Category: Trademarks

When you start your own business, you already have an idea for your business, and so the next logical steps always seem to be: 1) register an Internet domain name, 2) get business cards, and 3) reserve a name for your product or service (a trademark).

The first two steps are easy, and you decide to do those yourself. You may be unsure whether you can reserve a trademark, and so perhaps you check around on the Internet to see what local trademark attorneys charge to help you. Initially thinking that a trademark attorney can help you for $100 or so, you’re shocked when you see what trademark attorneys actually charge.

Next you may look at so-called “self-help” services. While often less expensive than a trademark attorney, you have to ask yourself “what am I really getting from the self-help service” that you couldn’t just do on your own.

I can spend the rest of this post explaining why trademark attorneys charge so much, and why using self-help services is a bad idea. But that’s not my purpose today. Instead, I want to tell you a few things that everyone must know about trademarks, and why if you don’t understand these basics, you can find yourself in a heap of trouble.

1. You need to know if anyone else is already using your mark. This may seem obvious. If you wanted to set up a coffee shop, you’re going to need an original name. You know that you can’t trade off of the goodwill of established and well-known coffee houses. A good place to start is with a general Internet search engine, such as Google, Yahoo, and Bing. Next you might try searching the state registers and the US Trademark Office. Most state registers are available online now, and the US Trademark Office database is available online for free.

2. You need to know if your mark would be confusingly similar to anyone else’s mark. What does that mean? Just because you don’t find an exact use of your mark, the standard for registering a trademark with the US Trademark Office, and the standard for trademark infringement, is whether a consumer of products or services would be confused by the use of the two marks in question. This is really where the trademark attorney earns his or her fee. It’s generally easy to find out if someone is already using your exact mark for the same goods or services. It’s a lot harder to identify and then determine whether someone else’s mark, although not identical to yours, might be considered confusingly similar.

This is why its best to hire a trademark attorney to assist you with this determination. Trust me, if you try to register your mark or start using your mark, you may find yourself faced with a letter from someone else’s attorney telling you to stop or face an infringement action (this is called a “cease and desist letter”). Getting yourself out of this mess is going to cost you a lot more time, money, and heartache, than if you had just paid the trademark attorney to help you in the first place.

3. You cannot use the encircled “R” notation. That is, unless and until you receive a federal trademark registration from the US Trademark Office. Otherwise, you are violating the trademark laws. And you may also be violating other state and local laws, rules, or ordinances based on consumer protection or fraud.

So can a trademark attorney save you money? While reserving your trademark may seem as simple as ordering business cards at your local office supply store (so why pay a trademark attorney), there are many intricacies that a trademark attorney can help you with that can trip you up and end up costing you more in the long run than if you don’t hire a trademark attorney from the get-go.

Many customers buy particular products or services because they have become accustomed to a certain degree of quality in the product. Many people will even pay more for certain brands of soft drink than they will pay for a generic soft drink.

Brands or trademarks designate the source or origin of goods or services. By consistently providing high-quality goods or services under a trademark, along with a successful marketing campaign, customers come to associate trademarks with a certain degree of quality in the goods and services being provided.

In other words, brands can be used to establish customer loyalty.

This customer loyalty is also called “goodwill.” The goodwill you establish not only affects the sale of your current goods and services, it may also carry over to other goods and services that your business may introduce in the future. For example, when a product is well-known and then you introduce a new product, loyal customers will often purchase the new product without having ever tried it before based only on your brand. That’s because the customer expects a similar degree of quality to that which they have become accustomed to with other products you offer. This gives you a distinct marketing advantage when introducing new products. In fact, you will often see new products that are introduced with the statement “from the makers of [insert brand here].”

But don’t risk losing all of this goodwill. Work with a trademark attorney to properly protect your brand with trademarks.

Welcome to the virtual consultation on trademarks. Some trademark attorneys offer free consultations, during which they go over some of the basics for protecting a trademark. This consultation goes over some of those basics – so that when you meet with a trademark attorney, you can skip over the basics and get right to the heart of your trademark. Please note that this consultation is only intended as general information and not as legal advice. Let’s get started . . .

What is a trademark? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.

Is a service mark different than a trademark? A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.  Often, the terms “trademark” and “mark” refer to both trademarks and service marks.

Do I need a trademark search? I always recommend a trademark search to help avoid having your trademark application from being rejected by the US Trademark Office – or worse yet, being accused of infringing someone else’s trademark.

Can I register my trademark with the state? Yes, you can register your trademark with the state or states that you’re doing business in.

Should I also register my trademark with the US Trademark Office? If you are using (or have a bona fide intent to use) your trademark in interstate commerce, then you can realize additional protections by registering your trademark with the US Trademark Office.

How should I use my trademark? Always use your trademark in a consistent manner. Don’t use your trademark as a noun. You should also designate your trademark using the TM notation (or SM for service marks). You cannot use the (R) designation unless and until you are granted a federal trademark registration.

I hope that this “consultation” has been informative. Please remember that this is not a substitute for legal counsel. Don’t delay in hiring a trademark attorney to help you with your trademark . . . or you risk losing important legal rights!