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Federal Trademarks


#1

I have a question about registering my business name with the U.S.
Patent and Trademark Office. How many of us are doing this? It
seems like such a prohibitive process. My name is successfully
registered with my home state, Arizona. I will be selling primarily
through craft shows (including out of state) and a web site.

It takes anywhere from 6-13 months to get a response from the
government and costs over $300. I fear that I’ll start an intensive
marketing program only to find out a year later that I have to stop
using my business name because someone else registered with it. If
I understand correctly, I can pay for a service (over $500) to
complete a preliminary search for me to see if the name is being
used. However it seems to me this is no guarantee because someone
else may be filing for the same name just a few months ahead of me.

Any thoughts?

Thanks in advance,
Diana


#2

To be on the safe side I retained a patent attorney for my
trademark. One thing that I learned is that before a trademark can
be registered, one must submit proof that it is already being used.
From this I infer that there is a difference in meaning between a
"trademark" and a “registered trademark.” Registered trademark
would be a subset of trademark.

I took my preferred trademark rendering to a commercial0 artist for
fine tuning. The artist added a bit of fine detail that I advised
him would be hard for the stamp maker to duplicate. After all, he
was rendering a drawing about five inches tall that had to be reduce
to less than a sixteenth of an inch. I let the artist prevail with
his rendering, submitted the artists rendering to the attorney, and
sent a copy to a stamp maker to have a stamp made. I began using
the stamp at the advice of the attorney.

A year and $1,000.00 or so later the trademark office denied my
trademark because the photograph of the stamp mark did not closely
enough resemble the artists rendering. The attorney advised me to
spend another $1,000 with his firm and to start over. I suppose I
would have succeeded the first time had I waited for my stamp and
submitted a photo of the stamp with my original application rather
than the artist’s rendering.

The question is not whether I look like a fool…the question is how
much of a fool do I look like…I now engrave my name on every
piece.

Howard Woods Feeling somewhat foolish in the beautiful foothills near
Eagle Idaho

PS…Presently there are a dozen forsithias blooming bright yellow
in the yard. The six along the driveway have a carpet of bright
blue grape hycinths between them. Others are near the red blooming
quice. Clusters of red miranda tulips and white narcissis bloom
everywhere. A carpet of heather along the street followed by 6
service berries in full bloom greet passers by. Mounds of perinnial
white candy tuft here and there will soon be joined by mounds of
creeping phlox. Cherry trees bloom along the other fork of the
driveway. White crabapples and eastern redbud bloom in the back
yard. This is just the beginning…a little later this spring I
will count over 60 varities of flowers all blooming at the same
time. For me, jewelry is about beauty. So is the garden…I am a
winter jewelry maker.

H. Woods 22k summer gardener


#3

Thanks for the response to my original question. I want to clarify
that my trademark will simply be my tradename, no imagery/symbols
involved aside from the printed business name itself. Again, I will
be traveling to craft fairs out of state and will operate a web
site. I know it’s a choice whether to apply for the federal
trademark (tradename), I’m curious how often Orchidians under my
circumstances go through with the whole bothersome and expensive
federal process. When they do bother, do they typically pay for the
preliminary name search. I’d love to avoid it, but I’m thinking
maybe I shouldn’t. Thoughts?

Diana


#4

Diana,

The federal trademarking process here in the U.S. is somewhat
complicated and definitely frustrating. I am NOT a trademark lawyer,
but did have some experience with the process involved in a former
corporate job.

Basically, you need to satisfy certain conditions:

  1. The name chosen cannot consist of a description of your goods –
    for example, “gold jewelry” is not trademark-able. Likewise, a
    geographic appendage doesn’t help – “New York Jewelry” is
    unacceptable. If you choose an acronym (like DJ for Diana’s
    Jewelry), it can never be spelled out once it becomes trademarked.
    It must always just be represented as “DJ” (never as Diana’s
    Jewelry).

  2. The name or mark chosen must NOT be in conflict with any other
    registered or pending mark or name – they look for “potential for
    confusion” as the test in this one. The principal factors are 1.
    Similarity of the mark or name and 2. The commercial relationship
    between the goods/services listed in your application. So, while
    someone else may have registered a stylized “DJ” intertwined as a
    logo for their disc jockey business, it might be deemed far enough
    commercially from your jewelry business to pass inspection –
    particularly if your mark is very different in appearance. BUT –
    the judge of that similarity and potential for confusion is the USPTO
    attorney reviewing your case.

You can (and SHOULD) do a search for similar marks and names prior
to submitting your application. You can do it yourself online at
http://tess2.uspto.gov/bin/gate.exe?f=login&p_lang=english&p_d=trmk
Or, you can also hire a firm to do a search.

