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Written by : Sydney Gose
Current : 1950
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hi everyone i'm attorney aiden durham with 180 law co in denver colorado and you're watching all up in your business on this episode of all opinion business we're going to talk about which comes first an llc or a trademark or in other words should you focus on getting a trademark before you start forming your business but before we get into it don't forget to like subscribe and share and hit that little bell button so you get notifications anytime i post a new video and don't forget to check the description for links to more information and resources you can download my free guide three tips for trademarking your brand and you can also get more information about my trademark services if you're looking for more help with getting a registered trademark for your business all right so it's probably no big secret that there are a lot of things that go into starting a business a lot of steps that need to be taken and you know a lot of to do's that need to be checked off and it can often be pretty confusing figuring out the proper order for doing all of that what do i do first do i worry about this or do i need to take care of this first lots of questions come up and a big one has to do with trademarks and whether you should focus on getting a registered trademark or applying for a trademark or if you should first start with actually forming the business because i work mostly with llcs and a lot of single member llc's i'm going to use llcs for these examples and talk about llc's but what i'm talking about really applies to any other kind of business entity not just specifically llcs so if we're talking about starting a business and we're going to operate as an llc the big question is do i form the llc first or do i file for the trademark first as with most things there's no one right answer um it always always depends on your situation your circumstances all of that um but generally speaking what i typically recommend is forming the business first getting the llc for formed first before you worry about filing the trademark application the reason for this is because the trademark is going to be owned by someone and normally we would want the llc to be the owner of the trademark because the llc is going to be the one using the trademark so let's say we file the application for the trademark first since the llc doesn't exist yet it can't be the applicant it can't be named as the owner of the trademark because it doesn't exist so in that case you as the individual or individual owners of um of the business would have to be the applicant and the owner and that's fine but if you are the owner of the trademark but then your business is going to be using it you would have to assign or transfer the trademark ownership to the business and you can't really do that while the trademark is in the application process once the trademark has been registered then it's fairly easy to transfer it from the owner to the llc um but you know it always again kind of depends on the situation so because of that that's really the main reason that we typically want to set the llc up first is so the llc exists so it can own the trademark now the little one exception that i make to this is usually with single member llc's if you're going to be the only owner um then it's not in the end it's not really a big deal if you are named as the owner of the trademark initially because then like i said once the trademark is registered you can assign or transfer that ownership to the llc um and that can be part of your member contribution to the llc is this intellectual property this trademark registration but the reason i say that specifically for single member llcs is because when there's more members more people involved it can potentially cause a problem later on if we're trying to transfer ownership or let's say there are multiple members and one of the members is named as the owner um if that member decides to you know pack up and leave or hit the road then it may not be easily possible to get that ex-member to transfer ownership of the trademark to the llc now or uh it is possible to have multiple owners of a trademark so if multiple members are the owners then it's just you know more that goes into having to make that assignment or that transfer because we're dealing with more people who have to uh agree to it now essentially so you know in the end overall it is best to start with forming the llc or getting the entity up and running and formed before you worry about filing a trademark application or pursuing trademark registration but but but the big the big thing with that is that just because we're not worrying about the trademark just yet doesn't mean we don't need to worry about the trademark just yet uh this is going to be especially important if the name of your llc is going to be the trademark is going to be the name or the brand that you're going to do business under something that often kind of gets people confused is um a business name or an llc name isn't the same as a trademark at all um you can have your llc be registered under some name and then your trademark can be something completely different you don't necessarily have to do business under the name of your llc you can use a trade name or a dba you can have different brands under an llc so if the llc name is what you're going to use as your trademark if that's going to be the trademark if that's going to be the the brand then you do want to at least do some preliminary kind of trademark clearance before you commit to a specific llc name because with llc registrations there's not going to be checks and balances like there are with trademark registrations where an examining attorney tells you you know this trademark is available and you know you can have the registration that doesn't happen with llc registration so just because you register uh the name under an llc doesn't mean that it's going to be available for you to register as a trademark so if you're in the process of setting up an llc and that llc name is what you are going to use as your trademark then at least you know do a good thorough google search uh get on the uspto's website they have the tess tess search database that you can do a pretty simple search of any registered or pending trademark applications at least get a good idea of if the name that you want to use for your llc and trademark is at least available best case scenario of course would be to have an attorney perform a full clearance search for you before you even worry about the trademark so that way we get the trademark done then we know we're in the clear for filing the trade i'm sorry we get the llc done and then we know we're in the clear for filing the trademark having said that though in the end let's say you file and form your llc and then you get around to thinking about the trademark and you find that that trademark's actually not available you won't be able to register that trademark for most states the process of amending your llc's name isn't very uh it's not very difficult it's not uh especially costly or time-consuming process so often worst case scenario if you do wan
Thanks for your comment Rae Rideau, have a nice day.
