Guide to Trademarks


Many of you know about the difficult Trademark battle I experienced this year. I've had a couple people email me to ask how to go about the process, so thought I'd put together another "How To" - and this one is VERY important. If you are using a name that does not include your NAME in it (IE: Emily Ley Paper), you must MUST file a trademark application. If you do not, you are basically telling any one who'd like to use your business name - they can have it. Trademarking protects you and your business from copy-cats.

First, let's take a look at the different type of intellectual property protections :: a Copyright, Trademark and Patent. Read this article written by the US Patent and Trademark Office.

Copyright ($35)
This protects music, literature, articles, etc from being re-used without permission from the creator. (IE: The Beatles songs are all copyrighted).

Trademark ($275)
This protects your business name, tag-line, product name, etc from being used by another company (and thereby causing marketplace confusion with the names). Note: It isn't necessary to Trademark your OWN name (IE: Emily Ley Paper) - you innately own the rights to that name because it includes your own personal name.

Patent ($500 - $1,500, sometimes more)
This protects items and products themselves. For instance, you might patent a fancy toothbrush, so no one else can create that toothbrush.
. . . .

Now, for most of you reading this, you're going to be most concerned with the Trademark process. I cant tell you how important it is to spend that $275. In fact, I made the process easier for me by contacting a representative from the USPTO to manage my applications. His name is Jack Briggs and he can be found here :: 888-250-8786 x86 or jb@USTM.us.com

The process is a long and sometimes crazy one, but it's totally worth it. Jack charges $250 + the $275 filing fee to manage your application throughout the lengthy process. He is fantastic and extremely helpful/knowledgeable about the whole process and how to get through the hurdles that might stand in your way. Your application will likely cost you anywhere from $275 - $600 total.
. . . .

Quick Flowchart ::
  1. Research your name.
  2. Search the TESS System for similar marks.
  3. Hire a Trademark Manager (optional) and file your Trademark Application.
  4. Use the TM symbol.
  5. Wait . . .
  6. Publication for contesting in the Official Trademark Gazette.
  7. Conquer any roadblocks.
  8. REGISTRATION!
Step 1:: Research your name ($10)
Do a search through GoDaddy (if you dont already own your domain) and see if YOURBIZNAME.com is available. If that's not available and a similar one isnt available, revisit the naming process. If you find your domain is available, purchase it and any misspelled versions of your domain as well (this will continue to drive traffic to your site even if someone spells your name wrong). Remember to have GoDaddy help you point your "other domains" to your main one.

Step 2 :: Search the TESS System for similar trademarks or pending apps ($0)
Do a basic search through Google and through the USPTO's TESS system to see if your name is available. You'll be provided with a list of names that are similar or exactly like your name. What's most important is that you're not operating in the same industry as these applications. For instance, Sunshine Studios can operate in the photography industry while Sunshine Studios can also operate in the music video business. Dont be discouraged during this step. Just keep going and do your research.

Step 3a :: Optional - Hire a trademark manager ($525)
If you would like to hire a Trademark Manager (and this isn't a necessity - but nice to have someone in your corner), contact Jack or his USPTO office. He'll help you file your application.

Step 3b :: File your trademark application ($275)
If you've chosen to skip Step 3a, begin filling out your Trademark Application here. There are TWO types of trademark applications - a "mark" and a "stylized mark" If you have a logo that uses special fonts and/or colors, you'll want to file a stylized mark. A regular "mark" is one that consists of only letters and numbers - with no specific font or color attached to it.

Also remember industry classification is key - so pay special attention to your application. When you finished and have paid, submit the application. Visit this site frequently to monitor the progression of your application - have your serial number - from your application confirmation handy.

Step 4 :: Use the "TM" symbol now ($0)
Now that you have a pending trademark application, you are entitled to use the "TM" next to your name. The R with a circle around it is reserved for registered trademarks.

