How to research trademarks and brands before your lawyer’s meter starts running

Frank CampEcosystem, StartupsLeave a Comment

From the desk of the Grumpy Old Company Lawyer

You can do some prep work and save yourself hassles by checking basic information that’s freely available on the web.

This blog will cover:

  • Why getting your domain name isn’t all you need to do to protect your new brand.
  • What is a TM or SM? What does ® mean?
  • How to do preliminary TM searches before spending a boatload on your brand.
  • What is a “strong” trademark?
  • How to decide whether to register your brand as a TM.

If your chosen brand is a throwaway, that is, you haven’t invested a lot in it, you don’t plan to use it for long, or you just like to spend a lot of money on lawyers (especially other people’s lawyers) don’t bother reading further. On the other hand, if you think you have something that will help your customers recognize your product or service as uniquely yours, it behooves you to learn a little about trademark law.

It’s a perverse pleasure, I love to ask our founders whether they cleared the kooky name they gave their startup before splashing it all over the web. The answer I get is usually something like: “Yeah, we own it. The domain name registrar said the name was available, so we bought it.”

If that’s you, that’s certainly a must-do. You need to have an online identity. Just securing a domain name doesn’t go quite far enough, however, to keep others from stealing your name or to keep from getting sued by someone who was already using that name (or one that is confusingly similar). Before we wade into the murky depths of trademark law, though, did you also buy the same string of characters on all the top-level domains that are likely to be used by your customers? What about similar words that could mean the same thing? How about your chosen name, but with one or more common typos? How about [yournamehere]sucks.com? Have you registered the name as an entity, a DBA or trademark with your state? Did you register the name with the U.S. Patent and Trademark Office? If you answered “no” to any of these questions, be prepared for some surprises.

One of the first things you can do is to go to the free USPTO website, www.uspto.gov . Especially the basic education resources: https://www.uspto.gov/trademarks-getting-started/trademark-basics . These are great for people who want to try their hand at filing their own trademark applications. I’ve known very few founders, however, who have the patience to learn how to successfully file trademark applications. I heartily recommend using an experienced trademark lawyer to ensure you are getting the most effective protection available. But even if you aren’t interested in filing your own application, these are excellent resources for learning what a trademark lawyer will need to know from you. Do some homework on this easy stuff and save your cash to pay for more detailed legal work from your experts.

What is a Trademark? A Service Mark?

A trademark includes any word, name, symbol, or device (or a combination) that is used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. A trademark is, in its essence, a brand. A service mark is a brand too, but it indicates the source of services rather than goods. There are some differences between a service mark and a trademark in how one proves they are being used in commerce, but otherwise they function similarly.

Trademarks and service marks don’t protect content (that’s for copyright law), and they don’t protect inventions (that’s for patent law). A good mark is unique and evokes your company or its products in the minds of your customers. A registrable mark can’t be too descriptive, nor too generic, and can’t already belong to someone else in the same line of goods and services.

Unique designs are sometimes easier to get through the registration process than a standard word mark, but they can be restrictive and narrow in use. Design marks, that is, marks or logos that rely for their uniqueness on a specific design, color, shape, etc., are hard for the novice to research. You must learn the dreaded USPTO Design Codes. Working with design marks is beyond the scope of the blog. Talk to your trademark lawyer if you think you’ve got a cool logo.

How do you find out whether the brand you chose is available or already belongs to someone else?

Get to know TESS. http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4807:yuaxi.1.1 TESS is the USPTO’s Trademark Electronic Search System and that’s where you can go to start getting a look at the playing field. There are a few nonintuitive terms and definitions to learn to do effective searches, but it’s a familiar Boolean search engine organized along the lines of the legal factors used to determine registrability. I tend to use two features the most: the “Basic Word Mark Search (New User)” and the “Word and/or Design Mark Search (Structured).” They allow you to either plug in the exact mark you want (New User), or input partial terms, combinations, extensions and abbreviations (Structured) to see if anything comes up that could be confusingly similar, even if not exactly the same as your mark. You may find a whole slew of registrations in the listings after you punch in your search. Don’t panic! Add an “and (live)[LD]” filter to get rid of the dead marks. The next filter you can try is for the goods and services that your mark represents. For example, use “and (clothing)[GS]” for your T-shirt company.

Many common words are used for trademarks for a variety of goods and services. Punch in the word “GALA” for example, in the New User search, and you will find live registered trademarks for perfume, hearing aids, assisted living facilities, baking ovens, websites, cigarette filters, bags for sports equipment, car audio speakers, floor tiles, and on and on. Whether you can get a registration for your trademark often depends on how carefully you identify your goods and services. Even a very similar brand can be distinguished from another and be granted a separate registration based on the differences in their descriptions of goods and services. Here again, a creative trademark attorney can help you prepare a description of your goods and services that may allow you to squeeze right in between a couple of competing marks. On the other hand, don’t think you can name your company’s new innovative cellphone case the “Mercedes” just because Mercedes-Benz doesn’t make them (for all I know, they might). There is a principle in trademark law that allows truly famous marks to enjoy trademark protection that extends beyond their goods or services.

