Hello Again!

It's been awhile but we are back! And as Mr. Waving Turtle up there indicates it has taken me a bit to get back here to the old blog watering hole (or wherever turtles congregate so I may continue the metaphor) but I'm here and ready to go so let's talk trademarks!

If you've got a topic you'd like addressed please comment and I'll be sure to tackle it in a future post. 

For today, I'll assemble a greatest hits list. This will provide a good overview of trademarks as a whole. You can also search the blog if you're looking for something more specific. And if nothing pops up then leave me a hey I wanna hear about this note in the comment section.

Trademarks - A Quick Introduction

- Aww, my 3rd post ever. It's an oldie but goodie. Plenty of basic info here.

What is a Trademark?

- What it is.

What is NOT a Trademark?

- What it isn't.

What's the deal with the © ® ™ symbols?

- While my Seinfeld-ian homage may have fallen flat the info in the post is gold, Jerry! Gold!

Is it Possible to Search my Trademark for Free?

- Spoiler Alert! It ain't but finding out why is handy to know.

What is a Trademark Search?

- aka what does it mean when a search is comprehensive?

Do You Need a Registered Trademark?

- Maybe. Maybe not. Read on to find out.

How to Know When to Trademark your Logo

- Got a cool logo? You may want to think about protecting it.

Trademark a Name and Logo: Together or Separate?

- The filing costs shouldn't be your only consideration here.

Brainstorming Tips for Creating a Business Name

- You've got the business but don't know what the heck to call it. Check out this post for some tips.

Starting a Business Series

- For many, many posts I wrote up on starting business in all kinds of different industries and included general business start-up knowledge to more specifics, such as associations, books, and articles. 

What is Immoral or Scandalous Matter?

Some may think this is a very subjective definition, but I assure you, the USPTO sees it differently. Here is what they have to say about it:

“Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to the registration of immoral or scandalous matter on either the Principal Register or the Supplemental Register.

Although the words “immoral” and “scandalous” may have somewhat different connotations, case law has included immoral matter in the same category as scandalous matter.

In affirming a refusal to register a mark as scandalous under §2(a), the Court of Customs and Patent Appeals noted dictionary entries that defined “scandalous” as, inter alia, shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. McGinley, 660 F.2d at 486, 211 USPQ at 673 (mark comprising a photograph of a nude, reclining man and woman, kissing and embracing, for a “newsletter devoted to social and interpersonal relationship topics” and for “social club services,” held scandalous). The statutory language “scandalous” has also been considered to encompass matter that is “vulgar,” defined as “lacking in taste, indelicate, morally crude.” In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971).

Dictionary definitions alone may be sufficient to establish that a proposed mark comprises scandalous matter, where multiple dictionaries, including at least one standard dictionary, all indicate that a word is vulgar, and the applicant’s use of the word is limited to the vulgar meaning of the word...(1-800-JACK-OFF and JACK OFF held scandalous, where all dictionary definitions of “jack-off” were considered vulgar) ...(Board sustained opposition finding that SEX ROD was immoral and scandalous under §2(a) based on dictionary definitions designating the term “ROD” as being vulgar, and applicant’s admission that SEX ROD had a sexual connotation)...(multiple dictionary definitions indicating BULLSHIT is “obscene,” “vulgar,” “usually vulgar,” “vulgar slang,” or “rude slang” constitute a prima facie showing that the term is offensive to the conscience of a substantial composite of the general public).”

A lot of verbiage to read in an attempt to get a feel for “scandalous” or “obscene”, I know, but the USPTO is pretty strict on their definition. And it’s no use using your creative spelling variations such as FUK or SH*T, the USPTO isn’t going to be fooled or lenient. Both of those variations are Abandoned marks after the USPTO had this to say:

Refusal: Immoral or Scandalous Matter

Registration is refused because the proposed mark consists of or comprises immoral or scandalous matter:

Certain commonly “scandalous”, or at least questionable words or phrases, may be allowed depending on the connotation and/or industry. For example, DICK, a series of hand tools, is a registered trademark. Since no evidence of a refusal for scandalous matter is recorded, I can only attribute this to the fact that Dick is a common nickname for Richard and that the product is nothing at all to be perceived as immoral or scandalous. I am sure it would be a different outcome if the product was, for example, a line of adult toys.