  1. You should apply for registration as soon as you begin using the
    mark – BUT you cannot receive registered trademark status (the r in
    the little circle), until you have actually used the trademark in
    commerce for a period of time. You can apply based on “intent to
    use,” but then you need to re-file once it is approved and you start
    actually using it (you have 6 months in which to start using it and
    show proof of use). You must be able to show printed materials (and
    photo evidence of its use on goods) to support this claim. During
    that period, you should mark all instances of usage of the trademark
    with the designator TM (in a little circle, or just superscripted,
    makes no difference). The TM should be noted on the first instance
    in TEXT in a book or pamphlet or brochure, and at the first mention
    on each web page. An accompanying notice should be included on the
    copyright page of the book/pamphlet/web page or as a footnote: DJ
    is a trademark of Diana’s Jewelry Corporation. All Rights Reserved.
    It is only required that you use the mark itself on physical goods
    like jewelry.

  2. During that pending period, others may, indeed, use your
    trademark (you do not have exclusive legal rights to it). However,
    if they try to register it, your pending application will flag it in
    the USPTO database, and they will be notified that it cannot ever be
    a registered mark for them. If it comes to your attention, you
    should challenge their use and notify them that you will be
    registering it as of the date that your 2 years is up. As of that
    date, if you receive registry, they must cease and desist with their
    use of it, or you have legal recourse to force them to do so. Most
    businesses will gladly stop using it as soon as they are notified –
    there is no benefit to them since they know they will have to stop
    within that roughly 2-year timeframe it will take for you to receive
    approval.

There is a wealth of “from the horse’s mouth” at:

You can file your own application online, and you do NOT have to be
represented by an attorney.

NOW to your other question – should you do it???

Well, there are definitely pros and cons.

  1. Pro: You then “own” the name and no one else can register it,
    thereby forcing you to change your name.

  2. Pro: The process establishes a certain “legitimacy” in the
    business, and becomes a trademark with independent value (if you
    build the value into the business), which can in some cases be
    calculated into the valuation of your business in case of its sale.

  3. Con: It’s time-consuming and can be expensive, especially if
    you hire someone else to do it.

  4. Con: It may not really be necessary, depending on the scope of
    your business. If you are doing business within a fairly specific
    geographic region, you’re a small business, or you have products that
    wouldn’t lend themselves to patenting (no one is out there trying to
    duplicate them, they aren’t the newest mousetrap innovation), then
    it’s probably not worth it.

I hope this helps shed a little light on the issue. As I said, I’m
not a patent/trademark attorney, so consulting a professional may be
a really good idea. And reading up on the publications cited above
really wouldn’t hurt, either, even if you’re hiring a professional to
do it – it always helps to be an educated consumer!

Good luck,

Karen Goeller
kgoeller@nolimitations.com


Handcrafted and Unique Artisan Jewelry


#5
    I have a question about registering my business name with the
U.S. Patent and Trademark Office.  How many of us are doing this? 
It 

You can’t register a “business name” with the USPTO, you can
register a trademark. If you happen to use your business name as a
trademark then you could register that name as a trademark but it
would still be a trademark registration and not a business name
registration. I suspect you’ve only registered your business name as
a business name in Arizona, and if Arizona, like most states, also
registers statewide trademarks you probably have NOT done that—they
are different registrations. And Arizona’s “registration” of a
trademark has 0 weight at the federal level and DOES NOT permit you
to use the r-in-a-circle registered trademark symbol, only a USPTO
trademark registration (or foreign registrations using the same
r-in-a-circle—but that won’t excuse any liability if you’re sued
and lose) allows that. You can, however, without any registration
whatsoever use the TM symbol (often done as a superscript) as a
common law claim to your trademark.

See my www.idearights.com web site for more (guess I need to add
something about company names since that question surfaces a lot).
The trademark page there tells you how you can do your own research
first and once you’ve completed that that you should pay for a
www.thomson-thomson.com search before you get to the point of
actually starting to pay an attorney to assist with your
registration. You can also file your registration on-line at the
USPTO web site but be certain you understand the correct class and
how to properly describe your goods or you’ll spend twice as much
getting an attorney to sort it out and correct any blunders (or,
often, start over). (Also be aware marking goods with the
r-in-a-circle that are NOT entitled to it under your registration
carries criminal penalties, normally only a fine, but it can be
levied for EACH marking instance.)

Always remember, the overriding criteria for trademark rejection is
"likelihood of confusion" in the appropriate consumers mind with
similar marks for similar goods anywhere in the US or its
territories.

James E. White
Inventor, Marketer, and Author of "Will It Sell?


