TradeMark Express Blog: All Things Trademark

Last week I provided some general information about copyrights. Now, I'll delve a bit deeper into the areas of copyrightable materials, specifically the more atypical types of works that can be protected by copyright.

First on the list at the US Copyright Office web site is Literary Works.

Okay, so things like poetry, speeches, dissertations, etc. are easy enough to understand. The one type of literary work I get asked about is protecting online work. The US Copyright Office has a handy-dandy 8 page section about Copyright Registration for Online Works. How's about we break that down to some manageable parts.

The above circular describes online works as those that are "made available over a communications network such as the Internet…also applies also to works accessed via network (websites, homepages, and FTP sites) and files and documents transmitted and/or downloaded via network."

It's important to note that "the registration will extend only to the copyrightable content of the work as received in the Copyright Office and identified as the subject of the claim."

While this information is referenced within the Literary Works area of the site, there are other relevant registrations. Here's what the US Copyright Office lists:

• Form TX—literary material, including computer programs and databases
• Form VA—pictorial and graphic works, including cartographic material
• Form PA—audiovisual material, including any sounds, music, or lyrics (*See filing fee information on page 3.)
• Form SR—sound recording, excluding sounds accompanying an audiovisual work
• Form SE—a single issue of a serial
• Form SE/Group—a group of issues of a serial, including daily newsletters
• Form GR/CP—a group of contributions to a periodical. (This form must be used in conjunction with Form TX, PA, or VA.)

If this applies to you or your plans, take the time to read the Circular prior to filing a thing.

TradeMark Express Blog Schedule

You Sure It's a Copyright You Need?

copyright online works * copyright * copyrights * copyrighting

How to Choose a Business Name:

Part Two – Know Your Customers

Welcome to part 2 of a 4 part series about how to choose a business name.

Here's the schedule:

• 3/12: Know Your Industry
• Today: Know Your Customers
• 3/26: Know Your Message/Personality
• 4/2: Know if the Name is Available

In a perfect world, your customer would be John Q. Public & Susie Everywoman. Well, we know the world's not perfect. Every business, no matter how large or small, has their Customer or Customers.

Now I don't mean lower-case customers – all businesses have customers or clients (and hopefully lots & lots of them).

What I'm talking about is the upper-case Customer, i.e. the people who are at the focus of your marketing and sales campaigns. Once you know who they are, choosing a business name will be that much easier.

Finding Your Customer

A few key questions:

• What are you selling?
o Easy enough, right?

• Who needs this product? Who needs this service?
o Ah, okay, here's one that's a bit harder. Who are the types of folks out there in our commercial world that you know would benefit from your product or service? Small business owners? Single mothers? College students? And so on & so forth. Make a list of any & every type of customer you can think of that you know needs what you have to sell.

• How will your Customer find out about you?
o This will be answered within your marketing plans but should also be considered when choosing a business name. Where do you plan to advertise? Internet? Yellow pages? Fliers? And so on & so forth. Again, make a list of any & every type of advertising route you know you're going to explore.

One note about the above: If you're just starting out, your scope for the last 2 questions may be a bit small (or very large, if you're the ambitious type). Either way, it's best to be honest with yourself. Make two lists if need be – one for the immediate & one for the future. For example, if you're just starting out, you may want to rely simply on word of mouth and some fliers for advertising. But as your business grows, you know you'll add Internet advertising.

What Does My Customer Have to do with My Name?

Well, everything really. Your name is going to be the one and only thing that is going to identify your business in the marketplace. It's how Customers will come to know your business and its personality. The name is how Customers are going to find you when they want to buy from you again (and again and again). When your Customers refer you to their friends, the name's the golden ticket.

That being said, always keep your Customer in mind when choosing a business name. Here are some examples to illustrate this key point:

• Product: do-it-yourself accounting software – the self employed are going to be a major Customer for this type of product. Those that are working for themselves aren't going to have a lot of time to research hundreds of different products. They need to know your product is reliable, easy and cost-efficient. Is there a component to your product that's going to be especially relevant to this type of Customer?