On the same token, we must consider that an application is at the mercy of the Examining Attorney at the USPTO that receives the application. An example is the mark YOU [heart] COCK, refused and now abandoned on the basis of immoral and scandalous matter, while COCK BRACELET, sporting a logo inclusion of a rooster, is registered for jewelry, namely bracelets.

So, you see, there is a small window of gray area, again depending primarily on connotation, but also on the subjective opinions of the specific Examining Attorney. A good rule of thumb, however: don’t expect to get a registered trademark and make a million bucks on your favorite, crude, insulting cuss rant that you coined over a couple of drinks with your buddies. Have fun, but keep it clean, folks!

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What is NOT a Trademark?

Now that we’ve determined what a trademark is, let’s get into more detail about what a trademark is not.

Here are just a couple of examples. If there's something that you're not sure can be protected by a trademark, shoot me a line: Shannon@tmexpress.com

1) Trade Name

It can be easy to confuse trademarks and trade names so let's get into some detail here. "The terms 'trade name' and 'commercial name' mean any name used by a person to identify his or her business or vocation," is the USPTO provided definition.

Now, a name can be both a trade name AND a trademark. The USPTO determines this based on the specimen.

Here are a couple of examples to illustrate this:

a) "It is our opinion that the foregoing material reflects use by applicant of the notation 'UNCLAIMED SALVAGE & FREIGHT CO.' merely as a commercial, business, or trade name serving to identify applicant as a viable business entity; and that this is or would be the general and likely impact of such use upon the average person encountering this material under normal circumstances and conditions surrounding the distribution thereof."

This means that Unclaimed Salvage & Freight Co. did not or could not show how that name was creating an impression outside of being just the name used to conduct their services.

b) "'LYTLE' is applied to the container for applicant’s goods in a style of lettering distinctly different from the other portion of the trade name and is of such nature and prominence that it creates a separate and independent impression."

This means that Lytle Engineering & Mfg. Co. provided a specimen that clearly showed Lytle, alone, as being unique and distinctive from their trade name, Lytle Engineering & Mfg. Co.

2) Ideas

When folks call asking how to protect their ideas, they're talking about this definition: "any conception existing in the mind as a result of mental understanding, awareness, or activity." This is worth noting because many people express confusion over the concept of ideas when it comes to intellectual property.

Let me provide a couple examples I've heard over the years.

a) "I've got this idea for a clothing line and want to protect it." Now clothing is clothing; there's really nothing new there. Yes, patterns can be unique from one designer to another. If that's the case, look into copyrights.

However, 9 times out of 10, what the person is really saying is that they have an idea based around a brand. This typically means they have a name & logo, which falls into the trademark category.

b) "I've got an idea for a new product." This as well as ideas to significantly improve an existing product is more than likely going to fall into the patent category.

Intangibilities cannot be protected but the various representations of your ideas may be protected be it with a patent, a trademark, a copyright or a combination of two or more.

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What is a Trademark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you're offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel® is technically a trademark while tax preparation is a service there H&R Block® is technically a service mark.

There are plenty of companies that have both. Nike®, for one, offers a line of branded goods as well as retail store services, therefore, they technically hold a service mark / trademark combination. Where folks get confused when it comes to trademarks is mistaking products or goods for services. Let's take a look at the USPTO's criteria for determining what is or isn't a trademark.

The term "trademark" includes any word, name, symbol, or device, or any combination thereof-

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Essentially, one can take this to mean that the owner of the trademark is either 1) CURRENTLY selling the product in association with the word, name, symbol or device in 2 or more states, OR 2) WILL, in the future, be selling the product in association with the word, name, symbol or device in 2 or more states.

This can be translated to: you must sell a product, displaying the word, name, symbol, or device, which is your UNIQUE product. For example, in the instance of clothing, you can not purchase a Hanes® tshirt and merely print a name across the front and call that your UNIQUE product. The USPTO would consider that shirt a product of Hanes® that you have merely made ornamental.

