Trademark

Patent or not, you can and should provide yourself with trademark and copyright protections. A good trademark can be a pile of gold and yet be very inexpensive to get and defend.

Trademarks do NOT have to be registered before they are used. In fact your life will probably be simpler if you use your trademark before registering it. Also, a lawyer can be helpful but is not required to register a trademark.

To get started, think up a number of possible trademarks. The reason you need to conjure up more than one is that the odds are almost 100% that someone else will have previously thought up your potential trademark or one very similar to it.

Corporate Names

Generally your trademark should NOT be your corporate name for a variety of reasons. First the law won't allow you to simply register a business name as a trademark UNLESS you actually USE it as a trademark. In fact all trademark law and rights are based on the use of your trademark, not just when you register it (if you choose to do so), but also on an ongoing basis--in fact 6 years after you get federally registered you must swear you're still using it in commerce and then 4 years after that and then every 10 years thereafter you must swear to it again (there are minor exceptions but you don't want to go there).

It's also a bad idea to use your business name as a trademark because what do you do if someone wants to buy your line of trademarked goods, trademark and all, and take over their production and sales? And you want to continue in business with your other products? And you want your customers to associate all that goodwill you've built up over the years for your corporate name with you? General Motors kept the Oldsmobile trademark created by Ransom E. Olds alive and well for nearly 100 years after Olds left his company--and, though he tried, over a period of 30+ years poor old Ransom in his new company, REO, was never able to outcompete the Oldsmobile brand.

The best trademarks have both no meaning and an obvious meaning (e.g., Kleenex^®, Realtor^®, Plax^® come to mind). They are made up words that are obvious fits when you know what they are for and are almost understandable when you don't. Kleenex, by the way, was not invented for nose-blowing, it was invented for wiping off makeup with cold cream. Marketing repositioned it later. Made up word trademarks are hard to invent especially since misspellings of real words don't count as made up words in Trademark law. For example "Klub" is considered equivalent to "club," "Kurly-Q" to "curlicue," etc.

Trademarks should not usually remind your buyer of your competitors either although that might help identify what your product is when you are new (remember Pepsi-Cola, a trademark dating back to at least 2/15/1897 and now almost invisible due to the use of only the Pepsi trademark in order to dissociate from a famous trademark of 6/28/1887). Follow your trademark with the ™ superscript (^TM if your browser didn't show that correctly) to let it be known that you are claiming a common-law trademark. Yes, this is 100% legal, you don't have to get permission from anybody. (But you are expected to have done your searching first to be sure you're not trampling on someone else's property whether they've registered, staked a ^TM claim, or are just using it.) If you are using your trademark to identify a service you could alternatively use a superscript SM which stands for Service Mark.

Still, start to finish, legal help for a trademark should cost less than $1,000 plus the $325 (subject to change) application fee.

Do you know what sildenafil citrate is? Probably not. Do you know what Viagra is? Probably yes. They are the same thing. The first is the generic name of the drug and the second is the trademark for the drug by Pfizer, the exclusive manufacturer until the patent runs out (or until they license other manufacturers to make it).

Do you need two names for your product? Maybe. If your product is truly new, you probably should find a generic way to describe it so that your competitors (either now or after your patent expires) can use it to describe similar products. Then you should also invent a trademarkable name that you can use to identify your product by name.

You will need to be very careful to protect the trademarkable name and to never use (or let others use) it as a generic name. If you fail to protect it, it will become generic and you will no longer have the sole right to use it for your product(s). For example, "escalator" used to be a trademark of Houghton Elevator Company but has now become a generic name because they failed to protect it.

The details of getting a trademark are pretty straightforward. You can even read the Trademark Manual of Examining Procedure (TMEP) at www.uspto.gov/web/offices/tac/tmep. The catch is selecting and getting a good trademark that isn't already taken and that the Patent and Trademark Office will register...then doing it again for foreign countries (if you wish) and hoping that your choice in the U.S. isn't offensive somewhere else. Incidentally, the general rule for having priority on a foreign trademark application effectively be the same date as your US trademark application filing is that you MUST file your foreign applications within 6 months of your US filing. (Also be aware that there ARE "professional" trademark registerer's in many countries who purloin your trademark, register it in their--or other--countries before you get there and wait to sell it to you for a high price if you choose to try to use it in such countries.)

Symbols

Trademarks can include color and even sounds and smells though the latter 2 are difficult to implement from a consumer perception/acceptance point of view. Trademarks can be symbols or illustrations as well as words but the most valuable ones are probably words. You can say words and type them into documents but how would you say , for example, and distinguish it from or and would everybody be able to include those symbols in a document? (Whatever happened to that guy formerly known as Prince? Oh, yeah, he's known as Prince again.)