• Service: bed and breakfast - the main Customers are tourists that want those 'extra touches' not available at motels or hotels but can be narrowed even further to honeymooners, retired couples or business travelers. What is the one thing, to you, that stands out about your bed and breakfast? What are those 'extra touches' that set you apart from hotel, motels and other B&Bs?

So you can see by the simple examples above by brainstorming about your Customer(s), a picture starts emerging. This should be a conjoined image of (1) what they want and (2) what you plan to offer to them.

TradeMark Express Blog Schedule

The Importance of Creative Naming
Trademark Information

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

Get Your Piping Hot Questions Answered Here!

Every Thursday, I'll answer your questions and each question will have its very own post. For days that I don't have any questions to answer, I'll post some interesting news tidbits.

To get a question or questions to me, please comment on any post or email me at shannon at tmexpress dot com. If emailing, make sure your subject line references the blog in some way, e.g. Question for the Blog. That way I won't accidentally delete you ;)

Now on to the news...
Radio Talkers Denied 'Obamanation' Trademark
Viacom sues YouTube...
The Basics for Starting a Business

Starting a Business:
Researching Your Industry

Using this post as inspiration, I want to dig a bit deeper into the concept of researching your intended industry.

Brad Sugars' article How to Research Your Market is a must read. Brad lists a number of ideas, including contacting business groups and universities.

One of the ideas I touched upon yesterday was researching your competition. But how does one even go about doing this? And how do you keep it all organized in such a way that you can actually analyze your results? I'm a big fan of tables – I use them constantly for TradeMark Express, be it for client bids or summarizing the week. They're easy to create, manage & alter.

I've created a template that can be viewed & printed here. I filled in the first table with TradeMark Express' information so you can get an idea of how to use this table. Here's a blank form. If you'd like me to send you this table via email, please contact me at Shannon at tmexpress dot com.

Find the holder of a domain address
Free digital library of Internet sites
Using the Web to Research Your Market – PowerHomeBiz

research your industry * research your market * research * competition * market research * industry research

What is a Copyright?

A copyright is a "form of protection" that's achieved by filing the appropriate application with the US Copyright Office.

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

Despite what you may hear, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Here are some books about copyrights:

• The Copyright Handbook
• How to Register Your Own Copyright

To learn more about copyrights, be sure to visit these sites:

• NOLO's Copyright Resource Center
• Copyright Registration Advantages

How to Choose a Business Name
A 4-Part Series

Eek, one day into the schedule and I'm already a day behind. 'It's good to be so busy,' is the mantra I've been repeating to myself.

At any rate, here's the first part of a 4 part series about how to choose a business name. There are, I feel, 4 key objectives to keep in mind when choosing a business name:

• Today: Know Your Industry
• 3/19: Know Your Customers
• 3/26: Know Your Message/Personality
• 4/2: Know if the Name is Available

How to Choose a Business Name:
Part One – Know Your Industry

Regardless of your industry or specialty, it's key to know your industry inside & out, at least as much as humanely possible. Customers come to you AND buy from you because they've decided that you're an expert in your field. It's up to you to ensure that you truly are.

Knowing your industry also allows you to make a more informed decision about the name or type of name you should be considering. Let's look at some examples to provide some insight:

• Industry: Clothing, specifically a name for a Clothing Line
o Are you selling sports apparel? Swim wear? Evening wear? The type of clothing you're creating and selling will determine the name. Let's say you have a sports apparel line…calling it Lucky Tux is only going to confuse customers.

• Industry: Web Design Services
o What are you offering? HTML? Flash? CSS? Animation? And what about hosting? Or search engine submission? The type of services is going to determine the
name.

As you can see by the very simplistic examples above, the type of name is going to be largely determined by your plans for the business. If you've got a particular niche in your industry, keep that in mind. If you know you want to expand, keep that in mind.

Now, how do you get to know your industry? A few suggestions:

• Who's your competition?
o Look at your direct competitors, of course, but also pay attention to the big players in your industry.
o What do you like about their name? What do you not like?

• Associations
o Industry specific associations are a treasure trove of information & should be researched.
o Because of the work I do on Yahoo! Answers, I've got listings upon listings of associations for all types of industries. Let me know if you'd like further information on any industry's association.

