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I plan on running a business selling goods/services in multiple classes.  Is there any way to keep the class fees down when filing a trademark  registration application?

3/22/2018

 
Yes.  One solution is to take is a graduated approach from the business side.  You could begin your business by ensuring that you only sell goods or services in one specific class, and then on your trademark registration application, you could specify that one class.  However, it will be incumbent upon you to police your business to ensure that only those goods/services are being sold.  Several years down the road, when you want to expand your business and offer goods or services in another class (or classes), you could file another trademark application specifying the additional class or classes.

There is a risk with this approach, however.  The risk is that someone else could register a mark that is the same or similar to your mark, but in one of the classes where you have not yet registered.  Thus, not only could you could be foreclosed from using your mark to identify goods/services from that class, but this other party could potentially bring a legal action against you if you did use your mark to identify goods/services in that class.  

Why is class selection so critical when filing a trademark application?

3/21/2018

 
In your trademark registration application, if you claim that your business sells goods/services in a certain class, when it actually doesn't, you could wind up losing all rights in your trademark.

Similarly, if your business sells goods/services in multiple classes, and not all of those classes are specified on your registration application--that's another way you could wind up losing all rights in your trademark.
 
Some people believe they can “cut corners” on government fees by failing to mention all classes of goods/services that their business sells on the registration application.  This approach is almost always a bad idea.  You really don't want to spend dozens of years in marketing and advertising--building up your brand, and then suddenly lose all rights in your trademark.  For many companies, their trademark is their most valuable asset.

What constitutes "significantly more" in the Alice test?

3/20/2018

 
As taken from the January 15th LSIPR Newsletter:

"The claim must include additional features to ensure that it describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolise the exception. Examples qualifying as “significantly more” include:

• Improvements to another technology or technical field;
• Improvements to the functioning of a computer itself;
• Applying the judicial exception with, or by use of, a particular machine;  
• Effecting a transformation or reduction of a particular article to a different state or thing;
• Adding a specific limitation other than what is well-understood, or routine in the field; and
• Adding unconventional steps that confine the claim to a particular useful application. "

The entire article can be found here:

www.sternekessler.com/sites/default/files/2017-11/LSIPR_Jan15_AfterALice.pdf

How can I match the goods and services that my business provides to a relevant class?

3/19/2018

 
You can use the Trademark ID Manual for this purpose.  A link is provided below:

https://tmidm.uspto.gov/id-master-list-public.html


Under "ID Master List" just enter a category of goods/services (e.g. "Shirts") into the search field, and when you find the relevant category, its class will be designated as the three-digit number under the "Class" column.  

Why does it cost a company which sells a variety of goods and services more money to register their trademark than a company which sells only a single type of good or service?

3/18/2018

 
The United States Patent and Trademark Office divides goods and services into "classes."  For example, "works of art made of wood" is in Class 20, and this is a different class than "Graphic Art Prints," which is in Class 16.  The USPTO requires mark registrants to list all of the classes of goods and services that their business will provide.  So if your business sells a wide variety of goods and services, it will be legally required to list more classes (and have to pay more government fees) than a business that just sells a single type of good.  The disparity in pricing is just a function of what the law currently requires.

How much will it cost me to register a fictitious business name in San Diego?

3/17/2018

 
In San Diego County, the fee for your fictitious business name is currently $42 plus $5 for each additional fictitious business name that you wish to register.  The publication fee, however, can be even more expensive, because the law requires you to publish your fictitious business name in an approved newspaper of general circulation, and newspapers will typically charge you for that service.

If I am operating a business as an individual or sole proprietor in California, must I submit a fictitious business name statement?

3/16/2018

 
In California, if you are doing business as an individual or sole proprietor under a business name which does not include your last name and portray the nature of your business, then yes -- you will be legally required to register a fictitious business name statement with the county clerk's office.

Can I get around having to pay the $800 tax to the California Franchise Tax Board if I form my business entity in another state?

3/15/2018

 
No.  If you form an LLC in another state, and then engage in any amount of business in California, you will still be legally required to pay that $800 tax.  Even if you don’t engage in business in California, but merely have a physical presence in California, you will sill likely be required to pay the $800 tax.

How much does it cost to form an LLC in California?

3/14/2018

 
To form an LLC in California, you will have to file a statement of information which includes a $20 filing fee.  You will also be required to pay $800 to the California Franchise Tax Board within the first 3.5 months of the LLC's formation.  Every subsequent year, you will be required to pay another $800 to the California Franchise Tax Board.  That amount will be due every April 15th.

Is there an additional certification statement that is required to be attached to the IDS?

3/13/2018

 
No, but my understanding is that you can supply your own certification statement in lieu of the two statements appearing on the form itself.  In that case, the relevant box to check would be "See attached certification statement."
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