How To Do Just About Everything
How To Do Just About Everything
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Trademark is a complicated area of law, and we can't give you all the answers because lawyers would then hunt us down and kill us with pointy sticks. We can, however, provide you with the procedure for registering your very own federal trademark and explain some of the legal issues involved in doing so. The lawyers will allow us to do this, and they probably won't bother you, either, unless you infringe on one of their clients' trademarks. Then it's back to the pointy sticks.
By the way, we warn you ahead of time that the trademark search (Step 2) is by far the worst part of registering a trademark. Once the search is over, it's pretty much clear sailing. Don't give up just because the search seems daunting.
Before we burst into song about trademark law (and it's awfully tempting), you should know about the three different types of protection that exist whenever you want to protect an idea you came up with:
A trademark protects a word, phrase, symbol, design or combination of these things. Basically, you get something trademarked to protect your product's name, logos, and such. Examples of trademarked items are the names "Coke," "Coca-Cola," "McDonald's" and the McDonald's golden-M logo. In a nutshell, you can only trademark a clever little word, catchphrase or design and use it to market your goods and services. Here's the technical legalese definition of a trademark:
The U.S. Patent and Trademark Office (USPTO) defines trademarks and service marks as follows:
"A TRADEMARK is either a word, phrase, symbol or design, or combination of words, phrases, symbols or designs, which identifies and distinguishes the source of the goods or services of one party from those of others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product." Furthermore, "a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services."
A patent protects the physical characteristics of a new invention or a new procedure. We won't get into the gory details.
A copyright protects an original expression (artistic or otherwise). Music, art, books, and website articles all get copyrighted.
But wait: Couldn't a lot of these things overlap? When does a phrase become long enough that it no longer needs a trademark, but a copyright? Well, it can get mushy, but do your best. If your phrase or logo exists as a means for you to sell a product, you're probably looking for a trademark.
There are two systems of trademark law: common law and federal. To get common-law trademark protection, you have to use the trademark only within your state. This is for purely local business (as if you open a mom-and-pop store in your backyard). However, unless your business will definitely be limited to one state and you don't plan to use the Internet, it is best to register your trademark for federal protection. Even if you don't think you're ever going to expand out of state, you should still go for federal protection, because if you're ever going to purchase from or sell to some out-of-state entity, that qualifies as interstate commerce. We'll jump into that barrel of monkeys later on in Step 3. So go for the federal trademark. That is what this eHow explains how to do.
Incidentally, when you use a trademark before it has been registered, you should always put a TM (for a trademark) or a SM (for a service mark) in small letters next to the trademark. You may not use the R-in-a-circle design (which is reserved for federally registered trademarks) next to your trademark until after it has been registered, by which we mean after your application has been received, processed and accepted, not just after you fill out the form.
Wait, wait: What happens if you use the phrase you're trying to get trademarked, but then find out that someone else is using it? Well, it depends. If you began using the phrase first, even before you went through the legal processes, you have dibs over the other person. Proving who used the phrase first can be difficult and costs lots of money in court, so don't bother waiting. Our point: Once you come up with your golden idea, go ahead and apply for a trademark.
When you first conceive of a mark that you would like to use to market your goods or services, immediately check to see if anyone else is using it. There's no sense wasting your time with the rest of the procedure if someone else has already registered it. You also need to see whether anyone has registered a mark that is substantially similar to the one you want to use. You do this by checking other people's applications to the United States Patent and Trademark Office (USPTO).
There are two main tests for "substantial similarity." First, is the trademark likely to cause confusion among consumers so that they might mistake the two suppliers of products or services for each other? For example, it would be confusing to have a software company called "Micrasoft," because there is already a software company (you may have heard of it) called "Microsoft." Second, is the new trademark likely to cause dilution of the respect for the older one? For example, no one would mistake "Microsoft Porn Service" for the big, bad software company, but you'd better believe the proprietor would be receiving a letter from Billy's lawyers in short order.
