5 Things I Learned from Filing 7 Trademarks (and Being Sued)

Last weekend, I filed my seventh trademark.

I don’t mean to collect trademarks like Pokémon cards. I’m just passionate about protecting my brands (you should be, too) and building a portfolio of intellectual property (IP) that can add value to my brand and business.

More on this value-add later.

The first six trademark filings have been under the guidance and counsel of a trademark lawyer (which I highly recommend), and I’ve learned a lot.

After being sued at the top of this year for a trademark—and needing two lawyers to clear the hurdle—eventually settling the case in my favor, and ultimately registering the trademark after a two-year wait, I’ve been through the legal wringer enough to share a few lessons learned. 🤕

But it’s not just about the legalities; it’s about the personal growth and resilience I’ve gained from this experience. I hope to pass this along to you.

This is why this article exists.

 

My Experience Filing Trademarks

Call me crazy, but I’m so familiar with the process—after working with trademark lawyers (again, whom I highly recommend) on my previous filings—that I was confident enough to self-file this seventh trademark application.

I may or may not have used ChatGPT to assist. More on this later, too.

If you’re interested in or are on the fence about filing your first (or another) trademark, here’s what you need to know.

But first, a disclaimer: I’m not a lawyer, and this is not legal advice.

It’s just my experience working with many lawyers over the past decade and having trademarks succeed, fail, infringed upon, canceled, and forced into a lawsuit. Those are fun. 🙃

I’ve also included three actual trademark lawyers I’ve worked with, won with, and learned from.

These lawyers have extensive experience in trademark law. They have helped me navigate the complexities of trademark filings and protection in prior filings.

If you’re new to filing trademarks, you’ll benefit from working with a lawyer first.

But getting insight from a brand owner who’s successfully filed trademarks never hurts.

This is the stuff you can’t Google.

Learn from my lessons and my lawsuit—and that one time my trademark was infringed overseas. 😭

Learn from these experiences in filing trademarks so you can avoid similar pitfalls.

Sit back and relax as I share all the trademark tea.

What Is a Trademark (or Service Mark)?

A trademark (or service mark) is a word, phrase, symbol, or design (you can also trademark sounds and colors—hello, Tiffany Blue) that identifies and distinguishes the source of goods or services of one entity (brand or business) from those of others.

It’s essentially a way for companies to protect their brand and ensure customers know who they’re dealing with.

Businesses also protect three main other types of IP:

• patents (for inventions),
• copyrights (for original works of authorship), and
• trade secrets (for confidential business information).

Protecting IP ensures that creators and business owners like you can maintain exclusive rights to your innovations and prevent others from using them without your permission.

Why Is Protecting Your Brand with a Trademark Important?

Protecting your brand with a trademark is not just essential. It’s empowering.

It safeguards your unique identity in the market. And gives you the power to stand out and prevent others from using a similar name or logo that could confuse your customers and the general public.

It also adds enterprise value to your business and builds trust, brand awareness, and recognition over time.

Plus, having a trademark gives you legal rights to take action against anyone (within your jurisdiction or country) who tries to imitate your brand, ensuring the protection of your hard work and reputation.

To build a robust IP portfolio, you should strategically register trademarks in key markets, regularly monitor and enforce your rights, and consider other IP assets like patents and copyrights to strengthen your overall brand protection.

Your Trademark Across Borders

If you plan to expand your brand globally, filing your respective trademarks across multiple jurisdictions and countries is something you need to consider.

You should file in other countries based on your business strategy and international market presence.

For example, you generally only need to file in Japan if you plan to sell there, though it’s up to you (and your lawyer).

The most common countries and key markets that global brands consider for trademark filings include the United States, European Union, United Kingdom (which is separate from the EU as of 2021, thanks to Brexit), China, Japan, Canada, and Australia.

Often Imitated: Your Brand Against the World

I once discovered that someone in India stole my candle brand logo and brand name, both registered trademarks in the U.S., and filed with the USPTO (U.S. Patent and Trademark Office).

They took my exact logo, made product labels, and set up an Instagram page with the same brand name.

No shame.

