You are all in luck because I am also a trademark attorney!
(Necessary caveat: THE FOLLOWING IS INTENDED FOR INFORMATIONAL
PURPOSES ONLY AND DOES NOT CONSTITUTE ADVICE OR CREATE ANY
ATTORNEY-CLIENT RELATIONSHIP. YOUR STATE’S TRADEMARK LAWS WILL
VARY. CONSULT AN ATTORNEY AS NECESSARY. Lather, rinse, repeat.)
OK, sorry, but had to be done.
Now on to the juice.
First, a trademark is different from a trade name. A trade name is
the name you use when doing business-it signifies a business entity.
A trademark, on the other hand, is a designation that you use in
trade to distinguish your goods from all of the other stuff that’s
on the market. So a trade name can become a trademark if and when
you begin using it on your goods (jewelry) as a unique designation
of the source of those goods (you!). You cannot register a trade
name with the United States Patent and Trademark Office (USPTO) that
is not being used as a trademark. However, most states and cites
REQUIRE that you register your business name in order to do business
there. This is totally different from trademark protection and you
should check your local laws on this point.
State and federal law protects trademarks under the theory that
trademarks protect consumers by allowing them to have a sort of
shorthand for the quality of the goods (or services) that are being
sold under that mark. That’s why it’s important that your mark is
distinguishable from others’ marks that are being used on similar
goods; otherwise, consumers would not be able to rely on the
trademarks as an indicator of the source and quality of the goods.
However, you can have a mark that’s identical to someone else’s mark
for totally dissimilar goods or services. For example, you could
use the mark CONFETTI for jewelry even though someone else is using
CONFETTI for party planning services. The consumer protection
rationale is also why it is important to the USPTO that the drawing
of your mark (what you initially submit with the application)
EXACTLY MATCH the specimen of your mark (what you submit showing
that you are using the mark on your goods in commerce). The USPTO
doesn’t want to register a mark that is different from the one that
consumers actually encounter in the marketplace.
Because the only legally cognizable interest in any trademark is
whether consumers can rely on it as an indicator of source and
quality, trademarks are protected based on use in commerce. But the
more distinctive your mark is and the more consumers have come to
know it, the more courts will protect it from infringement because
it really serving its source-indicating purpose. Under common-law
(state judge-made law), trademarks are protectible in the markets in
which they are used. So if you are selling at shows in California,
then you can sue someone who shows up in the same markets using a
“confusingly similar” mark. But you would not be able to sue
someone who is using a similar or even identical mark in a totally
distinct market, UNLESS you have a federal registration. Here is
the major difference between a mark that is just protected under
state law and a (federally) “Registered Trademark”: federal
registration gives you presumptive rights in your mark across the
country, so that you can prevent someone in Alaska from using your
mark even if you’ve never done business out there. One thing that’s
complicated the geographic scope of rights in trademarks, though, is
the the internet: you can now argue that you have WORLDWIDE use of
your mark if you are on the web, because you cannot control who
pulls up your website and where they are geographically situated.
Another noteworthy thing in this respect is that federal trademark
registration requires INTERSTATE (in more than one state) use; this
is done once you are on the web, and the date that your site “goes
live” can be used as the date that your mark is first used in
interstate commerce.
It is important to understand that a federal registration cannot
displace one’s longstanding rights in a local market. So if you
have been using CONFETTI for jewelry in the California market for 20
years, a new federal registration will get presumptive nationwide
rights, but you could still sue them for using the mark in your
California market. As long as you were using it first and
established some consumer recognition, you have “common law” rights
in that mark in that geographic are that no one can take away. BUT
their federal registration will prevent you from expanding into
other markets. That’s one very good reason to register your
mark–it preserves your ability to spread into other markets without
having to worry about trademark infringement.
Now, as to registering your mark. You can do it online on the USPTO
website (http://www.uspto.gov); the filing fee is $335/class of
goods and services. (For jewelry, it’s class 14.) It is important
to make sure that no one else is using a “confusingly similar” mark
with “related goods or services” before you submit your application
because the filing fee is NOT REFUNDABLE. If there is a similar mark
that is already registered, the USPTO will send you an office action
citing the mark as the reason why your mark is not registrable, and
they will keep your money. You can do a preliminary search on the
USPTO website on their TESS database to see if there are similar
marks out there.
(TESS -- Error) You
should also do some web searches to see if similar names are being
used. Get creative here and search for cutsie misspellings and any
variations you can think of.
Generally, if you have a REALLY distinctive mark, you can take the
risk of not having a professional search report done. A really
distinctive mark is either a made-up word or a totally arbitrary
word (a word that has nothing at all to do with your good or
service) or a mark with very original and distinctive design
elements (or, ideally, a combination of all of these). For example,
my jewelry trademark is a very stylized sort of art-deco rendering
of my first initial and last name, which I drew myself. I was very
confident that no one else would have this mark, so I did not have a
professional search done. But if you have a mark with more common
elements, then it is a good idea to either (i) get a new mark (my
suggestion because a stronger mark is almost always better and will
end up costing you much less to register and create much less
liability than a weaker mark), or (ii) hire an attorney and order a
search.
Federal registration is a good idea because it gives you presumptive
nation-wide rights to the mark and it is MUCH easier to win an
infringement case if you’ve got a federal registration. Personally,
I think it’s worth the money, especially if you have a very
distinctive trademark. While we’re on the subject of distinctive
marks, there are a few types of marks that are categorically
unregistrable. You should read the Trademark Manual of Examining
Procedure, Chapter 1200 (especially 1203-1207), for more on this.
It is available at:
http://www.uspto.gov/web/offices/tac/tmep/1200.htm
One last point: you MAY NOT use the registered symbol (R) with your
trademark until you have received a certificate of registration from
the USPTO. Until then, you are free to use TM (for a trademark) or
SM (for a service mark) with your mark. In fact, it is encouraged
because it puts the world on notice that you are claiming rights in
the mark.
I hope this is helpful. Good luck!
Best,
Amanda Linn