RAND STORY: 06
On Your Marks, TRADEMARK!
When to apply for a trademark, and how to do it without a lawyer
I met in coffee shops with a lead attorney for one of Atlanta’s premier, high-priced intellectual property law firms — so you don’t have to. My goal: to demystify the trademark process for DIY startups. For obvious reasons, she asked to remain anonymous.
Whether you prefer Coke® or Frappucino® or Lavender Love™ Kombucha™ Enlightened™, these superscript marks tell you the brand is legit — well, sort of.
The ® symbol signifies a federally registered trademark, while the TM symbol has no legal significance. Marketing folks will slap a TM on any name their company uses to 1) suggest they own the name, and/or 2) signal their intent to register the name.
For that reason, Michael and I sprinkled TM’s on our client projects like M&Ms (examples: Fuel IQ™ and PriceQuery™) because the marks suggest proprietary, innovative solutions. I have since learned that if you’re not planning to register the mark, don’t use TMs indiscriminately. You may invite objections from other trademark owners. This article encourages you to make the effort to register the real deal and obtain the ® symbol.
Most small businesses don’t register their trademark, and if you’re operating in a small geographic area (contractors, stores, and local services), it’s not always critical. But if you sell products on the Web, or plan to expand to other states, regions, or countries, a Federal trademark lets you move into new markets while protecting your brand.
For this article, I met in coffee shops with a lead attorney for one of Atlanta’s premier intellectual property law firms to demystify the trademark process. For obvious reasons, she wanted to remain anonymous (and not publicly demystify her craft).
If your business activity is only in-state, you can apply for state trademark registration. It’s easier, cheaper, and it records the date you first used the mark if you are accused of infringement — but it does not convey ownership of the brand name like a federal trademark.
If you conduct business overseas, you can also apply for an international trademark. You may remember how Ivanka Trump was granted sixteen trademarks from the Chinese government after her dad lifted the ban on the Chinese company ZTE for violating US sanctions. This little bit of political intrigue underscores the strategic and financial value of holding trademarks in other countries.
Even for our young lawn guy, Donnie, trademark registration protects his future options — and future unknowns. Here’s how:
Scenario
Suppose Donnie, the young startup teen we’ve been following, named his business Green Planet Lawn Care. In this Green Planet scenario, Donnie continues to cut lawns during college, and over time, his business grows. After taking courses in horticulture and landscape design, Donnie scales up his business after graduation — two crews, then three, and so on.
Meanwhile, Joe Jones, the owner of Green Planet Lawn Care in Allentown, PA, is getting ready to retire. Joe has a hot-shot son with an MBA who is looking for an investment niche. The son is intrigued by CertaPro Painters® — the largest residential and commercial painting company in North America. CertaPro sells franchises for $57,500, so Joe’s son decides to apply the CertaPro franchise model to lawn care. Joe and son apply for a trademark for the Green Planet name, assemble a franchise package, and start selling. They sell one of the first franchises in Donnie’s town. When the franchise owner sees one of Donnie’s Green Planet trucks at a job site, he gets pissed.
Boom! Donnie receives a strongly-worded letter to cease and desist using the Green Planet name — a name Donnie has used since high school.
Donnie may have a common law right to use the name in his geographic area, but rights don’t matter if you can’t afford the fight. If you don’t trademark your name, an infringement claim can become an expensive legal liability.
How to Lose Your Business Name
Here’s what happened in my neighborhood when some locals opened an authentic Irish pub, The Grange Public House. After a few years of business, the National Grange of the Order of Patrons of Husbandry (aka The Grange) took notice and demanded that our sweet little pub change its name. A sensible person would ask, “Who would confuse a fraternal farming organization with our hip Irish pub?” It doesn’t matter. If you don’t have the resources for a legal fight, you might be forced to buy new signage, print new menus, and restart your business. Our little pub is now The Marley.
My mom’s Los Angeles public relations agency, Nann Miller Enterprises, also got into a trademark fight when an upstart PR person named Nan Miller (with a trademark) challenged my mom’s use of her un-trademarked business name. My mom, Nan, achieved a truce by adding a second “n” to her name — what if she was Hannah (Hannnah?).
Most people don’t trademark their business name because they think it’s expensive, not necessary, or too complicated. The shoestring approach below helps protect against future damages — and only costs $225.
Full Disclaimer
I am not a lawyer. I am an advocate for shoestring startups getting trademark protection at a price they can afford. I offer no guarantee that the USPTO will grant your trademark or that you will avoid legal wrangling. I recommend a lawyer if you can afford one, but I’ve always applied for trademarks on my own. Lawyer or not, if want to protect your business name, you will need to understand how trademarks work.
What is a Trademark?
A trademark is a type of intellectual property (usually a brand name, tagline, or design) that the Federal government will register to provide nationwide rights to its use. The government will not register marks that are similar to other, active trademarks to prevent confusion in the marketplace. If you create a new kombucha drink and brand it CocaBucha, Coca-Cola® may cry foul because consumers might think it’s a Coke-branded product. The government may also reject it. Trademarks prevent this confusion.
The Federal Examiner
The examiner serves as a referee in reviewing your application. As with football, most plays are easy calls; others require the rule book. The examiner follows the Trademark Manual of Examining Procedure (Google it).
The Spectrum of Trademarkability
The diagram below will help you understand how the examiner determines the “Likelihood of Confusion” surrounding your mark. Potential trademarks live on a spectrum from generic (an everyday word) to coined (a made-up word). You can’t claim ownership of Burger, whereas Fuddruckers is unique. The examiner will make a judgment call if your trademark lives in the middle.
