Wes Cutshall

In the course of developing my business I’ve had only a few things that I haven’t been able to do on my own. I encourage small business owners to do as much as they can by themselves to reduce costs. There is nothing hard or complicated about submitting a trademark application to the US Patent and Trademark Office (USPTO). Before I started my business I assumed that getting a trademark was both hard and complicated. I now have 5 trademarks for different websites and each one I submitted online without much work or knowledge. The process is pretty simple, you submit your name, choose the category for your trademark, enter some other details, and pay your fees. Sometimes, after submitting, you might be contacted by a law office working for the government that usually wants to clarify your classification. The classification is what your business will be using the trademark for, such as something like “personal computers and personal computer accessories.” Usually, at least in my experience, you just have to authorize them to change or update the categorization of your trademark. After the initial trademark submission you’re about 3 months away from getting your trademark registered. When you’re done you’ll get an official certificate for your trademark.

In some scenarios you might need a trademark in other countries. I’ve had two different experiences with this.

After I found someone in the UK using one of my trademarks in a domain name I decided to secure the trademark in that country in order to help me secure the domain name at a later date. Luckily the UK is part of the World Intellectual Property Organization (WIPO). In layman’s terms the WIPO allows you to extend a trademark from your home country into another country, without submitting a trademark in that country. So you do not have to set up a business in that country, or hire a firm in that country, in order to get a trademark in that country. This process was also done 100% online, and in the end I received the trademark and eventually acquired the domain name after the owner abandoned it (I had encouraging him to give up the domain, which he refused to do, but then he didn’t renew it).

A similar scenario came up with a domain name in Canada. With help from a legal team (this kind of stuff I do outsource – usually because I’ve failed on my own) I was able to convince the domain name owner to turn over the domain. After attempting to transfer the domain I discovered that Canada’s domain names (.ca extension) work quite differently than our own domains. In Canada you can only get a domain name if you own a business registered in Canada, or have a trademark in Canada for the words in the domain. Also, Canada requires that your either have a business with a physical address in Canada or hire a company with a physical address in Canada to be your agent in order to register a trademark. This sounded like a real pain, but in the end I was able to find a law firm to represent me, submit a trademark application for the word mark, then transfer the domain using the submitted trademark serial number in my registration. Receiving the official trademark was just a formality as I mostly wanted the domain name.

In the end it was all worth the effort and saved me thousands of dollars.