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Comprehensive Research & Analysis: Federal/State Trademark & Common-Law

Federal Trademark Application

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So, you finally settled on the perfect name for your product or service – that's fantastic! Finding just the right name is vitally important to the success of any product line or service.

Or, perhaps, we've already searched & filed a trademark for you. If it's been a couple of years, have you had protective research conducted? Do you have a logo or a slogan or a new product/service name?

Regardless if you're new to the world of trademarks or have already gone 'round once, let's walk through a quick primer. Protecting your brand is a vital part of your overall business plan.

Trademark Step-by-Step Primer

1) Is it required that I register my trademark?

No, not at all. However, registering your trademark, specifically your Federal trademark, does provide you with several advantages:

* Public notice of your claim of ownership of the mark;

* A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;

* The ability to bring an action concerning the mark in federal court;

* The use of the U.S. registration as a basis to obtain registration in foreign countries;

* The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;

* The right to use the federal registration symbol ®; and

* Listing in the United States Patent and Trademark Office's online databases.

2) But what if someone else already came up with that name?

While the name may be unique and distinctive to you, there is a possibility that another party already has prior trademark or common-law rights to the name for your industry. Before you invest time, money and effort into your name, you need to have comprehensive research done, which will tell you if the name is truly available.

3) Ok, so the name is clear; now what?

To register your trademark, you have 2 options – file for a Federal or a State trademark.  If you are only going to sell your product or services in 1 state, then a State trademark is the way to go.

While anyone has the ability to go online to access these forms, it's strongly recommended to hire a private company or an attorney for the preparation and/or filing of the trademark application.  To ensure a successful filing, it's best to leave it in the hands of those with experience.

Contact us today & we can take care of all of your trademark needs.

4) You found the perfect name – now, make sure it's truly yours!

Step 1: USPTO Tess Preliminary Search	FREE
Step 2: U.S. Federal & State Trademark Search & Analysis	$200
Step 3: U.S. Common Law Search & Analysis	$200
Step 4: USPTO Trademark Application Preparation	FREE
Comprehensive Trademark Package Minus Reader Discount Total Comprehensive Trademark Package . . . . . . . . . . . . . . .	= $400  - $50 = $350
USPTO filing fee $275 per class.

$50 DISCOUNT!

Exclusively for you

Comprehensive Research & Analysis: Federal/State Trademark & Common-Law

Federal Trademark Application

Order Today! 800-776-0530

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.

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.

What does a USPTO Search Look Like?

When an applicant submits a Federal trademark application, there is a timeline that's followed. Anywhere from 4-7 months after filing, the USPTO will conduct a search of their own records to look for any marks that may be conflicting to yours.

Let's look at ISHINE again, which was filed for floor finishing preparations. Here's what the USPTO Search Summary looks like:

*i$sh{"iy"}n*

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

Okay, so that's confusing looking, right? Let's define the $ symbol & the * symbol before we dive into the search strategies:

• The $ symbol definition: Matches zero or more continuous characters. The $ truncation operator can be used in any search field to represent 0, 1, or more than one character other than a blank space character.
• The * symbol definition: Matches zero or more continuous characters. The * is a more efficient truncation operator for left and/or right truncation.

To understand the difference between the two:

*wonder* results in 1279 hits whereas $wonder results in 808 hits.

Now let's break down each search strategy:

*i$sh{"iy"}n*

The front and back asterisk symbols means any instance of those letters in that order will pop up, regardless if it's at the beginning of a word (e.g. ishine), the middle of a word (e.g. silvershine), the end of a word (e.g. finishing) or as separate words (e.g. ice shine, which blocked this mark).

One important note, you can see that the USPTO limited the vowel characters between the letters H and N to just find the letters I or Y. This means that the USPTO didn't look for marks like ishone. Since shone is an inflection of shine, that mark would be relevant.

*sh{"iy"}ne* or *sh{"iy"}ny* or *sh{"iy"}ni*

The concept is similar to the above. The main difference is that the USPTO added three different vowels to the end and dropped the letter I at the beginning. This results in marks such as shine, shyny, shining, etc. As you can well imagine, this resulted in a large number of hits – 2,595 to be exact. The USPTO then narrowed it by International Classification, which resulted in 926 hits.

Lastly, they narrowed it by the goods description. Interestingly enough, they only used two words to describe the goods – floor or floors. 46 hits were the result here. The limitation of the goods description is also troublesome. What about all the types of flooring that are out there? For instance, if there was a mark with a similar name who had filed as "hardwood finishing preparations" or "laminate finishing" it would not have come up during the USPTO's search.

The Problem with the USPTO: Flaw #1 – Sound

The USPTO offers a fantastic free resource for potential trademark owners – the ability to search the Feeral trademark files for free. To get started, go here and click on the Search link that's located in the right-hand column.

However, as with many things in life, you get what you pay for. This month's newsletter will be about the 3 fatal flaws of the USPTO search engine.

When it comes to trademarks and locating potential conflicts and/or similarities, the SAM rule must be kept in mind.

What is the SAM rule?

