From the Patent & Trademarks
office (PTO) website: "A trademark is a word, name, symbol or device which is
used in trade with goods to indicate the source of the goods and to distinguish them from
the goods of others'... 'The terms "trademark" and "mark" are
commonly used to refer to both trademarks and servicemarks."
 Why do I need a
trademark?Trademarks not only give
distinction to your products and services, but also protect you from others claiming that
you are infringing on their trademark. They are particularly important in retail as they
communicate that you take your business seriously and give customers additional confidence
in your business's legitimacy.
How can I get one?
You can trademark your business name in one (or more) of 42 international
"Schedules". You must select the one that fits your activities most. You
can apply for more than one schedule, but you will pay multiple fees (currently $325 a
pop) AND you must actually be involved (or plan to be involved) in activities that are
covered by the additional schedules.
You must show that your activity is compatible with the
international schedule you are applying for. If you are applying for a trademark in
your line of activity you can do so under "use in commerce". If not, you
must apply as "intent to use" and adjust it after you actually begin your
commercial activities. Adjusting your status in the future involves additional
paperwork and more fees ($100).
You can apply by written application or use the online submission form. While the
application may appear intimidating, it is fairly straight forward, and if you use the
online application, it has detailed explanations for filling out every section properly.
Usually patents are difficult and you are well advised to get the help of a lawyer,
but trademarks are fairly easy and you could save $1000 or more by doing it yourself.
Will my application be approved?
While your rights start from the date of your application, they are not permanent until
your application has been approved. Before it can be approved, it must be verified
that your mark is distinctively different from the trademarks of others in the same
international schedule. The test is whether the average consumer may get confused
between your business and someone else’s with a similar mark. It is worth your
time to run a search on the PTO website
for trademarks that may be similar to the one you intend to apply for. It will save
you time and money since it is very likely that your application will be rejected if it is
similar to another mark in the same international schedule.
Things to watch out for:
The "specimen" that you submint with your application must be your text or image
IN BLACK AND WHITE (i.e. the way it will look if photocopied/Xeroxed). The
"samples" are things that you use your mark on. These can be labels,
invoices, a website printout, etc. Use as broad a description of your activity as
possible since it will offer you more "coverage". The choice of words is
important because if your description is too broad or utilizes "non traditional"
words that are not acceptable to the PTO, they will send you a so-called office action
giving you a chance to fix it (at no additional charge).
A final note:
No matter how careful you are, it is very likely that you
will get the so called "office action". Office action letters look
intimidating, and many people, foolishly enough, drop the quest for their trademark
because of it, or run to a lawyer to deal with it. Office action letters are usually
very harmless, especially if you have done your homework and made sure that no one has
trademarked the words or images you plan to use (or anything too similar), in the same
international schedule.
Often times, the examiner is trying to get you to re-word
the description of your trademark because one or more words are not the kind of terms used
in the trademark process. Take the word Internet for example; it is not acceptable
and you will have to replace it with "global computer networks". It could
even be something as simple as having to state that you are not asking for exclusive
rights for a common English word (in the dictionary) which happens to be part of the name
you want to trademark.
Another issue could be the poor quality of the image you sent, especially if you uploaded
a GIF via the online application. All you need to do in this case is to resubmit
another image!
So, if you get an office action letter, read it well and see what the examiner is asking
you to clarify. And here’s one more tip; the examiner WILL list his name and
phone number in the bottom of the letter. He or she will be perfectly OK if you call
and ask for help. They are very nice people and will assure you that it is their job
to answer your questions and concerns. Write down what they say, and mail in the
corrections. Then wait for your letter of approval and the registration of your mark
in the mail! Be patient as the process can take between 6-12 months to be finalized;
or even longer if you do not respond to office actions in a timely fashion.
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