But because that federal registration only applies to the U.S., I couldn’t do anything unless I filed for a trademark in India, which is possible.

The process involves submitting an application to the Trademark Registry of India, similar to the USPTO process but with unique requirements and fees.

Separate governing body, separate jurisdiction, separate filing, separate fees.

Flexing Your Trademark Rights Online

While the international imitators got away with stealing and printing my candle brand on their candles overseas 😔, I was at least successful in getting their page taken down from Instagram.

Social media platforms (at least those in U.S. jurisdiction) allow users to report pages for trademark infringement.

You must have the active registered trademark filing to win the case—on Instagram, at least.

This is another significant benefit to owning your trademark.

It protects your brand’s identity and makes it easier to fight copycats online.

The Internet is borderless, but international culprits and infringers using a platform in a U.S. jurisdiction don’t stand a chance.

But my imitators could sell goods with my domestic trademark at local markets and county fairs in their country using my stolen IP.

Trademark Example: Claim Your Name (in Your Class Only)

Dove (the ice cream and the soap) is an example of two distinct brands with the same federally protected and trademarked name.

Both claimed the right to “Dove” as their brand name, but that one word is filed under multiple classes by different brands and entities, so no one entity owns the word “Dove” outright.

In the trademark process, categories (or classes) classify goods and services into specific groups.

Each class represents a different product or service type, such as apparel, electronics, personal care, or frozen treats.

When you apply for a trademark, you have to specify the class(es) that your trademark will cover, ensuring that your protection is relevant to the specific areas your business operates in.

Each class costs. I’ve generally filed under one class per trademark filing.

You can’t make apparel and try to claim or contest the name in a class unrelated to apparel.

And in the case of Dove, you can’t contest the ice cream brand if your “Dove” makes deodorants.

Fun fact: the class number for “personal care products” is typically Class 3, which includes cosmetics and cleaning preparations.

The class number for “ice cream” falls under Class 30, which covers staple foods, including ice cream and other frozen desserts.

“Dove” is a trademarked brand that operates in multiple classes, specifically soap and ice cream. This means the brand has secured trademarks in different categories to protect its distinct products.

“Dove” refers to their personal care products in the soap class.

In the ice cream class, it refers to their frozen treats.

This classification ensures that even though the products are vastly different, the trademark protection for “Dove” is maintained across these diverse categories, preventing confusion and ensuring brand integrity.

Trademarks as an Asset: Adding Enterprise Value

A trademark is considered an intangible asset, which can increase your business’s overall value, making it more attractive to investors and potential buyers if that’s on your horizon.

A strong trademark can enhance your brand’s recognition and customer loyalty and create a competitive advantage, which can lead to increased sales and profitability.

This makes filing a trademark a true investment—you boost your brand’s or business’s equity value.

Here are the 5 things I learned from filing 7 trademarks (and being sued)

1. Research, research, research

Doing research before filing a trademark is an essential first step.

You’ll want to ensure your proposed mark is unique and doesn’t infringe on existing trademarks, brands, or businesses.

This helps avoid legal disputes (which you’ll likely need to lawyer up for) and potential rejections from the USPTO.

The current trademark filing fee is $250–$350 per class and is nonrefundable.

Research can save you time, disappointment, and money on wasted filing fees.

The research process should include a comprehensive search of existing trademarks in relevant databases, like the USPTO’s Trademark Electronic Search System (TESS).

Also, check for similar marks in business directories and online platforms to ensure no unregistered trademarks are in use.

Thorough research helps ensure your trademark is distinctive, legally sound, and ready for registration.

Keep this in mind: even if a similar brand or business has not filed for a trademark, in the U.S., what’s known as common law rights are acquired through the actual use of a mark in commerce, even if the mark is not registered with the government.

Common law rights in the U.S. provide some level of protection in the region where the mark is used.

U.S. trademark law explains that the rights are “acquired automatically when a business uses a name or logo in commerce and are enforceable in state courts.”

Though marks registered with the USPTO are given more protection in federal courts than unregistered marks, common law rights still offer essential protections for businesses. They allow the owner to challenge or take legal action against you if you’re using a confusingly similar mark in the same region and class.

