Current TradeMark Express Special - Save $100 off your next trademark order!

Order by tomorrow, Tuesday, November 5th and take $100 off your next trademark order!

TradeMark Express is currently running a post-shutdown special. If you've been holding off on getting started on your research and application filing perhaps taking a hundred bucks off of our Premium Package will entice you!

You may call us to order -OR- just order online. 
If ordering online, please be sure to reference this special in order to ensure you get the $100 off.

Not sure if you need a trademark? 

Anyone that's started a small business or is in the throes of starting a small business knows how overwhelming it can be just to get to opening day. You've got licenses & permits to think about, what sort of business entity structure is right, where the money is going to come from, and on and on. Phew! While it can almost be too overwhelming, your entrepreneurial drive and your passion for your business will get you through it. 

Now when it comes to your business name, we can all agree that that's an important, if not the most important feature of your business. Your small business name is the face, if you will, of your products and/or services. It's how your customers will come to know you, how they'll get back to you, and how they'll refer you to new customers. 

So your first step after you've decided on your small business name is to research it to ensure that no one else had the same bright idea before you did. Ta-da! A comprehensive trademark search is the next step and what better time to order than when you can save some dough!

Order by tomorrow, Tuesday, November 5th and take $100 off your next trademark order!

Protect Your Mark, Part Two

Yesterday's post was about recording your trademark with Customs, which will prevent the importation of infringing goods. However, you'll want to be sure to take the necessary steps to protect your mark within the U.S. as well.

Straight from the horse's mouth: "You are responsible for enforcing your rights if you receive a registration, because the USPTO does not 'police' the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark." 

Ok, so what does this actually mean? Since the USPTO will not police the use of marks it's going to be up to you be your own trademark cop. This means having that comprehensive research done every 2-3 years. Now this is going to be a whole different mind-set from the first time this work was done. Instead of looking to see if your mark is infringing on others you'll now be looking for those that may be infringing upon you. 

The rationale in determining if marks are infringing upon you is going to be the same that was used to decide if your new name might be infringing on others.

Need a trademark pronto? Check out Urgent Trademark's unique services:

• Expert free consultation - We will make sure we are the service you need.
• Comprehensive research - Know for sure your proposed name or logo is legally available. Estimated 4 hours.
• Competitive checks - If conflicting or similar names found in our research, we will verify their active existence. Estimated 1 hour.
• Trademark attorney - If a similar name needs to be discussed, we have 3 trademark attorneys for you to talk to.
• Trademark filing - State or Federal USPTO filing the right way, the first time. 2 hours estimated.
• Proof of work provided - We'll provided you with copies of all our work and reports for your archives

Read more about Urgent Trademark here.

Want not to worry about your trademarks for an entire decade? Check out Decade Trademark.

Detail of Services

Comprehensive US Federal & State Trademark Research & Analysis; Comprehensive US National Common-Law Research & Analysis. Up to 3 Names, Slogans or Logos Researched, to reach one clear name.

Competitive Checks into any Conflicts or Similarities found in the research AND in monthly monitoring.

Trademark Attorney to discuss any Conflicts or Similarities. One of our 3 attorneys will help you decide if you should move forward with your trademark or not.

Trademark Application Preparation & Submission. State or Federal.

Trademark & Common Law Monitoring for 120 months, in 6 month increments. We report to you every month.

Trademark Sections 8 & 15 Preparation & Submission – Done between the 5th and 6th year.

Trademark Sections 8 & 9 Preparation & Submission – Done between the 9th and 10th year.

How to do an Effective Preliminary Trademark Search

Before filing for a trademark, comprehensive research is needed to ensure that the name you want to use is legally available. This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files.

However, before having comprehensive research conducted, it is advised that folks take advantage of as many free resources as possible. You can find a listing of sources to check out here. Now let's discuss how to conduct the most efficient preliminary search possible.

Let's say you have a clothing line geared towards women and you want to call it Heroine Next Door. Click on New User Form Search (we'll delve into the other 2 options next month).



