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Product Trademarks
from: Mikki Barry
So, you've just come up with a snappy product name and you've decided you want to trademark it. What should you do next? Is it really as easy as the website at the US Patent and Trademark Office says it is? Can I really do it without a trademark lawyer? These and other questions will be answered in this article.
Once you come up with your product name, you must first find out whether or not that name is already being used for the type of product or service that you wish to use it for. You can do this by doing a web search for the name, searching it through the US Patent and Trademark Office website to see if it's been registered or applied for, or by contracting with a special search company who also check through telephone listings, company names, and has further resources available than either of the previous options. If it's already being used, you will likely have to consult a trademark attorney to find out whether or not your use is different enough from the one already in use, to justify spending your money on trying to promote a name that is going to have to be changed later.
Let's say you can't find any other uses of the name out there. Does this mean you are home free? Well, not quite. If the name you have chosen is merely "descriptive" of the product, such as "Red Rubber Ball" for a rubber ball toy, or "Meaty Dog Food" for a dog food made of meat, it might be great for the consumer, but it is not necessarily a name that the US Patent and Trademark Office will accept as a trademark. A name that is "merely descriptive" is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really should consult a trademark attorney regarding how best to proceed in those cases.
If your product or service name is not already being used, and is not descriptive, what then? Well, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your "common law" trademark rights, or, if you are only going to be using the name locally you COULD go after a state trademark (check with your particular state for details), or you could then proceed with national trademark registration.
Your "common law" trademark rights are good, and you CAN sue someone for infringement if they were to copy your name for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over the way starts using your product name for a similar product? It's rather difficult to limit your "territory" in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier. (Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. I positively recommend a qualified trademark attorney for international registrations.)
If you decide to go for a national mark, and wish to try to apply on your own, you can go to the US Patent and Trademark Office website at www.uspto.gov and go through the entire application online. In some cases, where the name is very distinctive, and the product is easy to describe and fits neatly into one of the classes for trademarks that you can find on the website, and you can easily send a "specimen" showing that the name is in use in the way you say it is in use, your registration may go through without a hitch and you would receive a registration in approximately 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.
Unfortunately, it is not always the case that your application for trademark registration goes through quite this easily. Oftentimes, you will receive what is called an "Office Action" from a Trademark Examiner in the US Patent and Trademark Office asking you to clarify something, rewrite your statement of use, submit a different sample, or asking for more information. Or, your name may be "published for opposition" (a required step in the process) and someone who you didn't find in previous searches turns up to "oppose" your registration. These are cases where you will most likely need the services of a qualified trademark attorney to assist you.
Once you have submitted your application, an attorney can help you with many of the changes that might have to be made to achieve registration status. However, there are mine fields and pitfalls associated here as well. It is entirely possible that you may have made a "fatal error" in the application, and it must all be started over again. If you don't find this out until your first office action, you may have wasted six months or more of time, AND your entire filing fee, just to have to start over again with a lawyer's help. If the problems come up at the time of publication for opposition, this is the point where you're almost entirely through the process. Starting over at this point would likely cost at least a year's worth of effort.
In summary, your product name can be protected either by common law trademark, state trademark, or national trademark. Both common law trademarks and state trademark registrations have serious limitations, but are available. For national registrations via the US Patent and Trademark Office, you CAN do them yourself, but be aware of the pitfalls and possible difficulties involved. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and will probably save you money in the long run.
About the author:
Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see www.mikkibarry.comThis article is not meant to be legal advice.
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