Symbols also must not be so generic that they preclude competition in an industry. A drawing of an open brown cardboard box, for example, would not be registerable as a trademark for a cardboard box manufacturer because doing so might preclude other such manufacturers from publishing catalogs showing illustrations of their own wares. It might be registerable as a trademark for a jewelry item but I'm not sure it would become a valuable trademark.

Limitations

There are, of course, some significant limitations to word trademarks too. The most basic thing to remember is that you register a trademark for a specific class or set of classes of products or services (you have to pay for each class you choose to include). In theory, at least, you could register COKE (the most recognized trademark in the world) for a class that The Coca-Cola Company has not registered it for. They have registered for about a dozen classes. In fact, out of 29 registrations including the word COKE there are 13 that do not belong to The Coca-Cola Company. Of course, being theoretically able to do something and being willing to argue against any opposition a well-funded giant might put in your way are two different things. The main ground they would have to argue against you on would probably be if your use of COKE "falsely suggested a connection" with them.

The USPTO, and the law, recognize essentially 4 levels on what is called the Distinctiveness/Descriptiveness Continuum. The first is "fanciful or arbitrary" and would include made-up words such as Pepsi and Kodak or words like Apple for computers. The second level is "suggestive" words such as Sno-Rake but you can easily get into trouble here because USPTO and court decisions have no clear rules.

Quick-Print and Bug Mist have been categorized at the next level which is "merely descriptive" and therefore could not be registered. If you can show 5 years of exclusive use (highly improbable for your new invention) and "recognition in the public's mind" of your trademark, you MAY be able to register "merely descriptive" words as having "acquired distinctiveness." The last level is "generic" words, such as "car" or "automobile," which cannot be registered, period (at least for their particular class).

There are also other special rules such as Surnames and deceptive, immoral, scandalous, and disparaging words (or designs) are not registerable.

Research Your Trademark

So, after hours of thought and doodling you come up with the perfect fanciful or arbitrary word or words that you want to represent your invention in the minds of the public for all time. Or you come up with an exceptional suggestive word or phrase that the public is sure to understand but which is not merely descriptive or generic. Now what. First you research it to see if it is available. Be forewarned, this can be discouraging because you will often find you're too late. Some other @$&*&%# genius is ahead of you.

The first place to search is the USPTO Trademark Acceptable Identification of Goods and Services Manual online at www.uspto.gov/web/offices/tac/doc/gsmanual. Try searching a one word descriptor first (e.g., jewelry) and see if that gives you enough hits to clearly find your three-digit class number. If it doesn't then figure out other words or search strategies. Worst case is you have to retrieve about 600K of classification listings and read them. Next go to the Trademark database found at http://www.uspto.gov/trademarks/ and click the Trademark Search (or TESS) link.

Search your trademark word or words in the basic search option first but if you need to, feel free to graduate to the more exotic search options. Sometimes it's best to do one word at a time but that can also give you an overwhelming list to wade through. Read through the list deciding which might conflict with yours and looking at them to see if they are for your class. If you complete that with no realistic conflicts, try the Canadian PTO site cipo.ic.gc.ca and do the same.

If you want to you can also search the web for trademark offices and bounce to other trademark search sites in different countries. Everywhere you go, if you find something that you think MIGHT conflict, print it out.

If you still haven't found any mark you are certain is a problem go to an Internet Yellow Pages or businesses directory for the U.S. and search for your word or words in company names. These sites seem to disappear all the time but try this one www.yellowpages.com, it is not the only one and I recently did some experimenting and concluded it DOES NOT provide true complete U.S. coverage. Be sure you use one that allows nationwide searching; some only allow single state and some (like GTE) seem to vary it erratically. Again try one word at a time then try a combination of your proposed trademark words to be sure you are getting reasonable results. And again print out any near hits.

Do the same for Canada (www.yp.ca) and wherever else you wish. I found a worldwide phone directory once and tried a few searches that I had done in the U.S. and Canada but I was quite disappointed with the result so I didn't keep track of the site.

The caveat is use a trusted source--and then try a couple of other backup sources too. Someday the government will probably mandate instant and accurate phone database maintenance but until then the phone companies will want to play games with the information. If you detest their "monopolistic" behavior, remember that when you get your "patent monopoly" and want customers to genuinely like you and your product so they will buy again and again and recommend you to all their friends.

Still online you can use www.namedroppers.com/, Register.com (www.register.com) or Network Solutions, Inc. (www.networksolutions.com) to check if your desired trademark or company name is already registered as a web domain name. The first one of those gives you the most flexibility. You can also do an Internet search for "domain name registration" (without the quotes) and find a number of sites that will accomplish the search; some allow multiple simultaneous searches. If you choose to register a domain name be very careful about who you use or they will soak you (perhaps fraudulently) for extra fees beyond the registration fee.