2. Every action under a trademark is on public record

Don’t enter any private information (including your home address, personal email, etc.) that you wouldn’t want plastered on a billboard in Times Square.

Trademark filings are public records.

When you file a trademark application, the details of the application—including your name, logo, or phrase being trademarked; your information as the applicant; and the status of your application—become accessible to the public.

This transparency is said to help ensure that the trademark registration process is open and allows others to check for potential conflicts with their own marks.

Public records can be searched through databases maintained by trademark offices, such as the TESS in the United States.

Third-party websites also track and display trademark details. One legal trademark case I went through shows up in Google search results for my brand terms when searched.

That’s not the type of SEO I want to attract, but alas, it’s the Internet.

If it’s public, it’s findable—by anyone with time on their hands.

I recommend filing your trademark under your business or a legal entity name as the owner and using your office address and business email for any correspondence.

If you’re working with a lawyer, your lawyer will use their legal business name and email as correspondence and your business name as the owner of the mark.

So, you can file “incognito” 🥸 and generally maintain your personal privacy when having a lawyer file on your behalf or when filing as a legal business entity.

Any responses to the examiner, documents uploaded, or other challenges to your application are also public records, so again, keep it professional and never say, upload, or share anything you wouldn’t want to be plastered for all to see.

3. It takes a while

According to the USPTO’s official application timeline, the current processing wait time between filing a new trademark application and the first examining action is about eight months.

That means the trademark I filed last week likely won’t even be assigned to an examiner until next year.

Does this mean I sit, wait, and do nothing? No.

In the meantime, continue business as usual.

Between your research before starting your brand or business and the comprehensive search before filing your trademark, you should feel confident enough to continue to build your brand and equity in the mark you filed.

Your proof of use (the specimens or documents you uploaded during your trademark filing) and the date you indicated as first use in commerce should help you rest easy while your application is pending.

But not having an opposer to your filing is not guaranteed.

Here’s what to expect:

After the approximate eight-month wait, if the examining attorney at the USPTO does not find a reason to refuse to register your trademark and your application satisfies all legal requirements, your trademark will be approved—but only approved for the next step, which is publication in the USPTO’s Trademark Official Gazette (TMOG).

The TMOG is a weekly online publication that informs the public that the USPTO plans to register your trademark.

Your trademark will be published in the TMOG about one month after your first approval (we’re in about Month 9 now, if you’re tracking).

Within 30 days of that publishing date, anyone who believes their business will be harmed if the USPTO registers your trademark may file an objection or request up to three extensions (totaling another 120 days, last I checked) to prepare an objection.

I’ve been through that process with just two extensions after I declined to approve the third one.

The wait was painful and stressful.

Another party can claim common law rights (as discussed earlier) and oppose your filing during the 30-day window or be bold enough to send you a cease and desist letter nearly 10 months after you’ve patiently waited and filed your trademark application.

All things considered, you can see why the USPTO estimates that the current processing wait time between filing your mark and potential trademark registration is nearly 14 and a half months from start to finish.

Be prepared to wait. And be prepared to challenge the opposition if it arises.

4. Renew it or lose it

In the United States, a trademark has to be renewed every 10 years. The renewal process involves filing a Section 8 Declaration of Use between the fifth and sixth year after registration to confirm that the trademark is still in use.

My very first trademark was marked “dead” and “canceled” because my prior legal counsel didn’t inform me—and to be fair, it was six years after our engagement—and my email on file was old and inactive.

I essentially didn’t get the memo from the USPTO.

When they didn’t hear back after a courtesy reminder, the trademark was canceled two years later.

Again, even this is on file and under public record. Forever. Until the end of times.

All notices and official correspondence can be found in the “Prosecution History” under the respective application or serial number.

But don’t let your hard work securing your trademark go to waste.

After the initial renewal, you’ll need to file a renewal application and a Section 8 Declaration of Use every 10 years to maintain your trademark’s registration.

Other countries have similar renewal requirements, but the timelines and processes vary.

5. Beware of spam

Since every filing is public record, and your mailing address and email are publicly available, don’t be surprised to be contacted by law offices looking to pitch their services or more suspicious third-party entities who send fake invoices or notices in the mail to get you to file internationally.

