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- Get Started Now – Simple Steps to
Create and Protect Your Trademarks
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- By John M. Huff, President
- Trademark Partners
This article provides a
brief overview of the trademark process with an emphasis on
strategies that work for small business owners and entrepreneurs. It
was written in common language with an effort to avoid “legalese.”
At certain places I refer to Trademark Partners™ research and
filing services. Before we begin, you may wish to read a list of
commonly used trademark words and definitions.
To make it easier to follow, the word product is used to refer to
both products and services.
The Trademark Process
This article will address
the basic steps of an effective trademark process, and how
Trademark Partners™ services fulfill certain key objectives
during this process.
A summary of the steps of
the trademark process are as follows:
1. Create an effective
and protectible trademark,
2. Perform a thorough
check of the mark’s availability by searching for conflicts with
existing marks,
3. Apply for federal
(US) trademark registration,
4. Continue protecting
the trademark with regular conflict checks,
5. Challenge
infringements promptly so as to avoid “tarnishment” by association
with objectionable products or practices, or loss of exclusive
rights due to generic uses of the brand name. Examples of names
that used to be exclusive trademarks and became generic include
aspirin, cellophane, spandex, and escalator.
Jump
ahead to sections of this article here:
What is a Trademark?
First of all, many who
visit our website may not know exactly what a trademark is. A
trademark is a name, logo, or combination of the two that is used to
identify a product in the marketplace. The name component of the
mark is synonymous with brand name, or simply, brand.
Trademarks differ from
other types of “Intellectual Property,” such as:
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artistic and written
works protected by copyright
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inventions and product
designs protected by patent, and,
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proprietary information
protected by Trade Secret law.
A good way to remember the
distinction is that a trademark is the brand name / logo of products
that may have their design protected by patent, their content
(books, software, etc.) protected by copyright, or their
manufacturing process or ingredients protected by Trade Secret laws.
What is the Business
Value of a Trademark?
The value of an effective
trademark is that it forms the connection between consumers and
trusted providers. As the product and brand builds a positive
reputation, the trademark becomes more valuable. As people
increasingly seek to create their unique style, a popular trademark
can come to represent more than just a product. It can become a bold
statement about status or lifestyle, expressing “This is Who I Am.”
For the companies privileged enough to attain this position, it can
be very rewarding.
Trademarks Create
Opportunities and Challenges for Small Business Owners
Another reason that more
small businesses are seeking trademark protection is that the cost
of entering new markets has dropped considerably as a result of new
technology including the Internet. These tools bring new opportunity
for growth, and more financial reasons to protect your marks. They
also bring new opportunity for competitors in distant places to
begin using similar or identical marks in your area.
Small business owners who
recognize these new opportunities and challenges are seeking options
to protect their marks. Rather than go it alone or start with a law
firm, they are using a combination of the do-it-yourself approach
and the professional assistance of a reputable research firm.
Trademark Partners has been helping fill this need for several
years, focusing on serving small businesses and
entrepreneurs.
Make Your Mark
In order to protect a
trademark, you must first create a trademark. There is
much written on the subject of selecting the right trademark, from a
legal standpoint as well as a marketing perspective. The general
rule is that coined or fanciful names like Kodak®
(photographic supplies), and arbitrary names like Apple®
(computers), make the strongest trademarks. However, they are also
the hardest to market and create a meaningful impression on
consumers because they don’t readily communicate the nature of the
products. The next best option, especially suited for small
businesses, is to create a suggestive mark. A suggestive mark relies
on the consumer’s imagination to convey the nature of the product.
Suggestive marks use existing words or parts of words creatively,
like Coppertone® to suggest the benefit of using this brand
of tanning lotion. Other examples include Chicken of the
Sea® and Roach Motel®.
The trademarks that are
hardest to register and defend are marks that use generic terms to
refer to the product. They can still be registered after prolonged
use based on the claim that they achieved a secondary (distinctive)
meaning over time. However, this practice essentially negates one of
the fundamental benefits of a trademark: forming a strong bond with
consumers. Far better for small businesses to invest in creating and
protecting a distinctive mark from the beginning, and spend the
energy on developing their product and service instead of defending
a generic mark. Generic words do nothing to
differentiate your product and business from others or motivate
prospects to call.
