Trademark Question; Help me S.U.N.!

businessnewbie

 
I`d like to apply for a trademark for my business soon.  Do I register the business name in one filing, and the logo design in a separate filing? I sure hope not; a trademark search fee and two trademark registration fees will put a big dent in my start-up budget.  Please advise.

mchutch

Hi,

Registering your business name is separate then trademarking your logo. You
may put a TM next to your logo but that means you are in the process of
having it trademarked and registered as uniquely yours in your
industry. This can buy you some time until you have the funds to
register it. If you do not follow through, and actually register the
mark with the USPTO then someone can come along and develop a very
similar looking mark and register it with the USPTO before you. Actually getting your logo registered is subject to a review by the USPTO.

There are a lot companies that do not have their logos trademarked or
registered because they are in fields that the chances of having a logo
copied or stolen are pretty slim. If there is an issue with someone
copying the mark then this usually falls into the hands of intellectual
property lawyers and that is where excellent files and record keeping
come in handy. But, nobody really wants to go there.

Patents are generally for inventions and if you have a unique invention
you can file a provisional patent which is cheaper than the completer
patent process and it can date your invention and hold up in court.

Nuevolution

Couldn`t be explained any better.. I think your question has been answered

mchutch

I forgot to mention that if you have a uniquely identifying name for your product or service, in short, a brand name, the same process applies. For example you probably couldn`t trademark, Joe Smith Tree Service but you probably trademark SmithArbor. You can have a logo designed with the brand name in it or not. Or you could trademark the brand name without a logo, though that would not be advisable as a logo or logotype will help identify you and establish a brand presence.

businessnewbie

Thank you all so much for helping me out.  I have the right plan of action now. Forums like this are great because it led me to the right source for my answer.
www.uspto.gov/web/trademarks/workflow/start.htm</A> 
says,
"There are two possible trademark formats: (1) standard character format ; or (2) stylized  or design format. The standard character format should be used to register word(s), letter(s), number(s) or any combination thereof, without claim to any particular font style, size, or color, and absent any design element. Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation. The stylized or design format, on the other hand, is appropriate if you wish to register a mark with a design element or word(s) or letter(s) having a particular stylized appearance that you wish to protect. The two types of mark formats cannot be mixed in one mark; do not submit a representation of a mark that attempts to combine a standard character format and a stylized or design format."
I`m going to trademark the business name using the standard format because I`m really only interested in protecting the actual name.  My logo is not so unique that I`m going to spend money to protect it.  I got it from using logoyes.com anyhow. It`s pretty plain.
 
 

LordEmsworth

Most things that have been said on this thread more or less answer the original question.  But there is one common misconception that I must correct.  A provisional patent appliacation should not be any cheaper to write than a non-provisional.  This is because the the two types of applications must be written to meet the same legal requirements.  The only exception is that claims do not have to be included with the provisional application. 
However, professionals start drafting the application with the claims.  Not writing claims can lead to introduction of new matter later on which could prove fatal to the priority date.  Also, filing a provisional delays the start of examination by up to a year.  This is a bad idea when the USPTO is so overloaded that it can take 1-3 years to get a first Office Action.  For these and other reasons I do not recommend filing non-provisionals.

steve

Could those qualified in trademark law comment on the following  hypothetical scenario?

Person 1 registers the domain "abc.com" and the page is parked with no content or obvious business function for several months.

Person 2 registers the domains "abc.net", "abc.biz", etc...  and begins using them in business.

Person 2 files trademark application for the phrase "abc".


What, if any, constraint or limitation does Person 2`s trademark of the
phrase "abc" impose on Person 1`s use of the "abc.com" domain name?

Does being the first to register a domain name have any impact on subsequent trademark applications?

