What to Expect When You’re Expecting – A Trademark

A trademark represents a brand, so it can be words like “Apple”, including made up words like “Kleenex”. It can be symbols, like the Nike swoosh. It can also be colors, like UPS brown, and even scents like the flowery musk scent in Verizon stores. Filing a trademark in the United States is surprisingly easy. With a couple hundred dollars and a couple hours, you can be well on your way to having your very own registered trademark and having the right to use the ® symbol on your mark. You don’t need a lawyer, but you should know some of the hangups you might run into. The USPTO has a fantastic primer on trademarks, but we’ll TL;DR it for you.

Knowing If a Registered Trademark Is Right For You

The United States Patent and Trademark Office (USPTO) registers trademarks and issues patents, but it’s not always the best way to spend your money. A patent is only as valuable as one’s ability to defend it, so a startup spending their few resources trying to get a patent doesn’t make sense if they don’t have the resources to sue someone who violates it. The same is true of a trademark. You can bluff your way with Cease and Desist letters, and people might see the trademark and patent and steer clear of it, so it’s not worthless, but it’s also not ironclad protection of your intellectual property.

With trademarks, it’s possible to skip registering entirely but still get protection through the ™ sign. In fact, it costs nothing to use it, and you can sprinkle it liberally on any logo or word mark you create and intend to protect. You can also use ™ up until your ® is registered. The downside is that it’s a ‘common-law’ right and not as strong, so it’s harder to defend. Consider it the equivalent of putting a sign on your fence that says “trespassers will be shot.”

If you’re doing business across the nation, you have some resources at your disposal to protect your ® if needed, and you have a brand that you want to protect, then registering is a good idea.

Filing Trademark: So Easy Anyone Can Do It

The process of filing the trademark involves a few steps. First, and absolutely the most important, is to do some due diligence and make sure you have a high likelihood of success by looking for similar trademarks that have already been registered. The person at the USPTO with the power is going to look at your application, then look for other trademarks that are “confusingly similar.” This is a vague but powerful term, so it’s important to stay away from the gray area. Similarly spelled or sounding names, translations, visually similar logos, all of these are danger zones.

Trademarks are filed by class, which is a way of organizing by general category. This is how you can have Apple Records and Apple Computers coexisting at the same time (in theory). As a brand gets bigger, it has more power, though. It’s unlikely that “Coca Cola Electronics” would be issued, even if Coca Cola itself doesn’t have a registered copyright in that class, because Coca Cola is so big and well known that people would be confused and think they were the same entity. The mess that happened with Arduino’s trademark is exactly what the USPTO is trying to help avoid.

Once you are confident that your money won’t be wasted, there are some hoops you have to jump through to file, but they’re pretty easy. You have to have an owner of the mark, name and address, filing fee, and signature. That’s about 2 minutes of work. You have to pick the goods or services, which is another minute. You have to upload the depiction of the mark. If you are doing a word mark, then this is just typing out what your mark is. Otherwise, it’s an upload of an image, as clear as possible. The word mark is more powerful because it’s the words no matter how you dress them up, so you have more freedom with design. Your mark must be used in commerce, and you must show evidence of this (a screenshot of a web store front works, as long as it has the logo and shows that you’re using it in commerce). Then you click the submit button, review it extra close, and file. It’s usually pretty simple, but it’s the beginning of a 6 month process.

Waiting and Scam Avoidance

While you wait, you’ll get notified of your progress through advertisements. There will be law firms telling you they can help you with various aspects. There will be random internet registries sending you advertisements that look like invoices for large amounts of money. They will be congratulating you on the registration of your mark. They are mostly scams trying to sucker you out of money, but they will be telling you what your trademark status is before the USPTO gets around to it. It’s weird, but it’s the way it works.

These are a ripoff. Do not give them money. They just send invoice-looking things and hope you’ll be scared into paying them for nothing.

Once you file the form, it’ll take a couple months before the clerk can get to your application, and it will be accepted or they will submit an office action, which can be a request for clarification if you mess up the paperwork, or they’ll decline the application if it violates an existing trademark. If accepted, it gets put into a public notice, and the public has some time to file a complaint. If your application gets through the public notice without any complaint, then you are issued the registration. If you did it right from the beginning and there isn’t any doubt about your rights to the trademark and no likelihood of confusion, you don’t have to do anything but wait.

You Got It!