Here's what the USPTO has to say about this:

Similarity in sound, appearance, or meaning may be sufficient to support a finding of likelihood of confusion."

The dreaded likelihood of confusion conclusion means a refusal is on its way. To avoid that, comprehensive research should be conducted prior to filing.

What does similarity in Sound mean? And how does the USPTO search engine fail in this respect?

"Similarity in sound is one factor in determining whether there is a likelihood of confusion between marks. There is no 'correct' pronunciation of a trademark because it is impossible to predict how the public will pronounce a particular mark. Therefore, 'correct' pronunciation cannot be relied on to avoid a likelihood of confusion." Click here to read more.

The USPTO provides an example of ISHINE being refused because it's likely to be confused with ICE SHINE, in terms of sound. The sound similarity and the common goods description (floor finishing preparations) are the 2 main factors that warranted a refusal.

Flaw #1, Sound:

That being established, let's do a search using the USPTO search engine. A search for ISHINE brings up 3 marks, one of them being the now abandoned ISHINE in question.

But it does NOT bring up ICE SHINE.

So let's say ISHINE was your mark & you conducted a search at the USPTO. You even searched variations, like EyeShine (still no ICESHINE), I Shine (no ICE anywhere) and AyeShine (no dice on the ICE). You'd mistakenly think that the name was available.

Here's one example of why comprehensive research is important.

Click to read about the Appearance flaw. Click to read about the Meaning flaw.

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.

When Applications Go Wrong

Elaborating further from this post, let's take a look at an incorrectly filed application, which will show why correct application preparations are so advantageous to applicants.

On January 17th, The TNG Group submitted an application for La Bella Belly Maternity. You can view the record here.

Mistake #1

Comprehensive Research Appears to Have Been Skipped

A quick search for La Bella for clothing wielded no results - that's good. However, a quick search for Bella for clothing did show two registered marks, both Bella & both owned by Color Image Apparel, Inc. The records can be viewed here and here.

Now La Bella Belly Maternity and the logo may be distinctive enough to bypass a refusal from the USPTO. Only time will tell...

Mistake #2

Goods Description

The application is filed for International Class (IC thereafter) 25, namely, "Maternity Apparel, Accessories and Spa Services" & there are a couple of mistakes going on here:

a) There are 2, if not 3, different classes listed here.

Clothing or apparel is in IC 25, so that's correct.

The word accessories is vague & the applicant could mean anything from belts or scarves(IC 25) to purses or diaper bags(IC 18) to, given the customer, baby bottles or pacifiers (IC 10).

Spa services could either be in IC 43 (Spa services, namely, providing temporary accommodations and meals to clients of a health or beauty spa) OR in IC 44 (Day spa services, namely, nail care, manicures, pedicures and nail enhancements -- to name one).

La Bella Belly has only paid for 1 classification, which means if they want to pursue those other classes, an additional $325 per class must be paid to the USPTO.

b) The actual descriptions are incorrect:

"Maternity apparel" should be written as, for example, "maternity clothing, namely, shirts, shorts, pants, [and on & on with ALL of the items within the line]..."

The USPTO does not like words like accessories, products, etc. The applicant will have to be specific.

Since spa services can fit into 2 different classes (see above), further information will be needed.

Mistake #3

Description of Mark

While the description on the application ("The mark consists of La Bella Belly is green. Maternity is also green. Logo (pregnant lady) is also green. Green used for all words and Logo is R 138 Hue 90 G 219 Sat 127 B 158 Lum 168") makes sense to the applicant, it's not what the USPTO is looking for for that section.

A more appropriate description would be: "Stylized lettering of La Bella Belly Maternity displayed in green and appearing to the left of a shadow/silhouette of a pregnant woman, which is also displayed in green."

That description provides a visual image of what the mark looks like, which is what the USPTO requires.

Mistake #4

The specimen provided by the applicant is appropriate for the spa services but not for the other classifications, which means if the clothing & whatever the accessories end up being are pursued, new specimens will have to be submitted.

Now the last 3 mistakes can easily be corrected & it's my guess that the USPTO will be sending out an office action to the applicant in the next coming months requesting these changes. What this means is adding on even more time to the year it already takes the USPTO to grant registration. The similar marks, for clothing, may present more of a hiccup to the applicant.

I hope this post & Friday's post have really shown how important comprehensive research & correct application preparation is to each & every applicant. Given that about 1000 applications are filed every day, please be sure to have your work done right the first time.

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.

What Happened at the USPTO on...

Christmas?


58 new filings on Xmas

New Year's Eve?


562 -- seems folks were staying in

and on New Year's Day?


55 -- and were taking it easy

These 3 snapshots make a great point: trademarks don't take a day off. Even on holidays, folks out there are filing for trademarks.

Now, let's take a look at any old average day at the USPTO. Last Wednesday, the 16th:


1100! That's quite the jump.

Hundreds even thousands of marks are being filed every day and I hate to speculate but I'm almost positive that most of those marks that are owned by smaller businesses or by individuals are not doing their due diligence in researching their marks or having the application completed properly. I'll devote a couple of more posts elaborating on these points.

