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Trademarks
By Ahmed Saad, Technology Matrix Group - Copyright 2001
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.

http://www.uspto.gov (main site)

http://www.uspto.gov/main/trademarks.htm (main page for trademarks)

http://www.uspto.gov/web/offices/pac/doc/general/whatis.htm (definitions)

http://www.uspto.gov/teas/index.html (online application)

http://www.uspto.gov/web/offices/tac/tmfaq.htm (FAQ for trademarks)

http://www.uspto.gov/web/offices/tac/doc/basic/ (more info on trademarks)

http://www.uspto.gov/web/offices/tac/doc/basic/international.htm (the 42 international segments)

 

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