Don’t stop with the USPTO search. Trademark owners who own valid (and some with legal protections) marks may have decided not register them with the federal government. You should still try to identify these other marks when choosing a brand. You may want to use a trademark attorney for a more comprehensive search of state registrations and common law marks—the latter is generally done on a web search that you can try as well. State registration searches are more difficult for the average Joe, but not impossible. Remember to think creatively when designing your search terms and combinations. Be aware that sound-alike terms can also trip you up.

So, you’ve done all the searches you can think of and in all the forms and permutations you can come up with and you still have not found anyone else with your brand in your market? Just because you haven’t found anyone else using a mark similar to yours doesn’t necessarily mean you have exclusive rights to it. A good search, particularly if done by a trademark expert or counsel, can give you a reasonable basis to start using your mark. Trust me when I tell you that an experienced trademark service or attorney will almost always be able to build searches that are more comprehensive and accurate than you will come up with on your own. It may be worth spending some of your money on a trademark lawyer before you drop a lot of cash promoting your brand. Once you’ve done your preliminary searches, identified your goods and services accurately, and think you have a winner, though, you are a long way down the road. Give your attorney the results of your preliminary searches—that may save their time, and your money.

If you have a reasonable basis to claim the mark, you can, if you want, start putting the world on notice. Using the symbol “TM” for trademarks or “SM” for services attached to your brand is perfectly legal while you are working to perfect your rights. Just don’t slap on a ® until you have a registration granted by the USPTO, however.  That’s a violation of federal trademark law. The final decision whether your mark can be registered resides with the lawyers at the USPTO when they complete their examination.

I’ve heard “first to file” wins the race for a registration, why would I NOT label and/or register my brand?

Applying for a trademark registration and marking your goods does put you out there. Once your mark is public, it may bring competitors out of the woodwork to challenge your right to the mark. So, one reason you may not want to publicize your mark even if searches look good is to be able to build up your use of the mark before competitors get wind of it. Building your brand actually can help your chances of later getting a registration issued. Also, some consumer products may be so short-lived as to make the whole trademark registration process meaningless. It can sometimes take 18 months to two years to get a registration to issue, sometimes more if the examiner isn’t convinced you have a unique claim. If your product will be created, sold, and taken down in less time, maybe it’s not worth the grief. OTOH, if there are competitors out there, you need to know that the first one to file with the USPTO usually wins.

How do you choose a strong mark that will withstand attack from others in the market?

Even the decisions of the USPTO can be challenged by your competitors, so give some more thought to how to create a strong mark. The best marks sometimes weren’t even “words” before they were dreamed up (“Exxon” was a great choice for a mark, for example). Sometimes common words that have no direct connection to the product, other than the meaning that’s been associated with that product in the market, make great trademarks. What’s an “apple” got to do with computers, anyway? Beware of just changing a letter or two in the same category of goods and services as an existing mark. An “Aple” computer might just raise some eyebrows out in Cupertino. OTOH, terms that are too descriptive of the relevant goods and services can’t be registered either—“Apple” for, say, apples—would not be granted a registration.

Use it or lose it.

Are you planning to use your mark in interstate commerce? This is important, because if you don’t, you can’t get, or keep, a registration for a mark. The rule with trademarks and service marks is “use it or lose it.” You can file an application with the intent to use it when your product is ready, but you have to prove that it is being used in the stream of interstate commerce before you can actually get an effective registration. Labeling the product, sales advertisements, even offering it on your website (as long as it is a public site) can help show you are using the mark in commerce.

For goods, “Interstate commerce” involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods, or ads for the goods. With services, “Interstate commerce” involves offering a service to those in another state or rendering a service that affects interstate commerce (e.g. restaurants, gas stations, hotels, etc.) while using your mark—it’s trickier to prove for services, but a public website where customers can sign up to buy your service is often all you need.

Unlike copyrights or patents that have defined lifespans once granted, a trademark can be lost and taken up by someone else if you don’t use it. There are specified filing and renewal dates in the law, but if there’s a gap in using the mark, that can spell problems.

There’s a lot more to know about trademarks, but this will give you a head start on your competition.

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This blog and the sample documents are for general information only, and is not intended to be, nor may be taken as personal legal advice. Consult a qualified independent corporation lawyer to help make sure you are complying with the laws and regulations in your jurisdiction.

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