John Moss :: Marketing Blog

The importance of trademarking a brand name usually doesn’t become evident until it’s too late and your brand name has been hijacked. Or worse, you are accused of hijacking someone else’s trademark! Most people think trademarking a name is a costly, cumbersome and complicated process that involves a throng of lawyers, but that’s not necessarily the case. While using a lawyer is always advisable, a smart and lucky marketer can do most–if not all–of the legwork himself, which will definitely lead to better results and at least decrease overall legal fees. Here are some pointers and a step-by-step guide to filing a trademark in the US.

Start with a Full Search
Most marketers are eager to jump right into their work. They come up with a great name that highlights the benefits of their product or service, is easy to pronounce and spell, and easy to remember. And they then start using ‘their’ brand name without much research beyond the typical market research beforehand. Or if they do perform a search, it’s limited to a Google search or a search to determine if the URL they want is available. While a trademark isn’t necessary to start using a name, it does provide protection from infringement. If someone else starts using the brand name you have worked hard to build, a trademark provides legal recourse in getting them to cease and desist. But that works both ways; It provides you legal recourse (cease and desist, sue for damages, etc.) if someone else starts using a brand name you worked carefully to build, but it can also bite you in the rear if you start using a brand name (wittingly or unwittingly) that someone else has filed and protected.

If you start using someone else’s trademark name and are forced to halt use and/or use another name, you can find yourself neck deep in legal costs, reputational damage, operational costs to update all your marketing materials and just a general marketing nightmare as you scramble to rebrand. These risks may be manageable, especially if you are considering a new introduction or a small sub-brand, but if you are considering your overall brand, this can be an important consideration. Many companies fail at rebranding even when they have spent a lot of time and money in strategizing and planning, so being forced to quickly rebrand by the seat of your pants most likely isn’t going to end with the best results.

The first step to avoid this is to do a quick search using the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). This free online tool is pretty basic and not all that intuitive the first few times you use it, but after playing with it for a little while, it becomes pretty easy.

You can make your search as broad or as narrow as you want. You can include singular or plural uses of the name (i.e. Coke and Cokes), or look just for “live” registrations (trademarks that are currently protected) or “dead” registrations (names that were once trademarked, but for whatever reason the trademark owner has allowed the trademark to lapse and are now considered “abandoned”). You then insert the term you are searching, and you have the option of limiting your search to trademark owners (if you want to see if a certain person or corporation owns a mark), search by serial number (if you want to verify a mark) or search by term.

You’ll most likely encounter quite a few results/hits, but don’t worry. The next step is to dig through those results and determine which ones are used for a product or service similar to yours and then decide if they are ‘confusingly similar.’ Then, just as a double check, look up those serial numbers in the USPTO’s Trademark Application Registrations Retrieval (TARR) system to make sure the info is correct and get the most current status of the mark. If you did want to use a lawyer, this is the step where he is most useful because you can ask your lawyer to provide a memo or letter stating whether in his opinion the mark is ‘confusingly similar,’ the legal criteria for deciding if infringement has occurred, or if it not. This letter may become useful down the road to thwart a frivolous lawsuit or limit damages if someone is successful in suing you. It shows that you took precautions to avoid infringing on someone’s mark and obtained a legal opinion before proceeding, so your actions will not be deemed an ‘negligent.’ Of course involving a lawyer will cost money and take some amount of time, so I would only focus on the really problematic marks (if any) that may be identified. If too many conflicts arise or you don’t want to involve a lawyer, I would suggest considering a more ‘available’ mark.

Description of Goods and/or Services
Next you will want to write up a good, accurate description of the goods or service that fall under the brand name. Avoid hyperbole and ‘marketing speak,’ and stick to the functional pieces. If you are marketing a software application that does translation, say so. The USPTO isn’t interested that it is the “next-generation translation application that will change the way people from around the globe work, share and communicate.” They are interested in knowing the functional capabilities of the goods or service are they can determine if a similar trademark has been filed. It will also not matter and may even perturb a judge if you find yourself suing (or being sued by) someone for trademark infringement down the road.

