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The Trademark Process
Many times each week, a potential client will call me saying they need to patent or copyright something. The vast majority of society interchanges the words patents, copyrights and trademarks, and generically say patent for anything dealing with intellectual property.
The three categories of intellectual property are copyright, trademark and patent. However, each one deals with a different type of work. This article will specifically focus on trademarks.
A trademark is generally a word, phrase or symbol that you want to protect when promoting a business. For instance, the word NIKE is trademarked. The “swoosh” Nike uses is trademarked to promote their business. Other words and phrases are also trademarked by the Nike corporation such as Air Jordan’s.
If you are starting your business, the first step in the trademark process is to protect the standard characters. So if you were opening a business entitled Acme Concrete, the first thing you would want to protect is literally the words and letters of Acme Concrete. That is the first step. Once you obtain a valid trademark for the standard characters, you can then start to expand into protecting artwork, designs and logos. But getting the characters is the first step.
Before you can get a trademark, it has to be determined if your mark is currently owned by anyone else. So, a trademark attorney will conduct a search. While the US Patent and Trademark Office has an online tool for basic searches, many people have no idea how the system really works. Doing a basic search on the USPTO website is equivalent to diagnosing yourself with a serious illness. Obviously webmd.com can only do so much, but the doctor is the one who can definitively diagnose your illness. The same logic goes for doing a search.
Just because your basic search may not show a match, the USPTO will deny applications if they are similarly confusing to other marks. For instance, if I wanted to open a fast food restaurant and call it Burger Kings, while that may be an unregistered mark, it would never be allowed to be registered because it is substantially similar to Burger King. The same may apply to a clothing line where you want to trademark a phrase of Little Baby Walkers. Such a phrase would not be registered if the phrase Baby Walkers is already registered. In addition, the search must consider the relevant classes you are trying to register the mark in. For instance, if you are trying to register a online social networking business, you may have to register the class for the mark in several categories. Here is a look at FACEBOOK:
IC 016. US 002 005 022 023 029 037 038 050. G & S: Cards, namely, business cards and non-magnetically encoded identity cards
IC 035. US 100 101 102. G & S: Business card design services
IC 040. US 100 103 106. G & S: Printing services
IC 042. US 100 101. G & S: Providing temporary use of online non-downloadable software for creating business and identity cards for facilitating social and business networking; developing customized web pages and other data feed formats featuring user-defined information in the form of online business and identity cards for facilitating social and business networking; identity card design services
As you can see, Facebook registered in class 16, 35, 40 and 42 for this mark. Each class has to be searched to protect conflicting marks.
In all, the search is the most important part of the initial registration. Your attorney needs to review what you are trying to do, determine the class of goods and services and then confirm that the mark is something you can register.
After the search is completed, the next step is applying for the mark. That process is actually very simple for standard character registrations. The only real question is whether the mark is already being used in commerce or if there is just an intent to use. If the mark is being used, evidence of the usage needs to be produced. If the mark is intended to be used, no evidence has to be produced and when the mark is registered to you, you have a hold on that mark for a period of time.
Often, I am consulted by individuals who have tried to do this on their own, only to hit road blocks with the USPTO in the form of office actions. As the saying goes, a pinch of prevention is worth a pound of cure. If you try to do this yourself and get to the examination stage with an office action, you will spend a tremendous amount more in legal fees to fix then if you had employed an attorney in the beginning. Also keep in mind, that companies like legalzoom cannot give legal advice. What you are paying the attorney for is not to fill out the online form, which frankly any 3rd grader can do. What you are paying the attorney for is the search and counsel on how to properly register your mark.
A typical attorney fee with my office is $1500 for trademark applications plus $275 for filing fees (per class). That amount is a drop in the bucket compared to $250/hr for office action replies. The trademark office is not for the faint of heart, and not even for most attorneys. Employ someone like myself who knows how to navigate you through the system and get you a registration of your mark. Should you wish to speak to me about your registration, feel free to contact my office at 757-301-3636. I can represent anyone in any state for trademark registrations. I am happy to discuss your case with you when you are ready.