• Books:
o There are books upon books for any number of subjects, whether it be about starting a business or information specific to your industry.
o Because of the work I do on Yahoo! Answers, I've got listings upon listings of books for all types of industries. Let me know if you'd like further information on any book titles.

The Importance of Creative Naming
Trademark Information

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

TradeMark Express: Blog Schedule

To ensure that posts are posted, I've drafted a schedule of sorts. Please let me know if you have any suggestions.

Mondays: Trademark related information
Tuesdays: Copyright related information
Wednesdays: Starting a business related information
Thursdays: Questions and/or News
Fridays: FreeDays

In reference to Thursdays, I'd like to invite any & all to comment and/or email me any questions you may have. I'll then answer them in individual posts on Thursdays. Should there be no questions for the week, I'll post some news bits.

2 posts for today will be posted soon...

My Poor Little Blog

I know I've been more than neglectful of you but readers, please be rest assured, I am still here. The plus side of my absence is that work has been busy, busy, busy. It's great to talk to so many folks that are taking the plunge and starting their own businesses.

All the craziness of work aside, I will be back on track with this blog starting this weekend. I'm making a public declaration (oh my goodness!) that I will have scheduled, hopefully interesting and always engaging posts published on a very regular basis.

I'll be back on Monday, March 12th! Thanks for your patience!

Generic Names

Scott Allen posed a very interesting question in response to this post. Here's what Scott's wondering:

"How can you go about protesting a first use claim if you're not the one making the claim of prior use, but you simply have material knowledge of it (heck, so does Google) and don't want to see a generic word hijacked as a mark? Last August, it seems that Learn.com filed a trademark on the word "webinar" claiming first use in commerce June 6, 2000. Now I know for a fact that the word was used in commerce before that, because my company was using it, and we borrowed the term from WebEx. I did some searching on Google (webinar + 1999) and quickly found several more examples, including a couple from my employer at the time. I hate to see generic words hijacked like this (familiar with Entrepreneur Media?). What can be done about this?"

Great question, Scott. The USPTO is actually quite good at catching these marks at the gate. For instance, the example you bring up is a perfect case in point. On January 9th of this year, the USPTO issued a refusal based on that the mark is merely descriptive. It's now on the applicant to submit evidence & arguments supporting their rights to registration.

It's my understanding that only those who "believe that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board." As far as what the USPTO defines as "damage" – hmm, any ideas out there?

A great lesson here for anyone that coins a catchy name or term is to trademark that sucker right away. A good example of this is mobisodes ®,which is a registered trademark owned by Twentieth Century Fox.A Google ® search pops up 43,900 hits on this term. Now, of course, it's on Fox to protect their trademark

Hope that answers your question Scott! Let me know if I can answer anything else for you!

• What factors should be considered in choosing a strong trademark?
• What are some common causes that the USPTO would refuse a trademark?

trademark * trademark information * generic trademarks * trademark questions * webinar

Thank you to Isabel Isidro from PowerHomeBiz for interviewing me about trademarks and business names! Check out the Home Business Guide to Understanding Trademarks and Protecting Business Names!

Due to unforeseen circumstances, I won't be able to post for a week or so. I'll be back as soon as possible :)

Martha Stewart in the News Again

The residents of Katonah are a tad upset with the 3rd richest woman in entertainment.

My only question is – was there the same ire when she originally filed for the geographic term, Katonah, back in 2005?

Check out the old listings by going here and enter these serial numbers: 78727055 & 78727070

• What are the different types of marks?
• What factors should be considered in choosing a strong trademark?

trademark trademark news trademark application trademark filing Martha Stewart Katonah

Humor & Trademarks: The Two are Not Mutually Exclusive

Case in point, the very funny Stephen Colbert's take on the AT&T and Cingular deal – check out the video here.

How to Determine Trademark Infringement?

This post was inspired by all the hullabaloo caused by the iPhone (who owns it? Apple? Cisco?).

Determining if marks infringe can be tricky and each situation varies from another.

The general rules to keep in mind are:

1) Are the names similar in Sound, Appearance or Meaning?

2) Are the industries the same or similar to one another?

3) Are the names confusingly similar to the average consumer? In other words, could customers be confused and assume that both companies are affiliated?

