You’re a small business owner with a hot new product or service and you’re deciding what to name it. Perhaps you’ve even hired a graphic designer to create a flashy logo to go with it. You may have ruled out trademark registration as too expensive or even unnecessary because you only plan to sell in your local area. This article will show why nearly every business can benefit from trademark protection, and how a new option makes professional trademark assistance affordable for most small businesses and entrepreneurs.There are two excellent reasons to protect a trademark as soon as possible, even for small businesses that operate in a limited area. The first is that a professionally prepared trademark conflict search will help you identify existing trademarks to avoid infringement. Discovering a conflict ahead of your launch will allow you to change names before investing in promotional materials and advertising, and building recognition of a name you may have to change later. The last thing your new business or project needs is a lawsuit during the startup stage.On the plus side, discovering a conflict may offer an opportunity to create a new name that distinguishes you from existing “brands” and projects your unique value proposition. Speaking of branding opportunities, the second reason to protect your trademark even if you operate in a limited area is to prepare for nationwide expansion of your business. With the shift toward online marketing and commerce, even the smallest businesses are finding larger markets to expand into. Also, registering the mark with the U. S. Patent and Trademark Office gives public notice of your trademark rights, protects the mark nationwide, and discourages infringement with heavier penalties.Now that we know it’s important to protect trademarks, let’s examine a new option for professional trademark assistance at significant savings over the traditional law firm fees. A new breed of firms called Trademark Service Providers specialize in trademark research and related services, offering them to small businesses and entrepreneurs without the typical legal fees. While they do not represent clients in court or provide legal advice, they can perform the specialized research necessary to check for conflicts. Some firms also prepare trademark applications and provide ongoing infringement searches. A few providers even offer creative naming services to help clients with the naming process.In order to appreciate the benefits of using these new services, let’s continue with the scenario from earlier. You have selected a name and you are weighing your trademark options. You may have read an article on trademarks that suggested you conduct a “free” online trademark search. Let’s briefly examine online conflict searches.Two of the most popular free trademark searches are the online records of the U.S. Patent and Trademark Office (www.uspto.gov), and a simple name search using Internet search engines. Unfortunately, these searches can be misleading to those who are new to the subject of trademarks. As we will examine below, these searches are only the first stage of an effective search process. They may uncover obvious conflicts, but as you will see below, they do not reliably answer the question of trademark availability. The same can be said for State trademark registrations and searches. In fact, only a fraction of the trademarks in use are registered with the State and Federal agencies. The remaining marks are unregistered, often referred to as “common law” trademarks.Common law trademarks are unregistered marks used in business or commerce that receive limited legal protection based on the geographical area where they are used. The absence of a centralized registry documenting these marks complicates the process of conducting a conflict and availability search. Locating common law marks requires an experienced researcher using the latest and most extensive sources, searching literally millions of relevant business and legal records. This is where a Trademark Service Provider can help.A Trademark Service Provider has access to proprietary search resources with the most current and extensive information, advanced search technology, and the expertise necessary to conduct a diligent and comprehensive conflict search. Due to the existence of common law trademarks, no search results are 100% conclusive. However, the best strategy is to obtain the most thorough search and then begin using and protecting a mark as soon as possible.If you plan to use a particular trademark but your business has not opened yet, you can file an “intent to use” application to protect it for six months during the development stage. For an additional fee you can extend this period up to two years if necessary.Trademark Service Providers are part of a growing trend of out-sourced expertise designed for small businesses. In contrast to the more expensive “one size fits all” approach used by big national firms, or the risky alternative of going it alone, a firm that specializes in serving small business owners can be the perfect solution. They offer reasonably priced yet professional-grade services, a capable staff that supports your vision, and the expertise that allows you return to your primary goal of building your dream business. Before you know it, your small business will be creating a Big Name reputation, with the confidence that your trademarks are protected.
So, you’ve just come up with a snappy product name and you’ve decided you want to trademark it. What should you do next? Is it really as easy as the website at the US Patent and Trademark Office says it is? Can I really do it without a trademark lawyer? These and other questions will be answered in this article.Once you come up with your product name, you must first find out whether or not that name is already being used for the type of product or service that you wish to use it for. You can do this by doing a web search for the name, searching it through the US Patent and Trademark Office website to see if it’s been registered or applied for, or by contracting with a special search company who also check through telephone listings, company names, and has further resources available than either of the previous options. If it’s already being used, you will likely have to consult a trademark attorney to find out whether or not your use is different enough from the one already in use, to justify spending your money on trying to promote a name that is going to have to be changed later.Let’s say you can’t find any other uses of the name out there. Does this mean you are home free? Well, not quite. If the name you have chosen is merely “descriptive” of the product, such as “Red Rubber Ball” for a rubber ball toy, or “Meaty Dog Food” for a dog food made of meat, it might be great for the consumer, but it is not necessarily a name that the US Patent and Trademark Office will accept as a trademark. A name that is “merely descriptive” is not going to pass muster, and will not be awarded a registration. There are other categories of name that are also not registrable, however they are a bit more complicated, and you really should consult a trademark attorney regarding how best to proceed in those cases.If your product or service name is not already being used, and is not descriptive, what then? Well, at that point you have a number of choices. You can begin using the name, spending the necessary money to promote it, print it on labels, etc., relying on your “common law” trademark rights, or, if you are only going to be using the name locally you COULD go after a state trademark (check with your particular state for details), or you could then proceed with national trademark registration.Your “common law” trademark rights are good, and you CAN sue someone for infringement if they were to copy your name for a similar product, but the court battle would be a lot more difficult than if you had a national registration. A state registration is pretty good, but what happens when you border another state, and the guy just over the way starts using your product name for a similar product? It’s rather difficult to limit your “territory” in the days of the Internet and easy transportation. Again, a national trademark would definitely make your life easier. (Please note that you can also register your mark internationally once your company grows to the extent that you are trading overseas. I positively recommend a qualified trademark attorney for international registrations.)If you decide to go for a national mark, and wish to try to apply on your own, you can go to the US Patent and Trademark Office website at http://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 classes for trademarks that you can find on the website, and you can easily send a “specimen” showing that the name is in use in the way you say it is in use, your registration may go through without a hitch and you would receive a registration in approximately 18 months. Then, in most cases, you would be protected against anyone in the United States using your product or service name on a similar product.Unfortunately, it is not always the case that your application for trademark registration goes through quite this easily. Oftentimes, you will receive what is called an “Office Action” from a Trademark Examiner in the US Patent and Trademark Office asking you to clarify something, rewrite your statement of use, submit a different sample, or asking for more information. Or, your name may be “published for opposition” (a required step in the process) and someone who you didn’t find in previous searches turns up to “oppose” your registration. These are cases where you will most likely need the services of a qualified trademark attorney to assist you.Once you have submitted your application, an attorney can help you with many of the changes that might have to be made to achieve registration status. However, there are mine fields and pitfalls associated here as well. It is entirely possible that you may have made a “fatal error” in the application, and it must all be started over again. If you don’t find this out until your first office action, you may have wasted six months or more of time, AND your entire filing fee, just to have to start over again with a lawyer’s help. If the problems come up at the time of publication for opposition, this is the point where you’re almost entirely through the process. Starting over at this point would likely cost at least a year’s worth of effort.In summary, your product name can be protected either by common law trademark, state trademark, or national trademark. Both common law trademarks and state trademark registrations have serious limitations, but are available. For national registrations via the US Patent and Trademark Office, you CAN do them yourself, but be aware of the pitfalls and possible difficulties involved. Otherwise, consulting a qualified trademark attorney will likely save you significant time, and will probably save you money in the long run.