In the case of either trademark or service marks, keep in mind that merely displaying the symbol next to the word, name, symbol, or device does not create or denote any level of protection unless the application has been filed: "The presence of the letters 'SM' or 'TM' cannot transform an otherwise unregistrable designation into a mark."

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The Change Message

President Barack Obama's message of change has been a constant since he announced his candidacy on the steps of the Old State Capitol building in Springfield, IL. And on January 20, 2009 a huge change in the face of politics happened.

The President's theme has inspired folks all around the world. It's even made it's way into the world of trademarks.

A mere 2 days after the inauguration, 562 Media Inc., a marketing and design firm, filed for MakeAChange.org, which will be "a website that gives users the ability to make donations for charity"

And just yesterday, 3 more applications were filed using change as a central word in their marks.

Erasoul Enterprise filed for Embrace Change in 3 different classes, namely, the jewelry, houseware and clothing classes.

Dreams for Kids Inc, a children's charity, filed for We Are the Change, which is a youth leadership program.

Hubbell Inc, the international manufacturer, filed for CreateChange for "energy efficient lighting information services."

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What is NOT a Service Mark?

Now that we’ve determined what a service mark is, let’s get into more detail about what a service mark is not.

There are 5 examples the USPTO provides and it’s my guess that these are often filed for accidentally. I know at TradeMark Express we’ve received questions about all 5 of these “services.”

1) Contests and Promotional Activities

Now you’d think that contests and promotions are obviously services, right? It is a real activity and is done for the benefit of others. But it fails the 3rd test in that it’s not necessarily distinct from the primary services. Contests and promotions are typically just tools of advertising. There is an exception which is that if the contest or promotion goes “above and beyond what is normally expected of a manufacturer in the relevant industry.”

For example, “clothing manufacturer’s conducting women’s golf tournaments held to be a service, because it is not an activity normally expected in promoting the sale of women’s clothing.”

2) Warranty or Guarantee of Repair

These activities are merely ancillary to the primary service of repair, auto sales, etc. Again, there’s an exception to this rule. “A warranty that is offered or charged for separately from the goods, or is sufficiently above and beyond what is normally expected in the industry, may constitute a service.”

3) Publishing One’s Own Periodical

Now if you are publishing other parties’ periodicals that is considered to be a service. “Providing advertising space in one’s own periodical may be a registrable service, if the advertising activities are sufficiently separate from the applicant’s publishing activities.”

4) Soliciting Investors

Offering shares and publishing reports for shareholders are not separate services as these are routine corporate activities. Now investing funds for others is definitely a registrable service.

5) Informational Services Ancillary to the Sale of Goods

Providing information, instructions, details, etc. about your goods, the purpose of your goods, how to use your goods, etc. is not considered to be a separate service.

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What is a Service Mark?

While the USPTO does use the term trademark to denote businesses offering goods or services, there is a distinction between a trademark and a service mark. To be clear, there is no difference between trademarks or service marks when it comes to needing comprehensive research or filing a Federal application. All of that remains the same.

For the most part determining if you’re offering goods or services is pretty simple. For instance, toys are a tangible good therefore Mattel is technically a trademark while tax preparation is a service there H&R Block is technically a service mark. There are plenty of companies that have both. Nike, for one, offers a line of branded goods as well as retail store services.

Where folks get confused when it comes to service marks is mistaking ideas or concepts for services. Let’s take a look at the USPTO’s criteria for determining what is or isn’t a service mark.

1) Service must be a real activity.

The best way to explain this is to explain what is not considered to be a real activity – ideas, concepts, recipes, systems, processes, methods.

2) An activity must be primarily for the benefit of someone other than the applicant.

Who benefits from the activity/service? If it’s yourself or your company, you’re not offering a service in the technical sense of the word. If it’s for others, you are.

“While an advertising agency provides a service when it promotes the goods or services of its clients, a company that promotes the sale of its own goods or services is doing so for its own benefit rather than rendering a service for others.”

3) Sufficiently distinct from activities involved in sale of goods or performance of other services.