4) Do the trade areas cross? What about the advertising routes -- are the products/services advertised in common places?

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

"The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are:

the similarity of the marks;
and the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related."

If you find yourself trying to determine if a similarly named company is going to be a problem, it's best to contact a private search company or a trademark attorney.

What is Conflict? What is a Strong Similarity?
Trademark FAQ

trademark
trademarks
trademark FAQ
trademark infringement

Cisco & Apple Getting Ready to Duke it Out in Court

There was quite the buzz earlier this week about Apple's latest gadget, the iPhone. Today's buzz is all about the lawsuit Apple received from Cisco for trademark infringement. So, what way do we think this is going to go? My bets are on Cisco getting a princely sum.

Trademark FAQ
Can I get monetary damages when my trade name is used elsewhere ?

Apple Cisco
Apple
Cisco
iPhone
trademark news
trademark
trademarks

USPTO Celebrates a Milestone

The USPTO announced via a press release that their millionth online trademark application was filed. The millionth applicant since 1997 is pretty impressive. And while, yes, I agree that the electronic system is a thing of beauty if you're in the trademark world, I do have a bit of contention with a portion of that press release.

The millionth application was filed by Donald Junck for the name Bait Craft. Now, of course, I'm going to be biased but I'm going to have to disagree with this: "As many small business owners have done, [Junck] filed the application himself, demonstrating how easy and convenient TEAS is to use--regardless of the applicant's location or resources."

I do think TEAS is a marvelous tool; however, delays tend to be the result for someone not familiar with the verbiage or the process or what the USPTO expects to be on the application. While some mistakes can be corrected, others cannot. And those mistakes that can be corrected still end up delaying your registration.

Also, the press release neglected to mention that Mr. Junck had been through the process once before so he was familiar with what the USPTO wanted. Bait Craft was his registered trademark from September 15, 1998 until June 18, 2005. On June 18, 2005 the USPTO canceled his mark because a Section 8 was not filed. To check out the old listing, go here and enter in the Serial Number 75328408.

Trademark Application FAQs
Why would the USPTO refuse a trademark?

USPTO
trademark news
trademarks
trademark

They're Celebrities AND Inventors

Ironic Sans had a great post yesterday about celebrities and their patents. Using Google's new Patent Search feature, the folks at Ironic Sans found 18 patents by your not-so-typical inventor (is there a typical inventor, though?).

• Is it a patent or a trademark that you need?

patents
patent
patent search
inventors

Orlando and Coral Gables Play Nice

Unlike Huntington Beach & a company in Santa Cruz, these two cities in Florida seem to be getting along quite nicely in respect to city slogans.

• Read about USPTO refusals
• Read about the USPTO application process

trademark trademarks trademark news Florida Orlando Coral Gables

2006: The Year That Was…

* Record-breaking:

The USPTO had a 36% increase of final actions on trademark applications from 2005.

* Controversial:

Some debates looked familiar while others were new to the trademark scene.
* A Little Wacky:

From headbutts to podcast (generic or no?), it's been a wacky year of filings.

trademarks
trademark
trademark news
ip news

Do You Hear What I Hear?

I received a question in response to this post about sound trademarks. "

'What has to be provided to trademark a particular sound?'

According to TRIPs the ability to file and register a sound trademark "depends on [the] aural perception of the listener which may be as fleeting as the sound itself unless, of course, the sound is so inherently different or distinctive that it attaches to the subliminal mind of the listener to be awakened when heard and to be associated with the source or event with which it struck."

Okay, now what does that actually mean? Basically, the sound has to be 'inherently different or distinctive' in that when someone hears it the sound is associated with the mark.

For instance, MGM has successfully filed and registered their distinctive lion's roar. To see more sound trademarks, go here.

Filing a sound trademark application is similar to filing a traditional trademark except in respect to the sound itself. Further details can be found here.

'In The US what does this cost to trademark a sound?'

The filing fee for the USPTO is determined by the number of classifications filed and not by the type of mark. The USPTO filing fee is $325 per International Class. "

'Are there many countries where sounds cannot be trademarked?'

There are different rules and restrictions, which more can be read about here.

Trademark 101: What is a Trademark?