The USPTO has a free searchable database of federally registered trademarks, and you can use this whenever you want to perform trademark searches (we'll tell you how in a minute). Unfortunately, because of the two schemes of trademark protection (common law and federal--you are paying attention, aren't you?), not all of the trademarks in use will be federally registered. Therefore, the USPTO's free database won't tell you if someone is using an unregistered trademark that has common-law protection. Furthermore, the USPTO's database is usually a few months behind on registered trademarks, so it won't show you recently registered trademarks. These issues make your trademark search more difficult, but we'll try to help you out.
You can also access more up-to-date records than what the USPTO offers with an online trademark-search service like the one in Resources. Its instant, free online searches include weekly updated federal records, plus Canadian trademarks, all registered Internet domain names, and a huge library of U.S. company names.
Why bother searching?
There are two sorts of risks associated with not performing a thorough trademark search. First, if you send in an application and it is rejected because there is an existing registered trademark that is identical or substantially similar, the USPTO will still keep your application fee. Second, if you infringe on someone else's trademark, you could suffer legal consequences. If you use a trademark someone else has federally registered, you could be considered a willful infringer (because you could so easily have checked) and be massively penalized (say that out loud, and you won't want it to happen to you). If you infringe on someone else's trademark without knowledge (i.e., it's not federally registered and you didn't know about it), and the party upon whose trademark you've infringed successfully sues for an injunction against your use, you will have to stop using your trademark and pay whatever it costs to change to a new trademark. It's unlikely that you will be successfully sued for damages for trademark infringement, because it's difficult to prove that an infringer's use of the trademark actually harmed the original user's business (but this is also a possibility).
We're sure that most of this information about trademark searches is confusing and upsetting to you. We wish it could be otherwise, but we're sad to say that, if you are in doubt, you will probably have to consult a trademark attorney or a trademark-search service (you can find these in your Yellow Pages or through Martindale.com). However, we're pulling for you to be able to do this on your own. To see whether or not someone else is using an identical or similar trademark to yours, you'll have to perform a trademark search. There are a number of ways you can do this, and we'll list them from the cheapest and least certain to the most expensive and most certain.
Search for free on the Internet or in a USPTO Library
Yes, the best things in life are free, including scanning endless websites to see if other people are using the trademark you fancy. The first thing to do is go to the USPTO's database of federally registered trademarks and conduct a search of the word or phrase you intend to use, or of words or phrases that describe the symbol or design you intend to use. Try several different combinations, instead of simply the exact word or phrase you want, because you need to see if there's anything substantially similar in use. (Remember?) This database is free to search as often as you want.
Next, conduct similar searches on the Internet using your favorite search engine(s). Type in the exact word or phrase and see what comes up. Chances are, you'll get thousands, and you then have to use your web-searching skills. See if any of the identical or similar occurrences in websites are being used to promote a product, and have a little TM (™) or an R in a circle (®) next to them. If you find an identical trademark, you're out of luck. However, if you find a similar trademark, you still might be able to use the one you want, but you'll probably have to check it with a lawyer or a trademark-search company (discussed later in this step).
It's also a good idea to check in the phonebook, Yellow Pages and/or with state business directories to see if there is anyone using the trademark or something similar. Common-law trademark protection applies to anyone who has used a trademark, and a good way to find out if someone else has rights in your proposed trademark is to see if it occurs anywhere else.
This method is not very certain, but if you're the gambling sort--and we're not recommending that you be that sort in any way that exposes us to liability--you might want to give this a shot and apply if you don't find anything identical or similar.
If large quantities of your time are worth nothing, you can also do a complete trademark search for free by going to a local Patent and Trademark Depository Library and following the instructions they'll give you there. We assume you're way too lazy to do this, but we mention it anyway, just to give you the option. You can find out more about these libraries, including their locations, in Resources.
If you do find something you think might be similar to the trademark you want to use, you should probably consult with a trademark attorney.
