So the email you get from the trademark office will basically say, Hey, you've got you got You got two numbers. Get your serial number and your registration numbers so you get the serial number the moment you filed a trademark, and that's basically kind of like your application number, if you will. The registration number is the last number you get. That doesn't happen until the full six month process occurs, and you can get onto the onto the registry once it's been accepted by the Uspto at like right around month three or four. Then it gets published for opposition around month 4 to 5. It goes up for opposition for like a month or two, and then at the end of the six months after it's been up for opposition for a time period, it then gets accepted, and then Uspto will respond to say congratulations. Here's your registration number. There's kind of like a 24 or 48 hour waiting period at that point. So when I first got my trademark for a brand name called Monster was the very first trademark IRA file, and I immediately went on to try to set up my brand registry. Well, you just have to wait another 48 hours. So once you get your trademark, make sure you wait an extra 48 hours before you try and file for brand registry with Amazon, because it won't go through quite as of yet, but you'll have everything you need to do it. So that's kind of the timeline. So let's recap that so So Step one. You search the trademark, make sure it's not taken step to you, file it. You wait three months or so, see if they have any questions. If they don't, then it goes up for opposition. And finally, publish is at the end of month six. So that's kind of the trademark process in timeline. Let's talk about let's talk about the differences in in trademarks, though, So there's there's word Mark versus, uh, you know, an image marks. Let's talk about that. So why? Why would I want to file one versus the other

spk_1:   14:09
eso for purposes off of Amazon? Pretty much all you'll need is a word. Mark is there's a simple word mark drink marking the brand that you're gonna be using. But you can also, through the Patent office trademark, an image that's typically Maur for branding purposes outside of Amazon to prevent people from using that similar image on their packaging.

spk_0:   14:31
I think of Apple is kind of one of the dominant ones where they got that nice apple symbol on those max. That's that's like an example of an image that could be trademark. But you know, whenever somebody goes in Amazon and that buys a product, you know, this is one of my favorite quizzes to do so. So court. What was the last item you bought on Amazon? And it's okay if it's like toilet paper, So that's fine. No big deal.

spk_1:   14:54
Um, when I bought let's see, I think it was probably something simple like that, maybe a laundry detergent.

spk_0:   15:01
And so one of my favorite questions to ask, you know, what was the name of the brand you bought from tied? So you did remember in this case, But usually if I asked that question, you know somebody by let's say a can opener are Apple Slice or some other random widget 99 out of 100 times. They're like, I don't remember the name of the brand and my favorite second file of questions, and I know you won't know the answer to this one. What was the name of the cellar you bought that? No, no idea. And that's because Amazon is pretty much a brand killer, right? And so this formality of filing a trademark to get brand registries very necessary. It's a It's a necessary thing to control your listings and get all these extra benefits. But at the end of the day, that's why we usually just go forward marks, because we don't think that the, uh, the image marks at any additional value. Unless you're going into retail store, you're going on a retail store shirt might make a difference by I think that award mark is is the simplest thing to do, and I think it's easier to get that approved through the trademark office, and it gets you 100% of the same benefits. So that's the difference between a word mark and an image mark. Let's talk about classes or categories. What What is this? What do I need to know about this? If I file a trademark?

spk_1:   16:11
Absolutely. So when you find your trademark there, you're gonna be filing for specific products or specific product groups. You classify what you want to filed a trademark under. So, for example, you can file multiple trademarks on multiple people can have trademarks as long as they're different for different products or different classes. So in when you're fired trade market going to need to search the database of the classes to find which one best applies to your product. And then you attach your specimen to that class. You'll have a different specimen for each class, or you have to have one for each of them.

spk_0:   16:48
Can you file the trade market multiple categories.

spk_1:   16:51
Yes, you can. You can't file in multiple categories as long as it's applicable to your product and that you have a specimen for it.

spk_0:   16:59
So you might need multiple specimens to make that happen or multiple products. We typically don't see a need to file a trademark of multiple categories at my Amazon guy. We think one's good enough. When you're on Amazon, you're not gonna be having any issues trying to control your brain name typically so. So one trademarks? Probably usually good enough. Now, if you've got a really broad catalog, hundreds and hundreds of products, you may need multiple multiple trademarks just to protect yourself across those brands. So typically when we see a catalogue with hundreds of products that usually have multiple brands anyway, and that would, of course you got a second brand name. You need a second trademark. All right, let's talk about supplemental versus principle. We have a lot of clients that will have their trademark on a supplemental registry. And can you get brand registry? If you have a trademark on supplement,

spk_1:   17:48
you can not specifically the reason that you can't get it with supplemental principles because a supplemental trademark is not a trademark showing exclusive ownership of that entire phrase. It's kind of a disclaimer saying that you don't have you're not claiming ownership or of the entire phrase specifically where the tire brand name, whereas with the principal, you're claiming that one ship for for

