Forums: Discussions for entrepreneurs and small business.

I am just starting to get things off the ground with something I have created.  I have no clients as of yet, but am confident that I will get where I want to be eventually.  My funds in the meantime are quite limited, but I have a great name and would like to trademark it.  I have heard that a person may start using the trademark symbol before a trademark is filed.  I am wondering if this is true, and if there is anything more that I would need to do, than to just put the TM by my name and wait until the time comes when I can better afford to register it.

I also was pondering trademarking this myself, thinking, "How hard can it be? I just send some forms in, and the US Patent Office does their search (after I perform mine), and voila!  I have my trademark without having to pay for an attorney!"  What are my misconceptions with this?  Isn`t it true that the patent office performs a search (I know I need to conduct my own search prior to starting all this).  I keep hearing differing opinions from everyone.  Some say I don`t need an attorney, others say it`s imperative I have one.  Any advice would be greatly appreciated.  I am so new to all this.  Thanks!

Hi Opie,

I did my trademark paperwork myself.  It took some research and homework to figure it all out, but if you`re limited on funds, or are just a do-it-yourselfer, you can do it on your own. The price to submit is about $345 per category you are wanting to trademark in.  For example, I did children`s clothing and online retail to start - that translates into $345 for each.  You only have to pay for the one to start and will be asked at a later date to pay for the other(s) once the application is processed (can take upwards of 18 months for the whole process).

They have lots of instructions on the web site to help you out: http://www.uspto.gov/.

You can also do a search on the above site to see if your name is already in use and under what categories.  This will give you a basic idea if the name you want to trademark is already in use by someone.  You can also do a search on the web yourself.  Of course, there is always the option to pay someone to do a search for you prior to submitting your application.

The trademark office does do a search when going through the process; however, if someone has been using your trade name prior to you and didn`t file the trademark, they still can claim that they had it before you did and take you to court, but I doubt that anyone who didn`t take the time or put up the money to do the trademark in the first place is going to come back at you. 

Also, you can start using the TM symbol before you actually file your trademark.  They will ask you this on the application: what is the first date the trade name was used?  You don`t have to put this if you haven`t.  There is also the option to fill in that you plan to use the name in business but haven`t yet.  They will check this out during the application process too.

I filed my first trademark app in June and still have not heard anything back yet from the initial email that my application was received and that it would take about 18 months for the process, about six before I`d hear from them again.  It`s a long process once you actually file, but you can always put the TM after the name starting today.

Hope this information is helpful to you.

Cheers,

Tammy

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Tammy Graham, Founder & CEO, True Genius Apparel Company: fitting your personality; www.mytruegenius.com. "You must be the change you wish to see in the world."

Thanks for the info, Tammy.  It is much appreciated.  You mentioned that if someone is already using the name but does not have it trademarked, they can come back at me.  I performed my trademark searches and found the name I want to use is listed as dead, but when I did an Internet search I did find three different companies with my same name, but no trademark.  How would they have a leg to stand on in court if their name isn`t protected by a trademark?  What would be the point of even having a trademark if you don`t have one and can sue someone who does?  Since all three companies are tolerating the use of the name, wouldn`t I also be okay to use the name? Or should I look for a different name?  (The three companies are different.  They sell children`s apparel, I do not).  I really don`t want to have to change the name.  It`s fabulous and took me forever to come up with it.

Okay, I have one more question.  I am still brainstorming names and came up with another one I really like.  There is no trademark on it, but there is an online beauty magazine from Australia with the same name (darn it all!!).  Since this is a foreign name (with no trademark) could I use this one?? Thanks!

Hi Opie,

A couple of things you might be interested in

In order to be able to Trademark a name you must have used it in interstate or international commerce, if you have not yet used it in that manner you can file an ‘intent to use’ application but by the time the trademark is issued you must be able to prove you have sold the product interstate or internationally. If you can’t, the applications should be denied.

TM next to a brand or product name stands for ‘Trademark’ but all it does is notify the world that you (or your company) intends to file or has filed for a trademark, once the trademark has been issued instead of using ‘Product TM’ you would use the circled ‘R’ stands for ‘Registered’.

IMO generally speaking applying for an ‘Intent to use Trademark’ is a waste of time and money.

Good luck,

Elí

One thing an attorney could help you with is the difference between a trademark and a tradename.  They are not the same.  Also, the matter of whether the intent-to-use trademark application is or is not a waste of money is somewhat irrelevant.  The thing to keep in mind is actual use.  If you hire an attorney, he can go through this with you and help prevent you from wasting your limited resources.  There are few things more expensive than having to do something twice or fix something that was done wrong.  Just a few thoughts.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Hi Opie,

I stand resolve that you can do this yourself, but you need to educate yourself on it. In addition to all of the information on the trademark site (link below again), check with your local SCORE office (www.score.org).  They may have a retired patent attorney that can answer your questions for you without charge. Mine does.  With his advice and my educating myself on the information on the site, I filed mine myself. 

Here is some specific information on the trademark app for your reference.  You can find all of this information on: http://www.uspto.gov/. Here is the link to the basic information on trademarks: http://www.uspto.gov/web/offices/tac/doc/basic/

I don`t think filing an Intent to Use is a waste of time or money if you are seriously going into business soon.  Someone else can use your name in a different industry than you.  When you file, you will file under specific codes of use through the trademark application.  You can file an app if someone else filed and it is DEAD. May or may not be the same industry anyway.

Here are more useful and direct links to information:

File and Intent to Use and explanation on the process: http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.ht m#basis and then http://www.uspto.gov/web/offices/tac/doc/basic/addreq.htm.

It`s a lot of information to wrap your head around and it`s always easier paying someone to do the work for you if you have the resources.  Check out your local SCORE and see if they have some free resources for you on this topic and read everything pertaining to filing the application on the trademark site.

Cheers,

Tammy

 

 

 

 

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Tammy Graham, Founder & CEO, True Genius Apparel Company: fitting your personality; www.mytruegenius.com. "You must be the change you wish to see in the world."

It is not necessarily true that "Someone else can use your name in a different industry than you."  Open up a line of children`s clothing under the name "McDonald`s" and let me know how that works out.

-------------------------

James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Having a trademark registration does not prevent a person from losing a trademark infringment case in court.  Not having a trademark registration does not prevent a person from winning a trademark infringment case in court.  Not that simple.  Not that simple.

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James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com

Hi James,

Nothing is ever that simple.  How boring life would be if it were.  Opie has a lot of homwork before he/she can file on his/her own, but it can be done without an attorney. 

Since you`re a patent/trademark attorney, why not offer your services in-kind to Opie as a SuN fellow-member and answer all of his/her questions directly and help direct Opie to filing the trademark. 

Cheers,

Tammy 

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Tammy Graham, Founder & CEO, True Genius Apparel Company: fitting your personality; www.mytruegenius.com. "You must be the change you wish to see in the world."

Yes, it can of course be done without an attorney.  Is his time that will be required to do the homework worth something to him?  My guess is that it is because our time is the most valuable thing we have.  I`d hate to have to make my own pencils.

-------------------------

James Lindon, Ph.D. Patent Attorney
Lindon & Lindon, LLC
Cleveland, Ohio
Patents, Trademarks, Copyrights, Pharmacy Law, Litigation
[this is not legal advice - provided for discussion only]
Intellectual Property for the Individual and Small Business: Identify, Protect, Enforce, Defend.
"Fools rush in where angels fear to tread."
http://www.LindonLaw.com