It’s mostly spam.

Only trust official correspondence from the governing body you filed with, presumably from the USPTO (if you’re in the U.S.) or from your lawyer.

Your lawyer will know what’s legit versus what’s spam, which can be better for you if this is your first time filing a trademark.

You can also ask your lawyer not to include your email address, just theirs—this way, electronic spam at least goes to them only.

Your mailing address will still be on file, so beware of fake trademark notices and bills sent by paper mail.

Using AI to File Trademarks

If you’re new to filing trademarks, I encourage you not to entertain this section.

Working with a qualified trademark lawyer will save you headaches, confusion, inbound spam, and wasted filing fees.

This section is for someone in my shoes who’s been around the trademark block enough times to know the process and common correspondences. You already know the process, the language, and potential roadblocks. You could use AI as your sidekick in the self-filing process.

I learned consistent lessons over a decade from working with three different lawyers on six filings, one of which was escalated to the Trademark Trial and Appeal Board (TTAB).

It’s only because of these experiences that I felt halfway comfortable self-filing (with the help of AI) my seventh time.

I used AI, specifically ChatGPT, to:

• Identify the most relevant class to file my service-based brand,
• Recommend, draft, and edit a description of my business (based on the details I provided),
• Provide tips on how to prepare and what to submit as specimens (required for all trademark applications),
• Determine whether or not I should include a disclaimer and draft that disclaimer for my application,
• Prepare a checklist of all the steps of the application process (in simple terms), and
• Clarify points of the application. For example, a question in the TEAS Plus filing asked, “Check this box if you are attaching a color specimen.” I had no clue what that was, so I asked ChatGPT, “What is a color specimen?” I needed layman’s terms.

What generative AI tools could not do was research potential conflicts or pre-existing and/or similar names in my filing category.

You can search the current USPTO database, and trademark lawyers may have access to more tools for a more comprehensive search.

AI is not the be-all, end-all of filing. I’m just sharing my experience and how I used it as a guide.

Pros and Cons of Filing Your Own Trademark

Filing your own trademark can be safe if you thoroughly understand the process and requirements.

The pros include cost savings, as you won’t need to pay attorney fees, and gaining a deep understanding of trademark law.

But the cons include the risk of making errors in your application, which can lead to delays or rejections. You might also miss potential conflicts (typically found in early research) or nuances in trademark law that a professional would catch.

While self-filing is possible, consulting with a trademark attorney can help ensure your application is correctly handled and fully protects your brand.

Consider this: Sara Blakely, the notable entrepreneur and founder of Spanx, was incredibly determined and resourceful when she filed her own patent for her innovative shapewear product in 2000.

With no prior experience in patent law, she researched the process extensively and wrote her own patent application.

Sara’s efforts paid off.

Protecting her innovation allowed her to build Spanx into a globally recognized brand.

Working with a Trademark Lawyer (with Recommendations)

Investing in a trademark lawyer can be well worth the money, especially if this is your first rodeo.

Trademark lawyers are well-versed in the process and can support you if you need to respond to an office action from the USPTO, contest an opposition, or if your trademark case is escalated to the TTAB, which is technically litigation, and not all trademark lawyers litigate.

I’ve worked with, won with, and recommend Ionin Law, Nakia D. Hansen Esq., and Storylock Legal.

Filing Trademarks: In Summary

Wish me luck on my seventh trademark filing.

I have up to 14 and a half months to wait and see.

But that timeline pales in comparison to the legacy you will build through your brand. It will be worth the wait—and worth the protection.

In summary, filing trademarks is crucial for your brand because it legally protects the unique elements that distinguish your products or services from your competitors.

A trademark will grant you exclusive rights to use a specific name, logo, or slogan, preventing others from using similar identifiers that could confuse the general public.

This protection helps you build and maintain your brand identity, ensuring customers can reliably identify and trust your brand. Plus, a registered trademark enhances your business’s credibility. It can increase its value, making it more attractive to future investors and potential buyers.

A trademark is essential for safeguarding a brand’s reputation and supporting its long-term success.

Don’t build your brand without it.

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