After you get the flood of email and snail mail telling you, you’ll get an official notice from the USPTO that you have successfully registered your trademark. Congratulations! At this point you can start using the ® symbol on your mark. Technically (according to the lawyers at least), you’re supposed to use this anywhere your mark is used. Realistically, that comes across as pretentious and silly, so it’s acceptable to use it in the big important places and not so much elsewhere.

With your fancy new registered trademark, you can now prevent others from doing stuff that would violate your mark (and get treble damages for violations), like keep someone from importing 2000 multimeters because they have a dark face and yellow border. If you don’t defend it, though, it becomes at risk of becoming a generic name that is no longer under the protection of trademark. That’s what happened to Kleenex, and it’s at risk for Google — if you use google like a verb to mean to search regardless of which search engine, you’re contributing to the dilution of Google’s registered trademark. Xerox had a large campaign to encourage people to use the term photocopy instead. If you don’t defend your trademark against  ALL violators, you risk losing it as well. This is why Disney is such a stickler, and why the Velcro company sent us a cease and desist for our (recently renamed) article on Hook and Loop fasteners.

Makerspace™

You may remember the fiascos with the trademarking of the term Makerspace. First a German accelerator tried to trademark it as a defensive trademark, then a British company tried to do it for their line of storage racks. In both cases they got a lot of heat, and their applications were declined, but there are relevant points worth mentioning here. First, international registrations of trademarks aren’t all that different from the US, so much of this article is relevant in other countries. Second, there’s no such thing as a defensive trademark: you either use the mark or you lose it. Finally, a brand is an emblem of a company, but it’s also a focal point for the relationship between the company and the public. If you lose the good will of the people, the brand has no value.  This is why it’s important to not only have a strong brand, but to have the ability to protect it from people who would copy it and use it improperly without permission.

Conclusions

Filing a trademark can be intimidating the first time. It’s surprisingly easy to do, but it’s also easy to screw up if you don’t do enough preparation. Their office action emails are confusing legalese that require a few attempts to decipher, but the office itself is approachable and easy to work with. All of my registrations so far have been successful, and my one mistake was renewing my registration with a slightly different name and completely different address (you need to renew your registration every 5 years). They were right to throw up a red flag claiming that I couldn’t register without proof of change of ownership, but a friendly mea culpa reply was enough to satisfy them. I hope to never need to flex my registrations’ muscles, but I’m happy to know the USPTO is there and takes trademark protection seriously. You can read even more helpful material from the USPTO trademark basics web site.

18 thoughts on “What to Expect When You’re Expecting – A Trademark

  1. It costs me about $1000 each time to have a lawyer handle the registration for me, in the Atlanta area. Not trying to debate whether its a good idea to attempt it yourself, but thought folks might be curious what the cost difference is.

    1. If your purchasing decision comes down to if the phone store has perfume or not. You missed all of the other issues that should have kept you out and away from that brand. Bad billing, locked devices, terrible customer service, etc.

      I personally have a received kiss off letters from the FCC, FTC The California Attorney general’s office, and many other agencies even remotely tasked with enforcing telcom rules, why because Verizon failed to handle our 911 calls, they failed to go through for our medical clinic and the agency I worked for was told basicly tough luck. This wasn’t a one time occurance. In fact the T1 stats showed that in the month of July alone showed 3000+ drops for a few seconds at a time. Each one would cause a loss of all connected parties in the entire community! (that was back in 2010 or so)

      Subsequently I got two fiber optic networks deployed to compete with them in their market and managed to order the last “four wire Telegraph circuit” available under their old California Tariff. They had removed bare metal services to prevent DSL use. I used the “Telegraph” line to get around this issue and provide internet service to the local school and public computer center. After my order they submitted a new Tariff to California to remove the services I had ordered. All of this because Verizon would not do anything to fix issues with their network. In addition any new services were restricted and many orders never fulfilled because they were out of capacity on key links such a lines over a bridge and microwave equipment.

      In the end I had to build my own infrastructure to get around them. They refused to do what was right when we needed helicopter service and our calls didn’t go through. Mind you this wasn’t a cell line and a case of “no signal” this was a hardwired “regulated” line with years of abuse by a large telcom. Basically regulators didn’t care about small communities, and so neither did the telcom.

      Around the same time Verizon purchased the cell market in a nearby community and transitioned all of the pooled contract phones over to individual plans with limited minutes(regardless of the contract we had before they purchased). This caused over 40% of our account lines to go over their plan and we got hit with overages. They fixed the plans after several months of back and forth only to leave the charges on the account. When I left the agency the bill was going on 3 years old with a more than $30,000 delinquent balance that they refused to remove even tho it was a violation of our contracted service. They had agreed to remedy it several times and in the end they just kept saying that it will be fixed next month and kept it on the bill knowing that eventually someone will pay.