Side note: The most interesting sounding mark out of the bunch, in my little opinion, is Serial Number 77-359209 for the Unsinkable Betsy Ross.

Exciting Changes at TradeMark Express

There have been a number of changes at TradeMark Express lately that I wanted to take this opportunity to detail them here for our blog readers.

First, we dropped our fees $50 on August 14^th from $600 to $550. This is our first price reduction in 15 years! I want to reassure our clients & potential clients that a price drop does not mean a drop in services by any means. Our clients are getting the same great service they've been getting since 1992 – comprehensive research, analysis, referral to a trademark attorney and preparation & submission of their Federal trademark application. We were able to justify and absorb that price drop by streamlining some of our internal processes so who better to pass that on to than our clients!

Second, we implemented a payment plan program. TradeMark Express® understands the many expenses new business owners face; we also know how necessary comprehensive research and analysis is prior to filing. To help our clients, we have three different payment options:

$550 Our Best Deal!
$285 per month for two months = $570
$195 per month for three months = $585

Third, before TradeMark Express® conducts the comprehensive research, we will do a FREE check for the exact name at the USPTO. If there is a Conflict, we will call to inform you so you may provide us with your 2nd choice name.

That's the latest on what's going on with TradeMark Express. If you have any questions about anything outlined here, please feel free to contact me via email.

What is a Trademark Conflict?

What is a Trademark Similarity?

Comprehensive trademark research consists of several layers:

• Researching comprehensive databases, such as Lexis-Nexis or Dialog
• Looking for similarities, such as synonyms, word placement & spelling variations
• Consultation with a trademark attorney if Conflicts or Strong Similarities arise

The hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.

First, let's discuss the difference between conflicts and strong similarities.

What is a Conflict?

Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.

What is a Strong Similarity?

These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning to be confusingly similar to the average consumer. Here are some examples to aid you:

Joe has a pending Federal trademark for his auto detailing service called It's in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance and Joe's pending Federal application.

Mary has a Federally registered trademark for her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary's Federal registration.

Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.

Lorena's online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

Two important notes:

It's crucial that comprehensive research be conducted in order to decide if the name is truly available or not. Free preliminary sites found on the web are a great place to start but please be aware that this is merely scratching the surface of what's out there.

Determining what is a conflict or a strong similarity requires experience and it is very easy to over or under-react to marks you've found. If you're vacillating about any marks, contact a trademark research firm or an attorney for further consultation.

Happy Anniversary TradeMark Express Blog!

On June 2, 2007 we celebrated our blog's 1 year anniversary!

Blog, we've had a roller coaster of a ride but have persevered through it all. Here's to many more years of talking trademarks. *clinks internet glasses*

One of the reasons I missed the actual anniversary date is that we've been busy bees over at TradeMark Express. While our blog's a mere baby, TradeMark Express has been getting trademarks for our clients since 1992.

Keeping up during our busy times can be daunting but this blog is an important facet of what we offer to clients. The actual work is paramount, of course, but making sure clients feel as well informed as possible is so important. It's one thing to help clients get their trademarks; it's a completely better thing to help our clients get their trademarks AND to share our knowledge of what's what.

To commemorate our blog's anniversary, I'd like to offer our readers a $100 discount on our trademark package. Let's celebrate all month long, shall we? Just make sure you mention the blog when ordering. Offer good until Sunday, June 30, 2007.

Happy One Year!
* re-posting discount offer every day during the month of June

How to Choose a Business Name:

Part Four – Know if the Name is Available

Welcome to part 4 of a 4 part series about how to choose a business name.

Here's the schedule:

• 3/12: Know Your Industry
• 3/19: Know Your Customers
• 3/26: Know Your Message/Personality
• Today: Know if the Name is Available

This subject is, obviously, near and dear to me as this is my bread & butter.

A common mistake many new business owners make is assuming that their business name is available simply because:

* the domain name was available
* the fictitious name was available
* the corporate name was available
* internet research showed the name was available
* yellow page research showed the name was available

The above are merely preliminary indications of what business names, service names, and product names are out there. Only comprehensive research will tell you if a name is truly available for use.

Ok, so what is comprehensive research?

Comprehensive research entails searching a variety of files. The first step is a comprehensive search of the pending and registered Federal and State trademark files. Similar names matter too! The search should look for similarities in Sound, Appearance and Meaning, which means looking at synonyms, spelling variations, word placement, translations (if necessary), etc.

The second step is a comprehensive search of US National Common-Law files. This entails searching all incorporation records, all fictitious name/DBA records, Dun & Bradstreet  records, product announcements, newspapers, company directories, etc.

If the research proves clear on both steps, you can then decide if you'd like to file for a State or Federal trademark.

This concludes our 4-part series in choosing a business name. The 4 topics I chose are those that are the ones I think most important. Are there other steps you think should be considered?

TradeMark Express Blog Schedule

The Importance of Creative Naming
Trademark Information

choosing a business name * business name * choosing a company name * company name