Unfortunately, the computerniks responsible for the Internet domain addresses are not (yet) using the full power of computers intelligently enough. It should be possible for someone looking for a domain name to do a string search across all worldwide domain names to be sure they are selecting one that is not readily confusable. Alas, that is not yet possible but you can use the next best thing at www.namedroppers.com/ to search the basic US top level domains (.com, .org, etc.).

There is also an ongoing debate at the World Intellectual Property Organization regarding what the rules should be on registration of similar domain names. For example, if you wanted to, should you be able to register kodak.net or kodak.uk and sort of masquerade as part of the Eastman Kodak Company? Should the site www.uspto.com, which is currently a "legitimate" site, be allowed to grab accidental accesses intended for the USPTO's ".gov" site? I, personally, wouldn't feel comfortable with any "intellectual property" attorney that associated themselves with such a site but you might see their domain name as a cute piece of intellectual work.

For the last stop in your own trademark search try the book Brands and Their Companies by Gale Research. You'll probably find the book at most large libraries with a decent business collection. Or you can try your luck online at the www.dialog.com or www.gale.com Internet sites. Both of these are pay sites and you'll probably have the easiest time getting in at Dialog.

If your choice for trademark is still "in the clear" there are still no guarantees because there could be a conflict with state, other foreign, or common law trademarks and even U.S. inactive applications and registrations. If you found some possible conflicts you might want to talk them over with your attorney and see if they are willing to guess at the probability of trouble.

Other ways to avoid trouble are to start over as many times as necessary to find a "clean" trademark or to contact the conflicting holder (if there is only 1) and see if you can work something out. If they are not immediately on a win-win wavelength you should probably back out and start again with a different potential trademark.

When you finally get to the point of proceeding with your trademark you'll probably want Thomson Reuters to do a thorough U.S. (and perhaps international) search. You can contact them directly at http://trademarks.thomsonreuters.com/ or you can do it through your attorney. If you wander through their site you will figure out that some things you can do on your own through Internet sources. For the $380.00 (U.S. search only) that I spent on a Thomson & Thomson (their former name) search I know I could not beat their thoroughness or expertise. You will also want your attorney to review the document you get back and give you an opinion on any possible conflicts.

Register Your Trademark

If everything still looks clean (or the risk appears acceptably low enough) you can follow the instructions at the USPTO site or have your attorney do the work. It will be more expensive but less nerve wracking to have your attorney do the paperwork.

Keep in mind that for a trademark to be fully registered in the U.S. it must be put "in use," so if you believe your own searches are good enough you do not need to spend money on Thomson Reuters or your attorney until after you have proven your product will sell and you reach a full GO decision. Even then the Thomson Reuters search (or an equivalent one by another vendor) is not mandatory--if nothing is found, it just increases your confidence that no one will object to your trademark after you file a formal application.

Remember, initially you've only been using your trademark with the common-law ™ (^TM) after it. You can still change it easily before larger scale marketing takes place. The catch, of course (Why must there always be a catch?), is that if you don't apply for your trademark immediately, someone else may beat you to applying for the trademark and the USPTO may register it to them despite your objections and even despite evidence that you put it in use first. There are no guarantees, but the safest route, if you can afford it, is to apply with an "intent to use" application before you put the trademark in use, then to pay the extra fees when you actually do put it in use. Still, I think I'll take my chances and start using my trademark first (with a "™" (^TM)) then pay only once after I've got it in use.

The odds of theft are low (and thieves are usually easy to defeat in the long run) and the chances of another genius coming up with your trademark idea in your minimally protected 6-12 months of development or test marketing are usually slim.

Only after you have filed your formal trademark application and after it has gone through the application process and you have received notice that it has been "registered" can you use the ® (r-in-a-circle) after your trademark. In the U.S. the process generally takes 8 months to 2 years.

If you register your trademark in another country and they also use the ® (r-in-a-circle) symbol then it is legal to sell your product so marked in the U.S. but your U.S. trademark rights are NOT protected. I can think of no valid reason not to do the U.S. paperwork. A possibly "valid" reason to try to skate by with a foreign registration even if your mark is turned down by the U.S. as "merely descriptive" is that you can p-o-s-s-i-b-l-y later register it as having attained "distinctiveness." At best, though, this will be a 10 year game you'll be playing (5 years to "acquire distinctiveness" and 5 to NOT lose to a challenge) and you will need the paid services of an attorney to play it. Other countries may have different registration procedures and notification marks than the U.S. so get help for international products.