How to register a trademark?

You’ve come up with a great name for your product or business and want to make sure no one else is using it. Should you trademark it? Can you register a trademark yourself?

So you’ve just found a viable product name and decided you want to trademark it. What should you do next? Is it as easy as the US Patent and Trademark Office website says? Can you really do it without a trademark lawyer?

Once you’ve come up with your product name, you first need to determine whether the name is already in use for the type of product or service you want to use it for. You can do this by doing a web search for the name, looking it up on the US Patent and Trademark Office website to see if it’s registered or applied for, or contracting with a special search firm that also checks telephone directories for company names. , and has more resources than any of the previous versions.

If it’s already in use, you should probably consult a trademark attorney to determine whether your use is sufficiently different from what’s already in use to justify spending your money trying to advertise the name that should be. changed later.

Let’s say you can’t find another use for the name there. Does this mean you are home free? Well, not so much. If the name you choose is simply “descriptive” of the product, such as “Red Rubber Ball” for a rubber ball toy or “Meat Dog Food” for meat-based dogs, that might be great for the consumer, but it doesn’t have to be. be a name that the US Patent and Trademark Office will accept as a trademark. A name that is “merely descriptive” will not pass and will not qualify for registration. There are other categories of names that are also not subject to registration. However, they are a bit more complicated and you really should consult a trademark lawyer about how to proceed in these cases.

If your product or service name is already unused and not descriptive, then what? Well, at that point you have a number of choices. You can start using the name, spend the necessary money to advertise it, print it on labels, etc., relying on your “common law” trademark rights, or, if you’re only going to use the name locally, you’re good to go. after a state trademark (check with your specific state for details), or you can proceed with a national trademark registration.

Your “common law” trademark rights are fine, and you CAN sue someone for infringement if they copy your name for a similar product, but the legal battle would be much more difficult than if you had a national registration. State registration is pretty cool, but what happens when you cross the border into another state and the guy just down the road starts using your product name for a similar product? It’s pretty hard to limit your “space” in the days of the Internet and easy transportation. Again, a national brand will definitely make your life easier. (Please note that you can also register your mark internationally as your company grows to the extent that you do business overseas. I strongly recommend a qualified trademark attorney for international registrations.)

If you have decided to apply for a national mark and want to try applying on your own, you can visit the US Patent and Trademark Office website: www.uspto.gov and go through the entire application online. In some cases where the name is very distinctive and the product is easy to describe and fits neatly into one of the trademark classes you can find on the site, and you can easily send a “sample” that shows the name, your registration can go through without barrier and you will receive registration in about 18 months. Then, in most cases, you will be protected against anyone in the United States using your product or service name on a similar product.

Unfortunately, your trademark application doesn’t always go so smoothly. Often you will receive what is called an “Office Action” from a trademark examiner at the US Patent and Trademark Office asking you for more information and/or to clarify something, submit your use statement, or another sample. Or, your name may be “published for opposition” (a mandatory step in the process) and someone you haven’t found in previous searches appears “against” your registration. These are the cases where you will most likely need the services of a qualified trademark attorney to assist you.

After you submit your application, an attorney can assist you with the many changes that may be necessary to obtain registration status. However, there are also minefields and traps here. It is quite possible that you have made a “fatal error” in the application and it needs to be restarted. If you don’t figure this out before your first office action, you could be wasting six months or more, AND your entire fee, just to start over with an attorney. If problems arise for the opposition at the time of publication, this is the point where you are almost completely through the process. Starting at this point will likely cost at least a year of effort.

In summary, your product name can be protected by either a common law trademark, a state trademark, or a national trademark. Both common law trademarks and state trademark registrations have serious limitations, but are available. For national registrations through the United States Patent and Trademark Office, you CAN do it yourself, but be aware of the pitfalls and potential pitfalls. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and likely save you money in the long run.

Mikki Barry has been a trademark and intellectual property attorney for technology and small business companies since 1991. For more information see: www.mikkibarry.com. This article is not intended to be legal advice.

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