It’s not easy, but it’s possible to trademark your way to a deal
So much of it is perception. You have to look like you’ve done enough work to warrant someone paying you a royalty.
BY HOWIE BUSCH
When inventors tell me about their product, they always focus on the patent. Don’t you?
There’s the patent search, the PPA (provisional patent application), utility patent or design patent. You’re excited to share that you’ve received a patent or are patent pending. And that is all really important.
Patents should be a primary focus—but what if your product just isn’t patentable? Should you just throw in the towel and move on to your next product?
I don’t think so, because you have another option. Have you ever thought about applying for and licensing a trademark?
Most inventors don’t realize that you can, in fact, license an idea based on a trademark. I’ve done it. Twice.
The 5 key steps
Remember, when companies talk about IP (intellectual property) rights and protection, that includes both patents and trademarks. After all, it isn’t just the U.S. patent office, is it? It’s the U.S. Patent and Trademark Office.
I’m not telling you it’s easy to do; I’m just telling you that it’s doable, another possible add to your inventor toolbelt.
Let me share how to do it, and how you can earn a royalty for it. Because getting a trademark and getting someone to pay you for the right to use it are two different things.
So much of it is perception. You have to look like you’ve done enough work to warrant someone paying you a royalty.
A big part of it is being a professional. Here is how I’ve licensed products based on trademarks only (with no patent-pending status whatsoever).
- Perform a trademark search (you can use the USPTO site)
- Do a domain search, and secure the domain (you can use a site like Go Daddy)
- File for the trademark
- Put together a great sell-sheet
- Include a sample or prototype if possible
By doing all of the above, you look like you’ve invested a great deal of time and energy into the product. And in fact, you probably have. It will look and feel very much like a patent-pending product, which is what makes someone feel like you deserve a royalty.
How I did it
Let me share a couple of examples of how I’ve secured licensing deals using that exact formula.
The first product I ever brought to market unintentionally ended up being a trademark play because the product was clearly not patentable. I wanted to create a line of good-luck products for your favorite sports teams, in team colors. After all, what sports fan doesn’t want to bring his or her team good luck?
We came up with the name “Whole Lotta Luck” for the brand/product line. The actual products weren’t as important as the overall concept.
So for the first product in the line, we wanted something simple. Because fox tails are considered lucky, we came up with a plush fox tail in team colors. Picture an extra-large rabbit’s foot, in team colors, to be waved around at sports stadiums and arenas.
I did a trademark search and secured the domain luckytailz.com. Then I filed for the trademark for Lucky Tailz, put together a great sell-sheet/marketing deck and created some prototypes.
It looked like a finished product that I had put a ton of time and energy into, which actually was true. It was my first product, and I had no idea what I was doing.
But at my very first meeting with my first licensee, I licensed that product to a company that already had the sports team licenses in the plush category. Of course the company could have done it itself, but I had done enough work to show the company what it would look like as a finished product and secured a pretty cool name. So it was easier for the company to use my version and pay me a royalty.
Success No. 2, and some tips
The second time I licensed a trademark, I followed the same game plan.
At the time, ugly Christmas sweaters were everywhere and selling incredibly well. I came up with the idea to do ugly Christmas blankets.
Following the bulleted items above, I did the trademark search; secured the domain; filed for the trademark; made some prototypes (I simply went on Fiverr and paid someone $100 to create some ugly Christmas designs. I then ordered them as blankets on zazzle and had some prototypes.); and I put together a good sell-sheet.
And I got a license deal.
Again, it is not easy. It’s not easy to license anything. It takes hard work.
But it’s possible, so don’t throw away that unpatentable idea yet. Come up with a great name and see if the trademark route is an option.
You may get that licensing deal anyway … just not the way you thought.
Pro Tip No. 1: One of the key elements in getting a trademark issued is actually using it in commerce. There is something called an ITU or Intent To Use trademark.
Without getting too deep into the legal aspects of trademark filing, you can file an ITU trademark application—but before it becomes fully issued, you will have to show that it is actually being used in commerce.
In other words, your trademark won’t register until you, or your licensee, has the goods made—with labels, packaging, etc., and starts to sell it. You should consult a trademark attorney or the USPTO about this. The USPTO is free and is a tremendous resource.
Pro Tip No. 2: Keep in mind, the royalty for a trademarked item may be slightly less than for a patented product. That’s not always the case—in fact, it wasn’t for me—but it is possible.