Type in the name Heroine Next Door into the Search Term box. Be sure that Plural and Singular & Live and Dead are checked. Also ensure that you're searching for Combined Word Mark. Click Submit Query.



This will result in 0 hits but do not be fooled into thinking that your preliminary work is done. Once you've done the exact name search, it's time to expand your mind about your name. What are all of the possible variations to the name that could be seen as confusing? Here's a partial list:

HeroineNextDoor
Next Door Heroine
NextDoor Heroine
NextDoorHeroine
Heroine Neighbor
Hero Next Door
etc., etc.

And there we go – Hero Next Door, Serial Number 78776159 is a pending mark for, in part, a shirt line. While it's not the exact same name, it is strongly similar and likely similar enough that the average consumer would correlate the two. Now you know it's best to leave your heroine next door.

Let's just assume you weren't blocked at this stage. Now is the time to get into variations of spelling and synonyms. Here's another partial list:

Heroin Next Door
Heroyne NextDoor
Next Door Goddess
etc., etc.

TradeMark Express Value Package

We've added a new option when it comes to getting your trademark. TradeMark Express will search your mark in the pending & registered Federal and State trademark files AND in the US National Common-Law files. Based on your approval, we will then prepare AND file your US Federal trademark application - all for one fee of $399. Order this package today!

HOW IT WORKS:

1) US Federal & State trademark research - TradeMark Express will search the pending AND registered Federal AND State trademark files in accordance with the USPTO's policy, namely looking for similarities in Sound, Appearance or Meaning. This involves searching synonyms, spelling variations, word placement, etc.

2) US National Common-Law research - TradeMark Express will search for commercial availability of the mark in numerous files. Businesses have "first use" or Common-Law rights to their trade names in whatever geographic trade area they serve. The US National Common-Law research will help you to determine if you face any trade restrictions.

Once both searches are completed, the entire report will be emailed to you. At this point, you'll need to read through the entire report to look for any conflicts or similarities.

Should any conflicts or similarities arise, you will need to discuss them with a trademark attorney. To upgrade this package, simply contact any of our offices and for an additional $101, TradeMark Express will analyze both searches and you'll be provided with a trademark attorney (nominal fee for West Coast attorney) to discuss the results.

TradeMark Express will also email you our Worksheet with the above research. Once you're ready for us to prepare & submit your Federal trademark application, complete the worksheet and send to our Arcata office. Once received, we will then prepare and submit your Federal trademark application.

The USPTO charges a fee of $325 per class, which is separate from TradeMark Express' fees.

O Romeo, Romeo

Picking up from yesterday's post, I thought it'd be a good idea to show how truly important comprehensive research is BEFORE filing for a trademark.

On January 17th, Mr. Percy Miller filed an intent to use application for ROMEO for clothing. You can view that record here.

On January 4th, Koehler Companies Inc. filed an intent to use application for ROMEO for clothing. You can view that record here.

Going by just the filing date, it certainly appears that Koehler's mark will have precedence and the USPTO may just rule that way.

However, looking further at Miller's record shows that the applicant has two other registered marks: Registration Number 2971373 for P. Miller Romeo AND Registration Number 3068538 for Lil Romeo. Both of these marks are registered for the clothing class.

Also, Percy Miller is known by his stage name, Romeo (formerly Lil Romeo) and is fairly well known.

Only time will tell how the USPTO handles the two Romeos but my bets are on Percy for 2 main reasons:

1) He has 2 prior registrations for close variations of Romeo for clothing.
AND
2) He's well known by his artist name and may be able to show that as a result his marks are 'famous.'

Now, when Koehler filed on the 4th, there was no possible way they'd be aware of the January 17th filing for ROMEO. However, had comprehensive research been conducted, P. Miller Romeo and Lil Romeo, surely would have popped right up. Which is not to say that Koehler didn't have comprehensive research conducted.

Had any client come to us looking to trademark ROMEO for clothing we'd have easily found those other 2 filings & noted them as a possible problem.