What & Where to Register a Trademark

You may not even know that you can trademark THIS!

One of the questions I get all of the time at Destination Legal is: WHAT should I Register as a Trademark?  

While there are over 45 classes of goods/services that you can trademark within, there are thousands of services and products that fall within those 45 classes.  

So for example, if you want to trademark the name of your online course, that would fall within “education & entertainment services” - but this class isn’t only for courses.  It’s for coaching, podcasts, blogs, workshops, speaking, modeling, concerts, gambling, movies, and much much more.  

Part of why it’s REALLY A GOOD IDEA (like really) to hire an attorney for your trademark application is that the majority of people do not understand the nuances of needing to pick the right class and describe your services in the right way. 

I literally get emails every week from people that have tried to apply on their own and now have a letter from USPTO saying - this is the wrong class, this is the wrong description for your service - except they don’t say it quite so nicely...they say OFFICE ACTION...you better fix this or your trademark is kaputz.  

A lot of people will give up right then and there and never get their trademark when REALLY all they need are some revisions that a lawyer can easily handle for them. So don’t be like this person :) 

But I digress, back to WHAT you can register as a trademark.  As a trademark attorney that works mostly with coaches and online business owners, here are just a few of the more common ones to give you an idea of whether it’s time for YOU to pursue one for your business. 

What to register: business names; masterminds, group programs, retreats; online courses and membership sites; series of books or ebooks; podcasts; physical products (journals, mugs, clothing)

The great thing about trademarks is that if you have a signature “name” that you use for coaching, your online course, and a retreat - you can register and get trademark protection for ALL of that under just one trademark class.  Whohoo! 

The other question I get a lot is WHERE to register your trademark?  

Let’s say you are a coach that is based in Boston, but you have clients in Canada, the UK, and France?  

The answer to this question is that you want to register in the country where you have the MOST customers and do the most marketing.  

The point of a registered trademark is to own the name AND to keep others (aka your competition) from using it such that it would confuse your customer base.  The chance of that happening comes depending on where you are marketing. 

For example, I’m not really worried about someone opening a trademark office in Oxford, England called Destination Legal because that’s not where my market is.  But if someone wanted to do that as an online business in the United States, you can bet I would have an issue!  

So if you are in Australia (like a lot of my trademark clients!) but 75% of your clients are in the United States, you want to start with a US trademark.  

There are a couple of reasons why starting in the United States is usually a good idea: 

  1. It’s one of the most difficult trademark registrations to get 
  2. Once you have it, you can add on additional countries (like your home country) through something called the Madrid Protocol
  3. The US is a big market, most businesses will have a large customer base here! 

If you are working in lots of places, make a list of where your customers are from most to least and then you will know where to start your trademark journey! 

Need help on a trademark? Head over HERE to learn more about Make Your Mark, our signature (full service) trademark package!

Sarah Kornblet Waldbuesser - Attorney for Coaches & Online Business Owners

Sarah Kornblet Waldbuesser, Esq.
Attorney for Coaches & Online Business Owners

After several years at a law firm and a few career jumps, she ended up falling in love with online business and loves helping entrepreneurs achieve their dreams in a smart and protected way. She is also an adventurer, traveler, and food and wine lover. When not at her computer, she loves hanging with her family, having wine with friends, flying around the globe and connecting with other online business owners.

 


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