This sounds complicated but it’s really not at all. Basically, whatever service is filed for must be distinctive from the primary activity. “For example, operating a grocery store is clearly a service. Bagging groceries for customers is not considered a separately registrable service, because this activity is normally provided to and expected by grocery store customers, and is, therefore, merely ancillary to the primary service.”

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Guess the Logos, part 2

Okay, so I think I made Friday's test a bit too hard. Let's try this again. Guesses go in the comments section.

The first person to guess all 7 receives $50 off of our Premium Package.

How many names should I trademark?

A common question we here at TradeMark Express get is should variations on a name also be filed for trademark registration. For example, if your business name is Fly RIght, should variations such as Flies Right, Fly Write, etc.* also be filed? Another example is the singular vs plural variations on a name.

Simply put, no, filing these variations are not necessary. Basically, you should file the name as you use it or as you intend to use it. One of the reasons behind registering a trademark is having exclusive rights to your mark within your industry.

Also, the USPTO requires that a specimen be filed in order to obtain trademark registration. The mark as displayed on the specimen must match exactly to the mark displayed on the application. Therefore, filing variations is pointless as you will not be able to prove to the USPTO that you are actively using those variations.

Now the 2nd part of that common question is - does that mean another party can file a variation on my name and receive registration? This question is a bit trickier to answer so let's go over a couple of scenarios to make things a bit clearer.

Example One:

You have a name for your clothing line called Love Letters* and you're not yet in business. You've done your due diligence and had comprehensive research conducted. After learning the name is clear, a trademark application is filed. A couple of weeks later, another company files for LuvLetterz* for clothing & they are also not yet in business. This would likely not go through for a couple of reasons - (1) the similarity in Sound, Appearance and Meaning is very strong between the two names, (2) the industry is common and (3) you filed first.

Example Two:

Let's use the same scenario as above in terms of your company name. Now let's say another company files for Letters of Love* for a line of stationery goods. As long as there are no pending or registered trademarks, the USPTO would likely allow this mark. The main reasoning is that the clothing and paper goods industry are dissimilar enough as not to cause customer confusion. In other words, someone looking for a t-shirt is not going to go to a stationery store and vice versa.

If you have an example you'd like me to analyze, please post a comment here.

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* No claim is made to the ownership, knowledge or liability of the above company names. The above examples are merely for informational purposes and should only be seen as such.

Current Filing Fees at the USPTO

There's a number of forms and fees that must be filed in order to keep & maintain your trademark. It's advised that you keep yourself up to date on these fees during the life of your trademark. Prior to filing a necessary form, check this link to ensure that you'll have the necessary funds in time.

Application for registration, per international class (electronic filing, TEAS application)

325.00

Filing an Amendment to Allege Use under §1(c), per class

100.00

Filing a Statement of Use under §1(d)(1), per class

100.00

Filing a Request for a Six-month Extension of Time for Filing a Statement of Use under §1(d)(1), per class

150.00

Application for renewal, per class

400.00

Filing §8 affidavit, per class

100.00

Filing §15 affidavit, per class

200.00

The Problem with the USPTO: Flaw #3 – Meaning

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.

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 Meaning mean? And how does the USPTO search engine fail in this respect?

"Similarity in meaning or connotation is another factor in determining whether there is a likelihood of confusion between marks. The focus is on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademark" Click here to read more.

The USPTO provides an example of CITY WOMAN (clothing) being refused because it's likely to be confused with CITY GIRL (also clothing), in terms of meaning. It's reasonable for the average consumer to believe these marks are related as woman and girl both describe a female person. Since it's for clothing, it's very easy to see how one could assume City Woman is a line of women's clothing whereas City Girl is a line geared towards young girls or teens.

Flaw #3, Meaning:

That being established, let's do a search using the USPTO search engine. A search for CITY WOMAN brings up 20 marks, one of them being the now abandoned CITY WOMAN in question.

But it does NOT bring up CITY GIRL.

So let's say CITY WOMAN was your mark & you conducted a search at the USPTO. You even searched variations, like City Women (no Girls here), Cities Women (no, not there) and City Lady (nope & now City Womanl doesn't even show up). You'd mistakenly think that the name was available.

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

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

The Problem with the USPTO: Flaw #2 – Appearance

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.