If you do not have the time to search on your own, you can use an online trademark-search service for a reasonable price. You can search all the names you want in their online databases, and it's free! Not only are their records updated weekly, their online results also show all pending, registered, expired, canceled and abandoned trademark records from the USPTO. This online service also throws in a Canadian trademark search and a search of all registered domain names under the .com, .net and .org extensions. NameProtect.com also offers state, common law and international comprehensive search reports for an extra fee, and a great online tutorial that walks you through the federal trademark-application process.
If you're lazy, risk-averse or both, you should probably pay a professional search service to do your search. This service doesn't come cheap--a complete search of all registered and unregistered marks could run you between $300 and $500--but it gives you peace of mind and someone else to blame. Some of these services will also provide you with a legal opinion about whether or not the trademark you want to use is substantially similar to someone else's trademark. You can find these in the Yellow Pages or online in Martindale.com (go there and select "Trademark Search Services" from the pull-down menu next to the heading "Service Type," then enter your state and city).
Once you're content with your trademark search and you feel confident that you can use the trademark you want without infringing on anyone else's rights, the process gets easy. It's easy, but it costs money (there's no avoiding this), and the application won't be processed for a long time.
There are two types of application you can file (there's another one for non-U.S. applicants, and you can find out about more about that at the USPTO's website). The first is the "use" application, which is the one you complete if you have already begun using the trademark in commerce (see the next paragraph). The second is the "intent-to-use" application, which you complete if you have not yet used the trademark but you have a genuine intent to use it. If you're confident there won't be any problems with your application, go ahead and start using the trademark, then complete the "use" application. The USPTO won't register your trademark until you use it and submit an "allegation of use" to them, so if you complete the "intent-to-use" application, it means more paperwork for you later (you have to send them the allegation of use within 6 months, or up to three years if you apply for a series of extensions).
The use of a trademark "in commerce" refers to the Constitutional grant of authority to Congress to regulate "interstate commerce." We're not going to go into it, because most of this legal stuff is brain-dryingly boring, but Congress liked the idea of using this power really broadly, and it's not tough to fit under it. The USPTO defines "interstate commerce" in this way: "For goods, 'interstate commerce' involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, 'interstate commerce' involves offering a service to those in another state or rendering a service which affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.)."
Whichever type of application you decide to complete, before you apply, try to determine ahead of time whether the application will be accepted. In addition to the requirement that nobody else be using the trademark you want to use (or something similar), your trademark must also be distinctive. That means it cannot be so generic that it just describes the product instead of the source of it. For example, if you sell timber, you cannot trademark the word "wood" or "timber," but you could trademark "wood-o-rama" or "timbermania." Furthermore, the USPTO will not register a trademark that contains:
* names of living persons who have not given their consent
* the U.S. flag
* other federal and local governmental insignias
* the name or likeness of a deceased U.S. President without his widow's consent
* words or symbols that disparage living or deceased persons, institutions, beliefs or national symbols, or marks that are judged to be immoral, deceptive or scandalous
Again, if in doubt, talk to a lawyer. We don't mean to harp on this, but seeing a lawyer doesn't necessarily mean you're going to break the bank. Let's say you're willing to do a lot of the legwork yourself, but you're not sure whether the somewhat similar trademark you found in your trademark search (see Step 2) is substantially similar, or whether "wood-o-rama" is immoral or scandalous. Take your specific questions to a trademark lawyer, and she will probably be able to answer them in relatively short order. You can find a trademark lawyer in the Yellow Pages or on the Martindale Lawyer Locator.
Once you've answered all of these questions to your satisfaction, there's nothing else holding you back. Go to the USPTO website and click on "Trademarks" in the left-hand column. There, you will find the application forms, plus instructions and much helpful information.
You still awake? Well, no one ever promised that your dalliance with the law would be like "Boston Legal." This fourth step confirms it: Once you've sent in your application, you must sit and wait for many months. It can take up to 9 months (or possibly years, if there are problems) from the time you send in the application to the time your registration is official and complete. During that time, and afterward, there are follow-up actions you must perform, which vary depending on whether you filled out a "use" application or an "intent-to-use" application (see Step 3).