      But if perfume is your reason at least your not giving them any money.

      1. Yup. I dropped Verizon copper 13 years ago (roughly), as the service NEVER worked. There was a break in the line, and they had not interest in fixing it. They claimed it was on my side of the net interface, but it still existed when the plug was pulled from the isolation jack. Their tech agreed it was their side of the network. Eventually (after several months of crap, paying the bill all the way and going to the state) I connected a TDR unit and told them where teh problem was. They then tried to have me fined for connecting unauthorized equipment (It wasn’t- certified unit for connection, and even in current calibration and isolation test at the time). Eventually, I dropped the account and fuiled for reimbursement for time without service (it is in the law here). Still waiting on that. Went cell only, as there was no other option in the community. Now we have veriz. fibre and Comcrap cable available, both for extortionary rates (25Mb/s $1US120/month, rate not guaranteed, but they are happy to cap it to prevent overage, and throttle it when the arbitrary, unspecified data limit is met, but no collusion….) in violation of the tarriff, but I have given up on that– too much sunken cost.

    2. Certain smells have been demonstrated to increase sales, mainly because they foster a sense of comfort or recognition in the customer. The smell of baked bread is a well known scent used, but obviously some shops will use “designer scents” to achieve the same effect and also distinguish their brand.

      It’s a quite common practice in the retail industry, so people with perfume allergies would be in trouble anyway. Besides, you can’t take every oddball condition into account.

  2. So, Bob,
    let’s see your trademark!

    I have a “logo” I’ve made (and used for decades) non-commercially. I think of it more as a brand (as in cattle), but I’d never want to punish an animal with it. (unless it was engraved/branded into a horn). As it is a highly stylized form of my initials, it has been used for initialing workplace documents. (is that using it commercially? B^)

  3. > If you don’t defend your trademark against ALL violators, you risk losing it as well.

    That’s internet armchair lawyer malarkey. It’s your mark, you can decide what is and isn’t acceptable usage. You just have to demonstrate you actually want/need the rights you’ve been granted. If it’s obvious you don’t care about the protections *at all*, then you lose the mark because you didn’t need it anyway. But that’s actually a really low bar to clear, and doesn’t have to be anything close to “ALL VIOLATORS WILL BE EXECUTED”.

    Disney and other big entities C&D even the tiniest use of their marks because they’re rich and they *can*. Not because they’re legally mandated to.

  4. After 15 years in business as SoftEgg®, I finally filed a trademark around 2009. It turned into a mess because some company called Newegg decided that they owned anything with the word “Egg” in it,and they decided to oppose my mark. Even though I had been in business longer, they had filed earlier, and had lawyers on retainer.
    This led to a year-and-a-half of FUD, and if it weren’t for a friend of mine with good lawyers and deep pockets to fund them, I might have lost my company name!
    We eventually reached a settlement where I had to agree to some restrictions on my business in return for them dropping opposition to my trademark. I don’t think this was really fair, but I’m glad it’s over.
    What lessons can we take from my struggle?

    * If you are gonna file, file as soon as possible.
    * Your trademark filed is by no means assured.
    * The ™ symbol is pretty much worthless, no matter how long you’ve been slapping it on things.
    * Until you’ve filed with some government entities using your name (like, to pay taxes and such), or signed some contracts with it, or filed a DBA, it is hard to prove your ownership of your mark.
    * Ultimately, a trademark is a statement of intent to do legal violence on anybody who comes close to it. These things aren’t magically enforced. Unless you’ve got more money (and the will) to pay lawyers than your opponent, your ® mark means pretty much nothing, too. If you don’t have the stomach for such battles, your trademark isn’t going to do you any good.
    * Getting really emotionally attached to your company name is a bad idea. Going to your opponent’s office and standing in the lobby crying is not a winning strategy. (Ask me how I know that.)

    Needless to say, I won’t be buying any more products from Newegg. If you don’t like the way they treated me in my struggle to get a trademark on my company name, perhaps you might also reconsider giving them money.

  5. Good article, but I disagree that it is always easy and can be done yourself. Have you ever been to court to enforce a trade mark? Ever had counterfeit products? Trade mark specialists can advise on that and more. Domain name issues. Company name issues, etc.

    If you want clear and detailed advice, use lawyers. Pick carefully though. A good, well priced trade mark lawyer can really help.

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