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 Appearance mean? And how does the USPTO search engine fail in this respect?

"Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks. Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words." Click here to read more.

The USPTO provides an example of TRUCOOL (a synthetic coolant) being refused because it's likely to be confused with TURCOOL (cutting oil), in terms of appearance. Now these marks are decidedly different but the fact that the goods are similar & the marks' APPEARANCE is very close, a refusal was issued.

Flaw #2, Appearance:

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

But it does NOT bring up TURCOOL.

So let's say TRUCOOL was your mark & you conducted a search at the USPTO. You even searched variations, like TrueCool (no TURCOOL here), Tru Kool (no, not there) and Troo Cool (nope & now TruCool doesn't even show up). You'd mistakenly think that the name was available.

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

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

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.

What does it take to get a Filing Date?

There are a variety of different dates for any given Federal trademark application – filing date, status date, publication date, first use date, first use in commerce date and registration date. I'll devote a few posts to each one.

Let's start with the first date you'll receive once the application is filed – the filing date.

Here's what the USPTO says about this:

"In an application under §1 or §44 of the Trademark Act, 15 U.S.C. §1051 or §1126, the filing date of an application is the date on which all the elements set forth in 37 C.F.R. §2.21(a) (see TMEP §202) are received in the United States Patent and Trademark Office (“USPTO”)."

What?

Let's simplify this paragraph. For any applicant claiming foreign priority or foreign registration, you'll be filing under §44. The rest will be §1, which is going to apply to most US-based applicants, especially small businesses and/or those just starting out.

Okay, so the application is filed but what does it take to receive that filing date? "All the elements [must be] set forth" – which means what? There are 5 areas that must be satisfied to receive a filing date from the USPTO:

(1) the name of the applicant;
Who is the owner of the trademark?

(2) a name and address for correspondence;
Who is the contact? What is the address?

(3) a clear drawing of the mark;
Okay, now it's getting a bit more complicated. When filing an application, the USPTO site generates this drawing. Whether or not it's going to be acceptable is dependent on what's submitted.
If you're filing just words, NO logo and NO stylized font, then a drawing of the mark will just be your name in plain text. Very simple. If you're filing words with a logo OR a logo alone, then a JPG image must be uploaded, which will then appear on the drawing. There are certain specifications, which I'll touch upon in a future post.

(4) a listing of the goods or services; and
What are you using the name for? What types of products or services? The USPTO is very picky about how this section is filled out.
They have a standard of acceptable identifications; the key is not only to fill out this section but fill it out correctly.

(5) the filing fee for at least one class of goods or services.
Last but not least, the money. We here at TradeMark Express always recommend filing the TEAS form, which is $325 per class. So the USPTO must receive at least $325. If you're filing in more than one class, it's $325 apiece.

And that's what it takes to get a filing date. This is NOT what it takes to become registered, that point should be made very clear.

Unsolicited Trademark Mailings: A Warning from INTA

When TradeMark Express started preparing and submitting Federal trademark applications for clients, we heard almost immediately about official-looking mailings they received requesting more money to either monitor their mark or to be listed in a "trademark registration directory." These unsolicited offers are in no way affiliated with the USPTO and therefore, do NOT require a response.

The appearance of these mailings is the first foot in the door of confusion. They often come on very official looking stationery; an invoice that looks very governmental in form and/or appears to be affiliated with a governmental entity.

Take a look at one of the examples INTA provides on their web site from the United States Trademark Protection Agency (USTPA – see what they did there?): PDF format - USTPA Example Mailing.

The only mailings any trademark owner should most definitely respond to are going to be those directly from the US Patent & Trademark Office. Also, any official USPTO email is going to come from addresses ending in uspto.gov

If you've received a mailing you're not sure about, please contact any of our offices for guidance.

Read the International Trademark Association's (INTA) full article here. A listing they identified of some of the companies who send out unsolicited mailings is also provided within the article.

It's Graph Time Again!

As promised in this post, I'm revisiting the USPTO's Performance & Accountability Report.