If developing a trademark
has you stumped, or you need a second opinion on your mark, Trademark Partners offers a Branding Session &
Creative Naming Package. This service helps you create a
distinctive mark that communicates your
unique strengths to your target audience. After the parameters are
established, we create several proposed marks for your review. By
using an objective outside source, you are guaranteed a fresh
perspective and new options. Our trademark research skills
contribute to creating a protectible mark; and we even screen
potential marks against the federal database to weed out obvious
conflicts.
Search for Conflicts
Once a trademark has
been selected you are ready to start the
trademark process. At Trademark Partners we start with a
comprehensive search for conflicts with existing marks, called the
Trademark Supersearch™ service. This search checks registered
and pending trademarks at the federal and state level (for all 50
States), and unregistered “common law” marks in hundreds of sources
including business entity and “dba” filings in each State, brand and
product listings, industry and trade journals, and newspapers. We
have one of the most extensive common-law searches available, which
is often where potential conflicts are found. To learn more about
the importance of a thorough search, and how you can start with
basic searches on your own, order our
Free
Special Report “Small Businesses
with BIG NAMES: Protect Your Trademarks and Reap the Rewards.”
When the Trademark
Supersearch™ service is complete, if you have a graphic design /
logo element in your trademark we can perform a Federal Logo
Search to find conflicts with other design marks. We check for
logo conflicts with designs filed with the U.S. Trademark Office based on
the principal elements of your logo. This search often produces over a
thousand individual designs to be individually reviewed. When completed, a report
is created to document the search strategy and results.
Apply for Federal
Registration
When the name and logo searches are complete, you are ready to proceed to the
application for federal trademark registration. Trademark Partners
provides an Application Service to help you prepare and file
the application. In this process, we email a questionnaire that
requests basic facts about your mark and products, and we conduct
research on other marks that were registered for similar products.
We return proposed wording for the application for your final
approval. We then file the application electronically for you, or
walk you through filing it yourself. At the time of filing, a filing
fee of $325 is due to the Trademark Office for each
Class of
Goods and Services being claimed.
Application Timeline
After filing the
application electronically, your case will be assigned a Serial No.
by the PTO within approximately 25 days. You can then track the
status and progress of the application. Within six months of the
filing, you should receive an approval for publication, or an
“Office Action” letter asking for more information or revision to
your application. Approximately three months from the date the
Office Action is addressed and application is approved, the mark
will be published for opposition. Provided there are no oppositions
filed, in three months you can expect the registration to be issued.
You will then be authorized to use the Registered Trademark ®
symbol. With registration you will be entitled to additional
protections against trademark infringement under federal law.
Safeguard Your Mark
After receiving the
trademark registration, you are expected to monitor for
infringements of your mark, and challenge them promptly. Monitoring
basically means regularly searching for conflicting uses of a
trademark that is identical or similar to yours, and keeping up on
product names used in your industry. To challenge an infringement,
one usually sends a "cease and desist" letter. The letter is even
stronger when sent by an attorney. If the infringement persists, a
lawsuit may be necessary. If it reaches this point, the extent of
your conflict search and your registration of the trademark will
contribute to the strength of your case.
Avoid Conflicts by Following the
Trademark Process
The ultimate
purpose for following the Trademark Process outlined here, in
addition to creating a great trademark that helps promote your
business, is to avoid trademark conflicts before they happen.
Performing a thorough conflict search allows you to avoid infringing
on existing marks as much as possible, and registration provides
public notice of your claim and discourages infringement.
Continue Your Trademark
Education
If you would like to stay
abreast of developments that affect small business trademarks,
subscribe to our FREE E-mail
Newsletter.
This is for our own
announcements and news, and we never share lists with anyone, ever. Also check out our FREE
Trademark Education Library™
service.
We hope you enjoyed this
overview. We are excited about helping small businesses and
entrepreneurs create and protect valuable trademarks. If you are
ready to discuss your current trademark project with one of our
specialists, call 1-888-MARKABLE (1-888-627-5225) or send an email
to:
info@trademarkpartners.com
- Copyright
©2005-2007
Trademark Partners. All rights reserved.
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- This article is for information
purposes only. It is not meant to be legal advice, or replace the
services of an attorney familiar with your individual case and
applicable law.
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- To continue learning about trademarks,
read our FREE REPORT:
Small Businesses with BIG NAMES: Protect
Your Trademarks and Reap the Rewards This exclusive Trademark Partners™ publication will
continue your education on
trademarks by explaining practical tips on how you can
pre-qualify your marks today, even before we conduct the
full search! Ideal for the small business owner and entrepreneur.
Note: The Free Report above includes a printable copy of
this article for you to keep also!
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