LordEmsworth

First you have to separate domain names from trademarks.  Domain names are simply addresses on the web.  People usually like them to be their company or brand name.  This is just for consumer convenience: there is no absolute requirement.  A trademark distinguishes the goods of a company from similar goods being offered in the marketplace.  Thus a trademark must not be confusing similar to trademarks for similar goods. 
Second, in the United States, trademark rights arise upon use and not upon registration.  Registration is valuable for many purposes (especially in case of litigation) and I recommend doing it at the earliest opportunity. 
So I think that Person 2`s prior use of the mark "abc" will constrain Person 1`s use of a similar mark.  If Person 1 starts to sell goods with a mark similar to "abc" Person 2 would be able to file suit for trademark infringement.  Further, depending on where Person 2 has filed her application, the mere fact of an application and, possibly eventual registration, may prevent Person 1 from registering her mark.
For the reasons given above, I think that just registring a domain name will not have any impact on subsequent trademark applications.
For all the above reasons I strongly recommend doing a trademark search BEFORE selecting a trademark that you want to use with any new business. 

Mitchell

Could those qualified in trademark law comment on the following  hypothetical scenario?

Person 1 registers the domain "abc.com" and the page is parked with no content or obvious business function for several months.
Person 2 registers the domains "abc.net", "abc.biz", etc...  and begins using them in business.
Person 2 files trademark application for the phrase "abc".
What, if any, constraint or limitation does Person 2`s trademark of the phrase "abc" impose on Person 1`s use of the "abc.com" domain name?Does being the first to register a domain name have any impact on subsequent trademark applications?
Hi Steve,

Mitchell

 
Addendum to my response to Q2. Make that registered and pending marks at the USPTO, to be completely accurate. 

steve

Thanks Norton and Mitchell,

I have one more hypothetical question:

Business 1 is operating in one US city - has no trademark protection for the name.
Business 2 begins operating online using the same name with the
intention of opening brick & mortar retail locations, perhaps
franchising - obtains trademark on the name.

What rights does each business have to the name?


Steve2006-8-22 17:15:14

LordEmsworth

We had this situation happen with one of our clients.  In fact Business 1 has the has prior trademark rights in its sphere of influence and can stop Business 2 from entering that sphere.  Our client got some sort of settlement from the infringer.

LordEmsworth

In the United States, trademark rights arise upon use and not upon registration.  However, registration provides you with additional rights.   So it is good that you have started the registration process.  Also, earlier use usually prevails.  So it sounds like you have the right to demand that the later user cease and desist.  However, you should be prepared for litigation, should they not do so.  This is rather complex and touchy so you would be better off hiring an attorney for this.
Another avenue would be to research if they have also applied for a trademark and oppose their application for registration.  Again this gets complex (it`s very similar to litigation and you would be better off hiring an attorney.   
If we can assist with either of these, let me know.

pepperlegal

Mike,There are many variables to your question.  Every intellectual property right carries with it its own sets of rules and laws.  Using a trademark as an example, where is A iusing the trademark?  County level?  State?  Federal?  A`s ability to prevent others from using his mark depends (1) on the geographical scope of the trademark, and (2) the class of products and services associated with the mark.  So, if B is using the same or similar mark in either a jurisdiction outside of A`s trademark scope, or is offering products/services outside of the class of A`s goods or services, there may not be an infringement.This is a very rough overview, and there are certain exceptions that apply.Dan

pepperlegal

No problem, Mike.  Happy to help.Maybe next time I order a Domino`s Pizza, I`ll have some fun with the employee and ask if this is "Dominos."  When they say, "it`s Domino`s Pizza," I can repeat the process until they finally cave and I can claim infringement.

steve

When I worked  at  Dominos
Pizza  years  ago I was told that we had to answer the phone
dominos pizza  notjust  dominos because  there was
another firmalready  establish,   Ithink they said 
flour,    that almost  sounds  like a 
different class pizza ....  flour   maybe 
not    ,, then  again  I have 
concluded  that  you cant  always  believe 
everything  you hear  , maybe  I  was  given
some bad information  from a non professional.The
trademark infringement suit was from the makers of Domino Sugar.

Interesting article in Wikipedia. I wonder what the VW beetle is worth
today that Tom Monaghan gave his brother for his half interest in the
original store? Bet James Monaghan is still kicking himself over that
deal.