Q: I've invented a new and better product. It's going to sell like wildfire. Why should I need a trademark?
A: A trademark allows the owner to brand and identify the product so that consumers recognize the brand, associate it with the product and look for it by name. That in turn can increase sales.
There is no requirement to register a mark with the federal government to have rights in the mark. Protection rights can be created through use of the mark on the goods or services. But successful business people take a few simple precautions before choosing a trademark for the new product, and spending time and money to develop and print product labels and packaging bearing the trademark.
KEEP THESE TIPS IN MIND:
FIRST: Before adopting a mark, go to www.uspto.gov, click on "Trademarks," and then click on "Search TM database (TESS)." The TESS (Trademark Electronic Search System) database contains a searchable record of all federally registered and pending marks. This makes it less likely you will select a mark that infringes someone else's rights.
SECOND: While searching, look for plurals, misspellings, designs and such that might be confused with the mark you are thinking of adopting. You will have rights in the trademark related to the particular goods or services with which the mark is used. For example, the mark AUTOLITE for shoe soles would most likely not infringe AUTOLITE used for ink jet cartridges because the products are unrelated.
FINALLY: Put your proposed mark into a commonly available search system, such as Google, and take a look at what comes up. Owners of trademarks that are not federally registered but are in use in the marketplace may have enforceable common law rights in their marks. You should also know that it's difficult, and sometimes impossible, to obtain legal rights to a name that directly and clearly describes your product. Choose a word, phrase or logo that is a little more fanciful.
The TEAS application form has a "wizard" that gives a great deal of advice and help to the applicant. An application for registration must include the following elements before the USPTO will accept it:
1. The name of the applicant.
2. A name and address for correspondence.
3. A clear drawing of the mark.
4. A listing of the goods or services.
5. The filing fee for at least one class of goods or services.
An examining attorney will review your application, usually within three months, to determine whether it complies with all applicable rules and statutes and includes all required fees.
A complete examination includes a search for conflicting marks and an examination of the written application, the drawing and any specimen. If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO.
The USPTO will then send a notice of publication to the applicant stating the date of publication. Those objecting have 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, the USPTO will issue the Certificate of Registration.
U.S. Patent and Trademark Office commissioners field questions from Inventors Digest readers. Got a query? Drop them a line at AskUs@inventorsdigest.com, or write:
Ask the Commish
P.O. Box 3761
Charlotte, NC 28236.