spk_0:   18:16
all of it. So if you file a trademark and the office says, hey, we'll put you on the supplement, but not the principal. That's not good. You're gonna be stuck on the supplemental registry for, like, three plus years. It's basically a useless trademark until it gets onto the principal registry. Amazon will not accept your supplemental trademark as acceptance for brand registry, although that could change in the future. I don't think it will. So you need a principal registry trademark. Now, if you filed a trademark and you can't get it, go through For whatever reasons stuck on the supplemental, what should we D'oh? I think you should probably just pick a new brand name. And even if you don't necessarily update your packaging and update everything as long as you get the one item file for that trademark and change your brand names on Amazon for purposes of Brian Registry and Amazon sales, that's good enough. So that's what I would do if I was If I was, if I was you at home, listen to this podcast and you had issues with your trademark. I would just file another one. Um, Okay, cool. So what else should I know if I'm gonna go file a treatment for the first time? Like what were the pitfalls where people make mistakes.

spk_1:   19:28
So wait just got some of the common rejections for a trademark office. But yeah, what you want to do is make sure that your trademark isn't too broad and that you have a clear specimen when you're submitting it that it has a product in it. Has the official logo recently added, Trademark rejected or the least the Lords came back and told me that the specimen that I had wasn't clear enough it looked like he was computer generated or that the brand wasn't the official logo that would be used on the product. And so we need to go back and provide a new specimen. And then, of course, a class declaration for classified your product. You gotta make sure you're picking the right class and that you're not reaching into too many different product groups because that'll be flagged as well. And so you just wanna make sure that you are classified your product correctly, that you have your brand, your brand name specifically chosen on that you have a clear image for your product going in and that, uh, you have kind of your date of use pin down whether it's Arnie and use or going to being used. Make sure you pick the right kind of classification for your trademark because that will affect the way that it is approved, whether it's approved or not.

spk_0:   20:48
So trademark typically last 10 years and at that stage basically just have toe re communicate with USPTO. So it's a lengthy, lengthy trademark, So Ah, a lot of businesses don't even last 10 years. So So what? You have that trademark in place. You're probably good for a long, long time. So that's the nice thing about finally trade markets. It's in place for a long time. It's gonna protect you, get you access to that Baran Register, gets us, um, really helpful things. So if you were just gonna go, So let's say you're listening this podcast like Okay, cool. What? I need to go start this process. So here's a quick tip. Just go type into Google right now. Trademark Look up and the first organic result will be the uspto dot gov. You go and click on that and inside there you can go to the basic mark. Look up, and that's the basic work Mark. Search new user will be what it says in the searches Select option. And then there's type in the name of the brand that you're trying to figure out. So, for example, when I went to file mobster, that's M O M S t A r like a mom who might stir things up in the kitchen. I type that in and nothing came up. So I was like, Cool, I'm gonna go file this now. Here's the next tip, though. So you got your trademark name and it's not taken by somebody else. Go over into amazon dot com on and do the same thing because the challenge that I've had with this brand name that Amazon auto corrects it and they auto correct it to monster like Scary Monster hiding under the bed. Right? And and so that's a big challenge. Because whenever I tell people to go search for the brand name on Amazon Ah, lot of the times they're getting that auto correct, and they're not seeing my products immediately. Pretty frustrated. So what other tips you have, Cory, what else should people keep in mind when they're thinking about

spk_1:   22:42
this? No, I Absolutely I agree with what you said. You know, one of the things most frustrating. Yeah, when you pick a brand name finding it already on Amazon or finding something that's similar to it, because when you file that trademark, you want to make sure that it is unique enough to where you'll be able to separate yourself from the competition. And so when you have a unique trademark and unique brand name on Amazon, that makes for the most success really

spk_0:   23:10
well, cool. Cory. Well, I appreciate you joining the to talk about trademark. Since this is our first podcast, we're going to have a Siri's of podcasts coming up. We're gonna talk about every everything it takes to grow Amazon sales. And if you need to file a trademark and you want somebody to help, take Olivia all the stress and make sure it's done correctly. Go over to my Amazon gotta dot com and go to the service section, and you can buy a trademark. Today, Corey will be the person who actually files it on your behalf, and we'll file it within 48 hours on average and get that process going. So, Cory, thanks again for joining us. Look forward to having you get on a future podcast.

spk_1:   23:50
Thank you for having me.

spk_0:   23:52
All right. Thanks. Watching at home and don't hesitate to post a five star review on our podcast is we get to stop the ground. We really, really appreciate your support. And if you have any topics you'd like us to cover, don't hesitate. Reach out. You can. You can reach out to us on our contact. Former, give us any ideas or post a comment. We will definitely consider those for a topic to cover. Thanks so much. Okay.