Trademark Tips and Tricks
You might not realize this but trademark law exists to protect the consumer. Everyone thinks it exists for big companies to protect their brand but that's not so. The core of the law is to prevent confusion in the marketplace about what written names and artistic symbols belong to specific kinds of products and services.
Trademarks can be every bit, if not more valuable than patents, to a company. Entrepreneurs often overlook their value and power and turn to patents before anything else. Even though the same department of government oversees both patents and trademarks there are some very real differences in the strategy you need to use in best leveraging these tools.
The first primary difference is US patent law doesn't require you to have a working product or prototype to file a patent. There are a couple of well known exceptions such as a perpetual motion machine or a cold fusion machine. Those you'd have to bring in and demonstrate. Otherwise, you can file away with descriptions and maybe a few basic sketches. Of course you need to have an examiner approve your filings, etc. You can take your brilliant idea and without ever having brought anything to the public or having brought something out to the market place file a patent.
This is not the case for trademarks.
A trademark is words and/or artworks that are unique to your business offering or products and you must have at least marketed publicly your products and/or services. That last part is key. It's not enough that you have created brochures, white papers, direct marketing pieces, etc. You must have them distributed out into the public in an effort to sell. You don't actually have to have sold anything. Printed and paper is preferred to digital and "pull" like a website or emails. It's not to say that they won't be accepted but if challenged, it's much easier to show you had a newspaper advertisement circulated to 5,000 households than it is to say you had 5,000 "hits" to your website and the website "had", at that time, your trademark items displayed. I write "had" because often sites are dynamic and change over time. Someone could always say "prove it" and often it would be difficult to prove. You'd have to seek out web services that "freeze" the Internet pages in preserved databases. It can be done. Maybe even Google has a "cached" version of your website but what a hassle.
There is a second primary difference between patents and trademarks. In the US, patents are only issued by the Federal government. If you receive a patent in the US, for the US (there are international filings you can do) then it applies to all companies operating in the nation. Trademarks however can be preexisting on a state-by-state or even local level. The date of their use and/or existence can trump a national trademark.
Just because you received a national trademark for a business name nationally in 2013 doesn't give you the right to shut down a company in a particular state that's been in business before you. You won't have a case. If, however, they move to a new state and you hold a national trademark you can issue the big "cease and desist letter".
You need to be aware of preexisting local and state exceptions. Start with a hearty Google search. Paid search services can conduct state and local searches for you, but of course, it'll cost you more. This is especially important if you intend to license or franchise your trademarks to others.
The third primary difference between patents and trademarks is what entity can file for them. Patents require real flesh and blood people to be listed as inventors on the patents. It can't be companies. Inventors issued patents then assign the patent rights to companies. This can cause challenges and others could say "hey, I helped and should be an inventor" even if you disagree. Trademarks can be filed for directly by and owned by companies right from the start.
Pick a Category of Products and Services. What category of products and/or services are you looking to file a trademark on? Go the www.uspto.gov. You'll find a directory listing of many, many potential products, markets and subitems. You'll really need to pay attention to the differences between them. Sometimes it's not obvious. You'll also need to be selective. The more you want to file for, the costlier the effort will be.
Existing Companies. You can find there are existing companies that have a full "strangle hold" on categories. Ultimately you don't want to risk an examiner identifying, and notifying other companies with trademarks, of your request if things are very questionable on conflicts. Sometimes it's as important to avoid categories as to definitely pursue others.
Do your own search first on the USPTO database. This isn't so tough with word trademarks but it can be very tough with artwork filings. Paid services charge $500 and up from there for category searches for you. The reports will be hundreds of pages for you to review but it beats potentially the thousands you'd have to do on your own.
Prepare in Advance
You file for trademarks in two distinct ways, 1) the words you use and 2) artwork that's uniquely created.
1) First Use Date. You'll need to know at least the month and year you first used the words or artwork you want to trademark. Once again, this is not when they were first created but when they were "unleashed" into the marketplace.
2) First Use Examples. You'll want to keep visual examples of your first use text and artwork. If you created a brochure and it has both the text and the artwork then that single marketing piece can serve for both trademark filings (make sure you printed and distributed the brochure). Digital copies emailed aren't good evidence for the USPTO. It can be off your own printer and physically given. Verbal use doesn't count. It doesn't matter that you said the words, even many times on sales calls. It needs to be printed. A printed sales proposal is good too. Video and audio files don't count either. PRINTED is a must.
3) Combined Text and Artwork. Be smart about logos. Logos usually combine both artwork and text. If you think you'll have many variations on logos then decide on the "core" of the logo and file only for that core to be trademarked. This can save you a lot of money down the road as each logo variation may need it's own separate filing.
A great example is Hard Rock Café. They kept the city name separate from their logo trademark. You can see in the logo above the registered trademark symbol is just for the circle and the text Hard Rock Café in it. Hong Kong is separate and itself is not part of the trademark. This way they filed for one trademark. They intended to franchise from the beginning. They kept the franchise city name separate from the trademark. This way Hard Rock Las Vegas and Hard Rock Nashville don't need each to be filed for separately as trademarks. It's Hard Rock and separately the name of the city.
4) Mascots Need a Name and to be Written About. Often companies use characters to give their businesses personalities - think of the mouse with Chuck E. Cheeses or Groupon's Grumpy Cat. Often the images are as valuable or more valuable than the core company brand - think Mickey Mouse. The icons and characters need a name, i.e. Minnie Mouse. That name needs to be written and associated in your marketing and advertising material with the artwork. Ideally you'll describe the named character/artwork with your products and services. "Mr. Clean does the hard work cleaning your floors so you don't have too."
Top 5 Business Reasons to File Trademarks Article.
Proper Notification and Trademark Markings Guide click here.