Follow-up for "Intent-to-Use" Application
* After you apply, use the trademark in interstate commerce as soon as possible. See Step 3 or the USPTO website for a definition of "interstate commerce." Submit an "allegation of use," a sample of the use and the required fee.
* Answer any correspondence from the USPTO promptly, following all instructions to the letter. A missed deadline or a mistake can result in a long delay.
* After about 4 months, an attorney at the USPTO will examine your trademark application for acceptability. If it is unacceptable, the USPTO will inform you of this, of their reasons for so determining, and of any corrections you must make. This correspondence will also contain information about available appeals processes. At this point, you can make the corrections, appeal the decision or abandon the trademark. If the trademark is acceptable, the trademark will be posted in the USPTO's Official Gazette and a notice of publication will be sent to you.
* Once the trademark has been published in the Official Gazette, anyone who believes that your use of the mark might damage him has 30 days in which to file an opposition to your registration. If such an opposition is made, you will be informed; you then must fight it or abandon your trademark.
* If no opposition is filed, you proceed to the next step. If you've already used the trademark and submitted your allegation of use, you will receive a Certificate of Registration about 3 months after the date of publication in the Gazette. The Certificate means you're registered and you may use the R in the circle next to your trademark. If, however, you've been lazy and you haven't used the trademark, you will instead receive a Notice of Allowance about 3 months after publication. You have 6 months from the receipt of this notice to use the trademark and send in the necessary documentation, or apply for a 6-month extension. Once you've used the trademark and sent in the allegation of use, etc., you will receive your Certificate of Registration.
* Your trademark registration is good for 10 years, and you must renew it every 10 years. In addition, after the fifth anniversary of your registration and before the sixth, you must file a Section 8 affidavit to let the USPTO know you're still using the trademark. During the 10 years, always use the circled R with your mark; protect your rights by keeping others from using your trademark or similar ones; don't abandon your trademark or stop using it; and control the use of your trademark by licensees (specify under what circumstances they may use it).
Follow-up for "Use" Application
* Answer any correspondence from the USPTO promptly, following all instructions to the letter. A missed deadline or a mistake can result in a long delay.
* After about 4 months, an attorney at the USPTO will examine your trademark application for acceptability. If it is unacceptable, the USPTO will inform you of this, of their reasons for so determining, and of any corrections you must make. This correspondence will also contain information about available appeals processes. At this point, you can make the corrections, appeal the decision or abandon the trademark. If the trademark is acceptable, the trademark will be posted in the USPTO's Official Gazette and a notice of publication will be sent to you.
* Once the trademark has been published in the Official Gazette, anyone who believes that your use of the mark might damage him has 30 days in which to file an opposition to your registration. If such an opposition is made, you will be informed; you then must fight it or abandon your trademark.
* If no opposition is filed, you will receive a Certificate of Registration about 3 months after the date of publication in the Gazette. The certificate means you're registered, and you may use the R in the circle next to your trademark.
* Your trademark registration is good for 10 years, and you must renew it every 10 years. In addition, after the fifth anniversary of your registration and before the sixth, you must file a Section 8 affidavit to let the USPTO know you're still using the trademark. During the 10 years, always use the circled R with your mark; protect your rights by keeping others from using your trademark or similar ones; don't abandon your trademark or stop using it; and control the use of your trademark by licensees (specify under what circumstances they may use it).
We suppose that, by this point, you've figured out that we're mostly saying this to cover our asses. However, the fact is that consulting a trademark attorney can go a long way toward covering your ass, if anything goes wrong. Do what you have time to do and what you feel comfortable doing by yourself, and consult an attorney to fill in the gaps. Attorneys really aren't as bad as you think. They just charge a lot.
And there you have it: a basic outline of how to get a trademark. Another website that provides information about trademarks (and patents and copyrights) is maintained by the law firm of Cowan, Liebowitz & Latman (CLL.com). Happy trademarking!