What startups should know about Registering Trademarks
Guest Post: Brett Hertzberg is a US Patent Attorney with over 15 years of experience in intellectual property, he has a Juris Doctor (JD) Law, two Masters Degrees in Electro Physics & Electrical Engineering and over 10 years of experience developing ASICs and microelectronics for Aerospace and microprocessor manufacturers.
Note: This is a general outline of the topic of Trademarks and does not constitute legal advice and does not take into account your particular circumstances.
You should seek specific advice from your attorney for your situation.
What’s a Trademark?
- A word, symbol, phrase or design that identifies/distinguishes the source of goods from one party to another.
- A Service Mark is similar, but identifies the source of a service rather than a good.
Why use a trademark?
- It helps develop a brand in terms of image and market distinction for the product.
- The ™ associates the product with an expectation of quality from the supplier of those goods.
What do the circle ®, ™ and SM symbols mean?
- ® in a circle can only be used for registered trademark.
- If not yet registered, ™ is the symbol used for goods and SM is the symbol used for services.
- There are no specific rules for where the symbol must be placed on the trademark, but usually it’s on the right side of the mark.
What are the different kind of marks?
- Standard Character Drawing – consists of a combination of letters, words, numbers and/or common punctuation marks. It does NOT contain any special fonts, design elements, or stylized characters. The mark is presented in standard character format without claim to any particular font style, size or color. B&W drawings only.
- Special Form Drawing – consists of designs or logos (sometimes called stylized logos), either alone or in combination with words/text. If you are registering any text/words or other standard characters in combination with any design elements, then the drawing must depict both the standard characters and the design element combined in one image. Typically, you only use B&W drawings. However, if Color is part of the branding then you can submit a color claim naming the color and statement describing where the color appears in the mark.
- Examples trademarks:
i. Standard Character Drawing:
ii. Special Form Drawing:
iii. Special Form Drawings with Color as a feature
Picking a trademark:
- Fanciful Marks – Excellent choice!!! These are completely made up words that have no built in meaning so they are great choices for trademarks. Examples are REEBOK for shoes – REEBOK has no meaning.
- Arbitrary Marks – Good choice!! These are existing words that have no relation to the product or service. APPLE for a computer company is a good example; apples have nothing to do with computers.
- Suggestive Marks – Reasonable choice! These are words that suggest something but don’t describe the product itself. Think of companies like Microsoft, it suggests they make software for microcomputers.
- Descriptive Marks or Surnames – Terrible choice!!! It is really tough (or impossible) to protect something that merely describes the goods or service. Imagine you tried to trademark the word “bread” alone. If the trademark office granted the mark then no one else would be permitted to call anything bread without infringing the trademark. Similarly, surnames are treated like a descriptive mark and are not protectable. Example “Roberts Pizza.”
- Generic Marks – Worst choice!!! A generic term cannot be trademarked even with heavy advertising. Example E-MAIL. It’s a generic word for electronic mail in common use. Poorly policed trademarks that become generic are not enforceable. Remember when everyone started calling photocopies Xeroxes? XEROX had to spend huge sums of money in advertising to reclaim the mark because it was falling into generic usage.
- Company Name for Products – Don’t trademark your product as the same name for the company. It’s a typical rooky mistake that creates problems for your company downstream. So if your product is a mobile air sensor you trademark as “mSniff”, don’t name your company “mSniff, Inc.” The whole point of a trademark is to develop a brand image of quality for a product that is affiliated with a company. If the company name is the same, then you will have a rough time creating any additional products and develop the brand. Most people wind up renaming the company over this sort of thing.
How do trademarks get established?
- Common Law – a trademark can be established in many jurisdictions by use of the mark in commerce (i.e., without any trademark office filing). This use can be established by sales, advertising, promotions, etc. However, the common law trademark is typically limited to the jurisdiction where the trademark is established as in use. For example, I can have a trademark established in Portland, Oregon by selling in Portland; but not have a trademark in Vancouver, WA even though it is right next door because I did not sell anything in Vancouver.
- Territorial Registration – the trademark can be established by filing an application in the official trademark office of the jurisdiction (e.g,. country) where you want enforcement. For a US trademark filing, there is an advantage in that the entire US is one territory under federal registration so when you file a US trademark application you put the entire US on notice of your mark (and given an opportunity to oppose the registration). If the mark issues without opposition then the presumption is that the mark is valid in the territory (e.g., the entire US). One problem is that you have to file a separate territorial application in each jurisdiction.
- International Registration (i.e., Madrid Protocol Registration) – one application can be filed in a central jurisdictions if you use the Madrid Protocol System for International Registration of Marks. 90 countries are available under the Madrid System. However, some countries did not sign on to the Madrid Agreement. (see http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf)
US Trademark filings
- Pick type of mark, Service mark or Trademark
- Determine if your mark will be a Standard Character Drawing or a Special Form Drawing, and if Color is required in the mark.
- A search should be conducted to make sure you’re not wasting time and money. The USPTO offers a free search system known as TESS (Trademark Electronic Search System), which is available 24-7 @ http://www.uspto.gov/trademarks
- Determine the basis of the filing as either “use-in-commerce” or “intent-to-use”
i. “Use-in-commerce”: means you are currently using the mark (e.g., marking the goods) and they are already being sold or transported (or services provided). You will need to know the date of first use in commerce, and you will need a specimen (example) showing how the mark is being used. The specimen cant be a mock up or model, it has to be an actual good that is marked as it will appear in retail environments.
ii. “Intent-to-use”: means you have not used the mark yet but plan to do so in the future.
- Determine who the owner of the Application will be: either individual or business.
- Pick a name/address for correspondence
- Designate the application as goods (for trademark) or services (for service marks). If you’re not sure which you have, watch this video: http://www.uspto.gov/trademarks/process/TMIN.jsp#heading-6
- Determine the classes you will file in. Here is where it gets complicated. You have to pay for every class of goods/services you designate so that every one of the designated classes will be searched. The fee also differ based on the type of filing being electronic (cheaper) or paper (more expensive), and international marks are more expensive than domestic (US) marks.
- i. First take the keywords describing how your trademark will be used: is it on a hat, on a bag, on a tshirt, on a camera, on a baseball, on an alarm. Use the keywords to describe the search terms to find the Acceptable identification of Goods here: http://tess2.uspto.gov/netahtml/tidm.html
- ii. Note the classes and description of the goods and services: be accurate. Write it down identically.
- Pay money for the application filing and wait …
- After the US trademark is granted, you can always go after international protection later.
- Realize that every time you change the design of the mark, you may have to file another trademark application
- Realize that if you add additional classes, it will get more expensive.
Detailed guide on US Trademarks is available here
Interesting Facts about Trademarks
- Unlike Copyright & Patents, Trademarks do not expire.
- The first applicant for the United Kingdom’s Trademark system was Bass Brewery in 1875