I decided to take a look at the highest number of applications filed based on state residency. Here are the top 6 out of the 310,296 applications filed by residents of the US:

Now let's take a look at these same states to see how many made it to registration. This represents a portion of the 122,266 applications registered to residents of the US. Of course, there's going to be some rollover from those filed in 2006/registered in 2007 and those filed in 2007/registered in 2008 but this gives a pretty fair snapshot:

It still boggles my mind that such a large number of trademark applications are filed that NEVER make it to registration. This is why we always stress to our clients to stay on top of their trademark filings. The USPTO will not keep watch of your trademark; that's your responsibility. Also ensuring that the name is available in the first place will get you past the dreaded refusal Office Action.

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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.

Fun With Graphs

Every year the USPTO publishes an online Performance and Accountability Report, which contains some pretty interesting statistics about patents & trademarks. I used this site to create a couple of graphs to provide a visual on these stats.

A 27% increase in 4 years is pretty significant. The increase every year goes to show how important folks are taking their trademarks & brand identity.

The above is a 5 year look at the number of registrations issued. As you can see, the number of applications filed versus those that move to registration differ greatly. This is going to be for a number of reasons -- refusals, abandonments, oppositions, etc.

Look at 2006 - 128,672 applications never made it to registration. Even if each one of those applications consisted of only 1 class filed, that's a total of $41,818,400. Let's even say that all 128,672 applications used TEAS Plus -- that's still a total of $35,384,800! That's staggering.

There's all sorts of statistics available so I'll be devoting a couple of more posts on the various findings.

Copyrights & Trademarks: Do You Need Both?

Protecting the intellectual property aspects of your business is a worthwhile investment. However, it is difficult to know what form of intellectual property works for what facets of your business. Let's take the time to break all that down.

Copyrights:

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.

To protect text as it appears on advertising copy, speeches, pamphlets, brochures, online works, reports, etc. a Literary Works application would be filed.

To protect pictorial or graphic items such as technical drawings, posters, labels, games, etc. a Visual Art Works application would be filed.

Only a few items that could be protected by copyright are noted here so if you have other items in mind, please feel free to email me at Shannon@tmexpress.com and I can point you in the right direction.

Trademarks: A "registered trademark", or ®, refers to a name, slogan or logo that has been officially registered with the United States Patent and Trademark Office (USPTO). Registering a trademark is beneficial to a business because it publicly states that your trademark is registered with the USPTO and therefore, you have exclusive rights to that name within your industry.

Prior to investing your time, money & effort into a name, it is strongly advised that comprehensive research be conducted to ensure that the name you're interested in is truly available.

This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files. Then, if clear, you can decide if you would like to file for a Federal or a State trademark.

Mention our blog & get $25 off of our Research & Application Package.

Small Business Trademarks: Who Needs 'Em?

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.

Let's say you found the perfect name for your small business. What a lot of folks do at this point is usually a misstep – filing for a business entity under it, printing business cards, launching a web site, etc. There really is no point in investing in a business name until you know that the name is legally available.

If you had to change the business name AFTER you've done those things, you're losing on precious resources, such as time, money & effort.

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. There's some preliminary research you should do; check this article for further details. Once it clears the preliminary stage, look into getting a comprehensive trademark search.

Now let's say your small business name has cleared the comprehensive search stage (yay!). Does your small business name need a trademark? Now being in the trademark business, you'd think our position would be why yes of course! However, filing for a trademark is not necessarily going to be the right fit for your business or plans. You'll have to decide that.

As long as no one has prior trademark or common-law rights to the name, you can operate with your common-law rights – thousands upon thousands of small businesses do this very thing.

One point to keep in mind is the importance of your name to your business identity. Let's look at some examples to illustrate further when a trademark is appropriate:

You're designing a clothing line and your logo/name combination is an integral part of your advertising campaign as well as appearing on all the tags and labels on the garments – your brand identity is important to your business so seriously consider filing for a Federal trademark.

You're opening a local tax preparation company and want to use a name that's somewhat generic, such as Tax Solutions -- since your use is local, a Federal trademark would not apply but a State trademark would. Also the name is pretty generic so trying to obtain exclusive rights to the name may not be possible.

Read more about the advantages to having a Federal trademark here.

Even if you decide that a trademark isn't for you, don't forget you still need a comprehensive search on the name.