#6

It isn’t that hard to find if you are using a name that is already
Federally trademarked. Go to www.uspto.gov & look for your name. It
will take a little while to figure out their system but do it & save
yourself the $500. While you are at it you should look at www.ftc.gov
& see what the laws are in the US as it pertains to jewelry.
Registering your name & stamping your goods, particularly if precious
metals has some very strict laws in this country & " I didn’t know
that" doesn’t go too far if you are in violation of any laws.

You could spend approximately $100 a year & join Elly Rosen’s AIN
group which covers these subjects very thoroughly He’s a lot cheaper
than a consultant or lawyer & is helpful also. If anyone is
interested in learning about US law I’ll look up his site so you can
email him.

Scott


#7

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.
(http://tess2.uspto.gov/bin/gate.exe?f=tess&state=lodb7n.1.1) 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 ® 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


#8

Why register a trademark?

Well, in the U.S., if you’re marking your jewelry with metals
content (14k, 18k, sterling, etc.), and you’re crossing state lines,
you’re required by federal law to stamp your piece with a federally
registered trademark, as well as the metals mark. That law is more
often honored in the breach than in the observance, but that’s what’s
required to legally stamp precious metal content on jewelry.

I will say that in 10 years, I’ve never seen a case brought against
a jeweler who marked the correct metals content (no underkarating)
but didn’t use a registered trademark. (I’m told the law doesn’t even
provide for penalties in such a case.) That doesn’t mean it’s
impossible for such a thing to happen, just that I’ve never seen it.
You can all draw your own conclusions on the advisability of
following federal law in this instance.

Of course, as others have attested, there are other reasons to
consider registering a trademark as well. When taken all together, it
may well make registering a trademark more appealing.

Suzanne

Suzanne Wade
Writer/Editor
Phone: (508) 339-7366
Fax: (928) 563-8255
@Suzanne_Wade1
http://www.rswade.net


#9

Everyone…yesterday when I replied to Diana’s trademark questions,
the firs t paragraph of my message was omitted and Orchid seemed to
reject any re-send of the message. I won’t bore you by including the
story about the expensi ve lawyer etc again. Here is the first
paragraph:

… trademarks are a bit of a hot issue with me. I have read 16 CFR
23 an d can find nothing to indicate that a "registered trademark is
required in conjunction with quality marks. In fact 16 CFR 23.9(b)
Note 2 quotes the Statute (National Stamping Act 15 USC 297) as
follows: “…which indicate s or purports to indicate that such
article is made in whole or in part of gol d or silver or an alloy of
either metal shall apply to the article the trademark or name of such
person.” If anyone out there can find a US citation indicating
anything different than this, I would appreciate having it.

Howard Woods
In the beautiful foothills near Eagle Idaho


#10

Amanda, Thank you for your clear & concise on trademarks.
You have provided very useful to all of us. Joel Schwalb
@Joel_Schwalb www.schwalbstudio.com


#11

The National Gold and Silver Stamping Act (15 USC 297(b)) states,

Whenever any person, firm, corportation, or association, being a
manufacturer or dealer subject to section 294 of this title – (1)
applies or causes to be applied to any article of merchandise
intended for sale … to consumers in any State, by stampign,
branding, engraving, or otherwise, any quality mark or stamp
indicating or purporting to indiate that such article is made in
whole or in part of gold or silver or of an alloy of either such
metal …[section applying the law to those who import such
merchandise, as well] … Shall apply or cause to be applied to that
article a trademark of such persons, which has been duly registered
or applied for registration under the laws of the United States
within thirty days after an article bearing the trademark is placed
in commerce or imported not the United States, or the name of such
person.

So I guess your full name would also work. (I’d forgotten that bit
of the legalese, trailing at the end there. Thanks for making me look
it up and reminding me!)

Suzanne

Suzanne Wade
Writer/Editor
Phone: (508) 339-7366
Fax: (928) 563-8255
@Suzanne_Wade1
http://www.rswade.net


#12

Everyone has been so generous with their expertise, thank you. Let’s
imagine I decide to get the trademark. Since a lot of my necklaces
are made up of beadwork, would this mean I would Have To (for
example) attach a silver tag with an inscription of my 3 word long
business name? And the same for earrings? I have seen this
occasionally with necklaces, but not often. Since I haven’t often
seen this, is it safe to assume that most people don’t opt for the
trademark? The reason I am considering the federal trademark is that
the Arizona Secretary of State highly recommends this for anyone who
registers a tradename with them.

Yours, Diana


#13

The thread on trademarks jogged my memory about renewing the
trademark so I pulled my registration. Between the fifth and sixth
year after issue you have to file a document attesting to continued
use. The trademark expires after 10 years if you don’t pay a fee and
renew. Donna in VA