Step 5 :: The waiting game ($0)
This part is not fun. The entire Trademark process can take anywhere (if running smoothly) from 6-12 months. Once your application is received by the USPTO, they will mark it pending and tell you to wait 90 days. You can use the serial number they provide you to constantly monitor the progression of your mark, any approvals or any questions/denials. On the 90th day, your application will be assigned to an examining attorney. If they have any questions, they will contact you or your TM manager for clarification or extra information.

Step 6 :: Official Trademark Gazette ($0)
If you make it through this part, you will be given a date for publication in the Official Trademark Gazette. This gazette is published every Tuesday and allows other TM owners to contest your application (if they feel it is too similar to their own). I was told that 1 out of every 2,000 or so is contested at this point. (My experience = case and point. I was contested here and had to hire an Intellectual Property attorney to handle my roadblock.) Your mark will be published here for 60 days. If it is not contested, you will be approved and assigned a date of registration.

Step 7 :: Any roadblocks here? ($0+)
If you can, don't hesitate to work with an Intellectual Property attorney. The cost between $250-$400 per hour - so they can be pricey. But if you are contested and cannot defend your mark yourself, you will likely lose.

Step 8 :: REGISTERED! ($0)
Once your mark is published for 60 days in the Official Trademark Gazette, you will receive notification of final approval and a date of registration. When your mark is official registered, you will be able to use the R/circle with your logo. A trademark registration is valid for 10 years. If you chose to work with a manager, that person will monitor your mark for you and let you know if A) anyone tries to use it and B) help file your update paperwork throughout the 10 years of registration.

BEST of luck to all who will go down this road. It is WORTH it to protect yourself and your name in the future. If anyone has any questions - please let me know or leave a comment below and I'll answer them for everyone to see. I'm no expert but I've definitely educated myself quite a bit about Trademarks in the past year.

After Step 8 comes the fun part - order new business cards, update your website, etc with your new R/circle next to your logo!

9 comments:

Melissa said...

Question - if you've filed a DBA, can you do all this after? Or do you just play the risk game?

Miss Monogram said...

Emily! This is so great--thanks for posting. Do you think, as a stationer, there is any value in trying to copyright your blog, website or designs?

Ulmer Studios said...

Thanks for sharing this information. We've gotten asked this before and didn't really know what to tell some one b/c we use our name!

Emily Ley said...

Hi guys! Thanks for your sweet comments. As far as the DBA goes :: all a DBA does is records the name you're operating under with your state. It really doesnt provide you much protection. The Trademark however does. Copyrighting a blog/website/designs :: perhaps there's another reader who can answer this better than I can. From what I understand, you can post a copyright disclaimer on your website on your own.

For instance :: c/circle 2009 Emily Ley Paper, All rights reserved

Hope this is helpful!
Emily

owlandbunnyblog said...

this is such great information, thanks for sharing a clear cut step by step!

deb

Amanda @ Ruffled said...

Great post!

I filed my trademark with USPTO last month and it's still pending, but I've heard it was a quick process. Should I be worried? The status of my application says pending review.

My other question is: can I use the TM symbol after filing an application with USPTO even before getting approved?

Emily Ley said...

Hi Amanda! 1) I LOVE your blog! 2) Don't fret. It'll say that for 90 days. On the 90th day it will be assigned to an examining attorney who will say YES, NO or MAYBE (they'll need more info from you if they say MAYBE). Very few get a yes, about 80% (from what I understand) get a maybe. Add a note on your calendar to check your status on the 90th day and you'll see what your answer was. If you get a yes (or a yes after a maybe), your TM will be published for opposition in the Official Gazette. If anyone contests it, you have a bit of a battle. If no one contests it, you're REGISTERED!

And yes - you can use the TM on your logo now! You've applied, so you're pending - that's what the TM stands for. (I notice the TM on other ppls logos - even Google! meaning their's is still even pending).

Best of luck to you!! Emily

Lynn said...

Emily! Thank you so much! If it wasn't for your blog I would have so many unanswered questions floating around in my head! It's basically my "go-to" resources for all my new business questions!

Matt Voges said...

For trademark registration you need to know about your mark uniqueness. Trademark registry office only accepted distinctive mark. So you should contact a trademark search company which will find your mark uniqueness.