You’ve come up with a great name for your product or business and you want to be sure no one else uses it. Do you need to get it trademarked? Is registering a trademark something you can do on your own?
So, you’ve just come up with a snappy product name, and you’ve decided you want to trademark it. What should you do next? Is it really as easy as the U.S. Patent and Trademark Office website says it is? Can you really do it without a trademark lawyer?
Once you come up with your product name, you must first determine whether that name is already being used for the type of product or service you want to use it for. You can do this by doing a web search for the name, searching it through the U.S. Patent and Trademark Office website to see if it’s been registered or applied for, or by contracting with a special search company that also checks through telephone listings, company names, and has further resources available than either of the previous options.
If it’s already being used, you’ll likely have to consult a trademark attorney to find out whether or not your use is different enough from the one already in use to justify spending your money on trying to promote a name that’s going to have to be changed later.
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Let’s say you can’t find any other uses of the name out there. Does this mean you’re home free? Well, not quite. If the name you have chosen is merely “descriptive” of the product, such as “Red Rubber Ball” for a rubber ball toy, or “Meaty Dog Food” for a dog food made of meat, it might be great for the consumer, but it’s not necessarily a name that the U.S. Patent and Trademark Office will accept as a trademark. A name that is “merely descriptive” isn’t going to pass muster, and will not be awarded a registration. There are other categories of names that are also not registerable; however, they’re a bit more complicated, and you really should consult a trademark attorney regarding how best to proceed in those cases.
If your product or service name isn’t already being used and isn’t descriptive, what then? Well, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your “common law” trademark rights, or, if you’re only going to be using the name locally you COULD go after a state trademark (check with your particular state for details), or you could then proceed with national trademark registration.
Your “common law” trademark rights are good, and you CAN sue someone for infringement if they were to copy your name for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over the way starts using your product name for a similar product? It’s rather difficult to limit your “territory” in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier. (Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. I positively recommend a qualified trademark attorney for international registrations.)
If you decide to go for a national mark, and you want to try to apply on your own, you can go to the U.S. Patent and Trademark Office website at www.uspto.gov and go through the entire application online. In some cases, where the name is very distinctive, and the product is easy to describe and fits neatly into one of the classes for trademarks that you can find on the website, and you can easily send a “specimen” showing that the name is in use in the way you say it’s in use, your registration may go through without a hitch, and you would receive a registration in approximately 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.
Unfortunately, it’s not always the case that your application for trademark registration goes through quite this easily. Often, you’ll receive what is called an “Office Action” from a Trademark Examiner in the U.S. Patent and Trademark Office asking you for more information and/or to clarify something, rewrite your statement of use, or submit a different sample. Or, your name may be “published for opposition” (a required step in the process) and someone who you didn’t find in previous searches turns up to “oppose” your registration. These are cases where you’ll most likely need the services of a qualified trademark attorney to assist you.
Once you submit your application, an attorney can help you with many of the changes that might need to be made to achieve registration status. However, there are minefields and pitfalls associated here, as well. It’s entirely possible that you may have made a “fatal error” in the application, and it must all be started over again. If you don’t find this out until your first office action, you may have wasted six months or more of time, AND your entire filing fee, just to have to start over again with a lawyer’s help. If the problems come up at the time of publication for opposition, this is the point where you’re almost entirely through the process. Starting over at this point would likely cost at least a year’s worth of effort.
In summary, ask yourself do I need a Trademark? As your product name can be protected either by common law trademark, state trademark, or national trademark. Both common law trademarks and state trademark registrations have serious limitations but are available. For national registrations via the U.S. Patent and Trademark Office, you CAN do them yourself, but be aware of the pitfalls and possible difficulties involved. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and will probably save you money in the long run.
Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see www.mikkibarry.com. This article is not meant to be legal advice.
Disclaimer: The content on this page is for informational purposes only, and does not constitute legal, tax, or accounting advice. If you have specific questions about any of these topics, seek the counsel of a licensed professional.
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