Registering a trademark

Jewelry Discussion
1

I’m interested in registering my trademark. I’ve found that I can
register it through my state (Ohio) and through the US government.
Does anyone know if it is necessary to do both? Is one better than
the other? Any help or advice would be much appreciated…the whole
process looks a little foreign. I’m a jeweler not a lawyer,
unfortunately ;).

Thanks Leslie
Leslie Anne Wright Macy

2 
    I'm interested in registering my trademark.  I've found that I
can register it through my state (Ohio) and through the US
government.

Trademark registration with the US government is FAR better than
state registration. It gives you rights across the whole US for your
trademark (think web sales) but only for the specific class and goods
you register it for. I strongly recommend you use a trademark
attorney but before you even spend a nickel on them follow every link
at Inventor Home Trademark Information Access page (a web site of mine) and
read the material. Then do your own trademark searches to be
reasonably sure you won’t be wasting your money on something that is
almost certain to be rejected (or opposed) and only take your final
one to the trademark attorney (look under patent attorneys or
intellectual property attorneys in your phone book). You may also
want to pay $400 or so for a professional search after you’ve found a
trademark you think is okay because once you’ve filed your
application and paid for it and your attorney costs you can’t get
any of that money back if your application is rejected.

James E. White
Inventor, Marketer, and Author of “Will It Sell?
How to Determine If Your Invention Is Profitably Marketable
(Before Wasting Money on a Patent)” www.willitsell.com
Also: www.inventorhome.com and www.idearights.com

3

Hi:

I am both a jeweler and a lawyer.

It is best to apply for a trademark at both the state and federal
level. When someone is looking to apply for a trademark, they must
perform a search to make sure the trademark is unique to them.
Therefore if a search is made only on one level, and another person
is using a trademark similar to yours in Ohio and does a search only
on one level, but not the same one that your trademark is registered
with and the search comes up with nothing, then that person can get
a trademark approval using the same trademark as yourself.

For instance: Say I live in Ohio, I have a trademark that I want to
add to my work, but I plan on only selling my work in Ohio so I only
apply for a trademark in Ohio. What if that same trademark is being
used in Massachusetts, and that Massachusetts company is
distributing world wide, or even just throughout the US. They may
be unbeknownst to me infringing on my mark, or vice versa. They may
have a poor product, and people who see my mark may think it is one
and the same.

I hope this sounds clear.

You can contact me off list if you like.

Patricia Bloom-McDonald, Esq.
508-636-3138

4

Leslie,

I am in the process of registering a trademark. I am using an
attorney in Washington, DC. His rates have beenvery reasonable and
he hasbeen generous with adviceat no extra cost. His name is Erik
Pelton at tm4smallbiz.com.

He would answer your questions at no cost.

Mike Buckner
Creative Engraving

5

Follow up to that last email… the USPTO website is a great place
to go to if you are in the process of naming your business, naming a
collection of work, etc. Their search engine will allow you to
search and see what trademarks are currently registered - although
most attorneys will probably suggest a more extensive (and expensive)
search. Again, not giving any legal advice here, just passing on
some helpful

6

I’m not a lawyer, but did work as a paralegal for 13 years - 6 of
those years in patent, trademark, and copyright law. I’m not giving
any legal advice, but will pass on what was told to our clients.
That is, that if you are going to file - go with the USPTO (US Patent
and Trademark Office). I think the filing fee is still around $325.
Their website is www.uspto.gov. Filing with them will cover you in
every state. Filing with Ohio will only cover you in Ohio. If you
file only in Ohio and someone in California files the same, or
similar trademark with the USPTO - they have the mark in every state
other than Ohio. Of course, you have a “first use” argument and
other legal remedies, but why bother when you can cover yourself by
filing with the USPTO right off the bat. You can actually file
online now, submitting your trademark info by email. It’s considered
filed the date you send it in. Be prepared for a long process - most
trademarks don’t get through the filing process for a minimum of 6
months - most often a year. But you are still safe from the date you
send in your trademark application.

7

Two years ago, I had Metalwerx trademarked. I worked with my lawyer
and the entire process cost me about $1500. I realize that this is
a lot of money, but there has been a couple of instances where
having the trademark was useful. Mine is a Federally Registered
Trademark which gives me the ability to place the R by my name, but
I don’t.

Are you talking about a trademark or a hallmark? I have a personal
hallmark which is a tattoo (but I’m not gonna tell you where).

-karen

M E T A L W E R X
50 Guinan St.
Waltham, MA 02451
Ph. 781/891-3854 Fax 3857
http://www.metalwerx.com/
Jewelry/Metalarts School & Cooperative Studio

8

Hi Leslie, I’m a lurker on the digest. I’m part-time jeweler but my
day job is working for a Patent & Trademark firm. My suggestion
would be to give our firm a call and talk to our Trademark attorney.
Most attorneys do a free consultation and will advise you what is
the better thing to do. The person to talk to is Jeromye Sartain
and you can reach us at 800-747-2836.

Janice Kuhm