- Sydney Gose, Staff Member
man oh man that how to trademark your uh business name video that i put up about a year ago oh it's so cringeworthy it's yellow it's grainy i feel like i was just so confusing and talking a whole bunch of crap in that video so that is why we're putting up a whole new updated how to trademark your business name video for 2021. what's up everyone what's up fam welcome back to the channel for my og subbies and for my new folks welcome welcome my name is jolene dukedeer you can call me jill d and on this channel we talk about cannabis business and entrepreneurship from a legal perspective and today we're talking a little bit about how to trademark your business name i have an old video that i put up in 2020 my og subscribers know what i'm talking about it is so yellow and so grainy so outdated i hate that video it's one of my most popular videos to date but i think we could do better so today we're gonna do an updated version of that video i'm gonna go into a little bit more detail and hopefully it'll be a little bit easier to understand for you guys before i jump in please don't forget to subscribe to the channel share the video with someone who you think could benefit from the content and like it and give it a thumbs up if you enjoy the content i would really appreciate it and i appreciate you for watching so at the outset the beginning of this entire filing for a trademark for your business name process we want to go ahead and do some background research and some digging before we even touch an application all right so that's gonna mean you're gonna hit up google run a quick search for your business name or names that are similar to yours check out the different social media platforms and see what's out there if you run into things that are like established businesses that have the same name or a similar name to yours that might be an indication that there is a pending mark or an already registered mark already existing with the patent and trademark office and that could present a problem for you down the road but the most important step in this background research is getting a trademark search done like a clearance search there is a database that the patent and trademark office provides all of us it's public that you can search to find different marks that are registered that are dead that are live that are pending and it's called tests t-e-s-s and where would we find test jill it's linked for you below in the description box it's literally similar to google so you would just put your business name in there or any variation thereof and it should pull up any pending registered or dead marks that contain your name that is the same as your name or maybe even similar to your name in some instances so you could look at the records and see what's out there that is pending or registered or dead with the patent and trademark office so if you pull up a bunch of records and they have the same name as you that is an indication that you might run into some problems in the future with your trademark application so it's very important that you go into each record and take a look at what's there are they abandoned are they dead are they live are they registered these things do matter so take a look at each record that you pull up that's similar or the same to your as yours and um dive in a little bit deeper and see what's really going on with that record now if you are doing this my chair is really squeaky if you're doing this and you are confused or you can't make heads or tails of anything that you're seeing and you're it's just stressing you out and you're not confident then at that point i recommend that you get a legal professional to assist you with doing the clearance search the trademark clearance search it doesn't have to be me it's just anyone that knows what they're doing so that you can interpret the results correctly and make a decision based on the feedback a good sound decision based on the feedback because you don't want to get to the end of the process where you've already paid for this application just to get a refusal letter saying that there's somebody else that has the same name as you um or whatever the case may be so do the upfront work so you don't have to worry about it at the back end i'm all for you guys doing things diy i love to diy myself but sometimes it just makes more sense to have someone else help you and that's real talk no cap why did i say cap like that no cap no cap it's no cap right whatever put no cap down in the comments so the next thing you'll want to do after you've already done your clearance search and you've gotten your head wrapped your head around on your actual name and what's out there is you're going to want to get a handle on what class or classes you're gonna file in i already have a video that goes over trademark classes i'll go ahead and put the thumbnail here and link it in the cards for you above and i also put a link in the description box so y'all can't you like you just can't miss it that video goes over the 45 different um trademark classes like not in detail all 45 but it gives you a good overview of what trademark classes are and how they play with your whole trademark registration in general so the way that you can um actually sort of figure out or get a good idea about what sort of classes you'll fall into or class you'll fall into is you can run a search on the patent and trademark office's id manual and i also link that for you down below you navigate to that you can put in like your industry or your type of goods that you're going to be selling let's just say clothing for example if you put in clothing you'll see a ton of results that come up you'll see on one side a bunch of numbers which will include the class for that particular um good or service and then you'll also see a series of descriptions so if you go through that these are already existing in the patent and trademark office database they're already there so if you go through that you can get a good sense of what class you need to be in and then take a look at the descriptions and see if they're appropriate for you so now that you've gathered up all of this background information you've got a clearance search done you have a good idea of what's out there like with your name or a similar name and now you have a good idea of what class you're going to be filing in or classes you're going to be filing in along with a description of your goods or services you should be at a good point to start your trademark application so you can do this online there's an electronic application i don't know who's still doing a whole bunch of paper stuff in 2021 or at all we're not even going to mention 2020 like we're going to go what was it whatever 2019 um we're not even going to talk about 2020 but like yeah there's electronic applications there's uh several different options that you have available to you and each application type has different features so it's probably a good idea to go and research each application type to see what the requirements are and to see if they fit your situation once you've selected your application type
Thanks Elisabet0 your participation is very much appreciated
- Sydney Gose
About the author
I've studied business studies at Lock Haven University in Lock Haven and I am an expert in perceptual control theory. I usually feel moody. My previous job was employment interviewer I held this position for 13 years, I love talking about pinball and sneaker trading. Huge fan of Patrick Swayze I practice field hockey and collect automobilia.
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