Make sure your description is as accurate as possible, but do not be too broad or narrow in your description. If you are too broad, you risk having your application denied because it is not distinguishable enough from other trademarks. And if you are too narrow, you limit your opportunity for growth, enhancements and improvements. For example, if you are developing translation software that you are planning on initially distributing through an iPhone App, a description that simply states “software application for iPhone” isn’t probably the best you can do. There are plenty of software applications for the iPhone out there, and if there is one with a name ‘confusingly similar’ to yours, you will most likely be denied. On the other hand, the iPhone will not always be the ‘hot’ distribution method for your application, and you may want to sell your application/software through other venues: on other phones or PDAs, online, iPad, CDs/DVDs, etc. If you too narrowly limit your description to the current landscape, you may forfeit your brand’s protection as it grows. In the case above, a better description might be something along the lines of “language translation software for use in digital applications, including mobile devices, computers, online and other digital formats.” This is narrow enough to make your goods or service distinguishable from others using the name, while broad enough to cover future growth. The important thing, however, is that the description isn’t intended to make your goods or service 100% different from all your competitors; it could very well be the same. (In fact a good tip is to look at competitors’ trademark applications to see how they describe their product.) Rather the goal is to make it different enough from other products that may share the same name so that the two are not ‘confusingly similar.’ For example, you can use the name “Apple” if you’re marketing pickaxes, but it’s advisable to avoid the name if you are marketing computers.

Trademarked Design or Name/Characters
Next you’ll want to decide if you want to trademark the name, spelled out in ‘standard’ characters (A-Z, etc.) or if you want to trademark a designed logo. You can do both, but just not in the same application. It is much more likely that someone would try to use your brand name than your designed logo, so if you are trying to limit upfront costs, I would suggest filing the character mark first and then filing an application for the logo when it is more financially feasible.

File the Application
Now that you’ve completed all the necessary preparations, it’s time to actually file the application. Luckily this process itself is pretty straightforward and can be done online (you can also do it via mail, but expect it to take longer). The USPTO has yet another acronym for this system, TEAS, which is short for “Trademark Electronic Application System.” From this page you should select “Initial Application Form” and then click on “Trademark/Servicemark Application, Principal Register.” You will then be prompted to choose between the TEAS Form ($325 to file) or the TEAS Plus Form ($275 to file). While the Plus form has a lower cost associated with it, it isn’t as forgiving as the TEAS form and requires you to have done all your homework beforehand. Of course if you haven’t done your homework you really shouldn’t be filing an application unless you have money and time to burn. Regardless, I would advise you to read the descriptions on this page and select the appropriate form for your needs.

After that, it’s a pretty simple process that just requires you fill out some fields about the intended owner of the mark, description of goods/services, etc. You can even pay the filing fee by credit card or by Electronic Fund Transfer (EFT) right there online. At the end of the process you will receive an “immediate serial number,” which you will need for all future correspondence pertaining to that filing.

The USPTO then reviews your application and basically does all the work you already did (checks for conflicting marks, etc.) for itself. Since this is a government-run program, the entire process may take a few months to over a year, but if you did the legwork upfront, you shouldn’t have any surprises. The USPTO attorneys may contact you if they have any questions, but you do have the option of using the mark during this review process. You just won’t be protected and able to sue anyone until the mark is officially approved. If someone else files a similar application during this time, your application will take precedence if you filed first.

Approval
The USPTO will eventually publish your trademark in its “Official Gazette.” There is then a 30-day period when someone who feels they have rights for your trademark can challenge its approval, but again if you did your legwork this is just a formality. The USPTO will continue to review the trademark, but barring any hiccups eventually it will get approved. After your trademark is approved, you will need to periodically send the USPTO examples of the trademark in use, but they will communicate all that when they approve your mark. The important thing to remember is to respond to their requests in a timely fashion. If you fail to maintain your mark, they may deem your mark “abandoned” and you’ll have to start the process all over again.

That’s the trademark process in a nutshell. While it seems like a confusing and cumbersome process, it really involves some simple research and due diligence on your part to make the entire process as smooth as possible. I hope this was helpful. Good luck!

More Information
The United States Patent and Trademark Office, provide some excellent resources for those interested in trademarking a brand, product, service, etc. A good place to start is their page, aptly titled “Where do I start?” at http://www.uspto.gov/trademarks/basics/index.jsp.