Registering Trademarks

[EnvisionEd]

Who all has experience registering trademarks? I have not contacted a lawyer yet, but I wanted to gather intel on who all has done this before and how difficult the process is. As I understand it, I need to cast a wide net, as there may be someone in another field that is trying to use my trademark or company name. Also, I'm not exactly sure how to check into logos. Anybody have advice they don't mind sharing? Thanks in advance.

 

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[Vigilante]

Here's the best way. Spend a ton of time online researching you question (there are tons and tons of content posts out there that would answer your question).

You might also like to check out a few books from your local library. It's not an easy subject to answer in a single post here, because the subject matter is somewhat in depth and more complex than a post can handle. Read up on it.

You will find the forum does best answering specific questions (like "what should I do with this rejection letter I just got from the USPTO") than generic requests for a wide body of knowledge.

I would tell you though that I have done this many times, and generally I end up back in the hands of a trademark attorney because they know what they are doing and are usually worth the investment. You can do some stuff on your own, and you can find some budget services, but lately the USPTO is overwhelmed thanks to the Amazon Brand Registry and as a result, they have hired hundreds of inexperienced attorneys who are passing out rejections faster than Amazon can fly merchandise in from Asia.

Study with the intent of educating yourself on the process, and use the forum members to help you overcome obstacles. Rather than asking them how to climb a mountain, learn how to climb a mountain and then ask the forum for help if you run into specific obstacles along your journey.

And welcome to the forum.

 

[EnvisionEd]

Here's the best way. Spend a ton of time online researching you question (there are tons and tons of content posts out there that would answer your question).

You might also like to check out a few books from your local library. It's not an easy subject to answer in a single post here, because the subject matter is somewhat in depth and more complex than a post can handle. Read up on it.

You will find the forum does best answering specific questions (like "what should I do with this rejection letter I just got from the USPTO") than generic requests for a wide body of knowledge.

I would tell you though that I have done this many times, and generally I end up back in the hands of a trademark attorney because they know what they are doing and are usually worth the investment. You can do some stuff on your own, and you can find some budget services, but lately the USPTO is overwhelmed thanks to the Amazon Brand Registry and as a result, they have hired hundreds of inexperienced attorneys who are passing out rejections faster than Amazon can fly merchandise in from Asia.

Study with the intent of educating yourself on the process, and use the forum members to help you overcome obstacles. Rather than asking them how to climb a mountain, learn how to climb a mountain and then ask the forum for help if you run into specific obstacles along your journey.

And welcome to the forum.

Thank you and will do. I appreciate your time.

 

[samuraijack]

I agree with @Vigilante on using a trademark lawyer. I couldn't be assed to do (much) research on it.

I had a good experience using Top Attorneys on Demand: Online Business Legal Services, Advice, Free Forms especially Randy Michels from Trust Tree. Most of them will be open to answering questions before you ever pay a time, so its like a free consultation.

I was informed throughout the whole process, and multiple times when people would send me objections trying to delay the filing he would advise me on any action needed.

 

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[Kruiser]

Who all has experience registering trademarks? I have not contacted a lawyer yet, but I wanted to gather intel on who all has done this before and how difficult the process is. As I understand it, I need to cast a wide net, as there may be someone in another field that is trying to use my trademark or company name. Also, I'm not exactly sure how to check into logos. Anybody have advice they don't mind sharing? Thanks in advance.

It all kind of depends on where you are in terms of your business:

If you have no product and no sales, trademark REGISTRATION should not be a priority. At all.

Registration provides some benefits, but isn't magic. You can actually get most of the benefits of registration by USING your mark in commerce. In general, trademark protection flows from use in commerce, not registration. You get a lot of common law trademark rights by using your trademark in commerce. You can use it and slap a supersript "TM" on it to let others know you are claiming rights to the mark.

The first step in any trademark registration process is going to be a "clearance search." This is a defensive measure to make sure that no one else (arguably) in your space is using an (arguably) similar mark. Trademark attorneys will use special services at $500-1,000 to run this search. But you can get a lot of the same benefits by simply running a bunch of Google searches and seeing what comes up.

Here's what you do:

Google your proposed trademark (the wordmark) and variations of it. A lot. Note anything that is arguably close in terms of your industry or your mark. The closer it is, the more of a potential problem you have. The bigger the size of the owner of a mark arguably close to yours, the bigger a potential problem you have.

Don't try to be cute by trying to change letters or spelling. If you come up with a drink called Koka Kola, you are going to have a problem. Trademark laws are (supposedly) consumer protection statutes, and the point is to protect consumers from being confused as to the source of a good or service.

If you can't find any word mark in use that is close to the mark you propose to use, that is when you engage a trademark attorney. The attorney will then run the database search and analyze the results for you. Just realize that trademark law is very subjective. Also, the questions of 1) would a trademark owner sue over my mark that is kind of close to their mark? and 2) would I ultimately prevail? are VERY different questions.

Logos (image marks) are a whole different challenge. There are database searches trademark attorneys can run, but, again, this is a very subjective area.

Again, just please make sure you are worrying about registering trademarks at an appropriate phase of your business. I've seen so much money wasted on trademark attorneys for products and services that had zero sales that I cry myself to sleep thinking about it sometimes.

 

[Xeon]

I personally use File a Trademark Application - JPG Legal

Affordable and personal.

 

[EnvisionEd]

Thank you guys very much for your insightful feedback; I really appreciate it. Now onto the research phase!

 

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