Thirteen factors guide the examiner’s decision on possible consumer confusion (The Dupont Factors). Additionally, your name cannot be a generic word. To determine the Trademarkability of your mark, place your name on the spectrum to see if you’re in the red:
- Generic — You generally can’t register a commonly-used term for a product or service as a trademark. Steak ‘n Shake® (1934) would have a tough time getting a trademark today.
- Descriptive — Words that describe the generic product name can also be hard to trademark. Examples Hot Pockets® and Gyro Wrap®.
- Suggestive — Marks that suggest feelings and qualities associated with the product can be trademarked, but live in the gray zone. Example: PizzaFire®.
- Fanciful — Common words used in novel ways (a jack in the box is a toy; an apple is a fruit) can become inventive trademarks for a product, i.e. Jack in the Box® and Apple Inc.®
- Coined — The strongest type of mark is an invented word or phrase that’s not in the dictionary, i.e. Häagen-Dazs®.
The generic exception (and it’s a doozy): On June 30, 2020, the Supreme Court ruled 8-to-1 for Booking.com that adding “.com” to a generic word can make the entire combination eligible for trademark protection. The Supreme Court ruled against the Government Trademark Office claiming that the guidelines led to an improper refusal.
Now that the Court has let the generic cat out of the bag, what’s to stop one burger brand from trademarking Burger.net and another Burger.org? How about @burger?
Trademark Step-by Step
Trademark Procedure — Much of what’s written about trademarks can be confusing. A brief overview exists at NOLO.com: “How Do I Register a Trademark?” which I invite you to read, then follow this step-by-step:
1. Determine your International Class — Go to: USPTO Trademark Classes to locate the appropriate category for your trademark. The list shows 34 classes for goods (001–034) and 11 classes for services (035–044).I find it quicker to search at Nolo.com Trademark Classes. Click on a class in the List of 45, then scroll down to Complete Listing of All Goods in Class XX Based on Taxonomy.
Donnie’s lawn service lives in 044 (Medical, beauty, and agricultural).
2. Name Lookup — Visit the US Patent and Trademark site’s Trademark Electronic Search System (Search USPTO TESS) to see if other businesses use your chosen name.- Click: Search our Trademark Database
- Click: Basic Word Search and enter the key words in your business name. (Example: Instead of “Green Planet Lawn Care,” search on Green Planet. 51 records are returned. Image below:)
- Click on each record. Review the Goods and Services description, and see if they are in your IC Class from #1 above.
- A better method, but a little complicated: Instead of Basic Word Search, you can focus your search to a single class. Select Structured Word Search. Enter the following into the fields using your terms:
Row 1: Search term = Green Planet | Field = Full Mark.Operator = ANDRow 2: Search term = 044 | Field = International Class
- Only records in class 044 are returned. If no records are returned when searching on your International Class, your mark likely can be trademarked.
Instead of “Field = Full Mark,” try “Field = BasicIndex.” This returns names that use parts of your chosen name (example: Envirogreen).The process is a little like a hen plucking for grain. Your goal is to discover if and how your chosen name is being used in the marketplace.
Gray Areas to Consider
- Same name, same class — You might discover existing marks with the same name, same class, but with Goods and Services descriptions in a different industry (example: Green Planet Tattoos, also in Class 44). The examiner will determine if confusion in the marketplace could result. If you find yourself in a same-name/same-class scenario, I recommend getting a lawyer or looking for a different name.
- Similar class — If you discover a trademark for Green Planet Landscape Architecture — in IC 042 (a different, but similar class) — you should be okay. But, the examiner could conceivably reject your request if Green Planet Lawn Care (044) and Green Planet Landscape Architecture (042) might create consumer confusion (even though architects use computers and landscapers use mowers).
- Similar sound — Search sound-alike words. If your t-shirt business is Marquee Tees, and a fashion line owns T.Markey, the USPTO might reject your request. The examiner follows “The Dupont Factors” to make these decisions. Same class, similar class, or similar sound — it’s a $225 roll of the dice.
- Using an attorney — If you are in a “same name/same class” situation, hiring an attorney is recommended. They will search the existing marks and advise you to the level of risk you would encounter in (a) attempting to register your mark and (b) living with your mark in the real world even if it gets through the Trademark Office. A search report might cost $300 to $600 based on how extensive a search you desire. UpCounsel.com is a great online resource to find a trademark lawyer in your budget.
- Accuracy is everything — I have screwed up several times. Recently, I tried to help my friend Sara trademark Après Wear for her after-yoga line of kimonos. During our initial search on TESS, I queried Apres without inserting the accent (Après). “You seem good to go,” I told Sara. And yes, I blew through $225 of Sara’s shoestring funds.
- Remember: You are applying for federal protection for the entire United States.
3. Understand how International Classes protect you. Your $225 trademark protects one business class.- Stay in your lane — Trademark classes explain how Dove (Class 3 — Cosmetics and Cleaning Products) doesn’t conflict with Dove (Class 30 — Staple Food Products). Each brand stays in its lane, so customers don’t get confused. If the chocolate Dove tried to jump classes and introduce a chocolate-scented shampoo, the soap Dove could sue chocolate Dove for trademark infringement.
- Extending brands — Some brands, like Arm & Hammer, jump lanes to expand into new markets. Arm & Hammer extended its brand into many classes (baking soda, toothpaste, laundry detergent, cat litter). The GE brand pops up in countless industries (light bulbs, appliances, financial services, jet engines, medical imaging, etc.).
- Multiple classes — Like Arm & Hammer, you can apply for a trademark in multiple classes, but they will cost $225 for each class. For example, if you want to trademark Kentucky Lucky Whiskey in Class 33, but also want to trademark a fashion line to go with your whiskey — example: Kentucky Lucky hoodies in Class 25 — you must file and pay fees for two classes.
- Multiple products — An application for “pants, shirts, shoes, jackets, hats,” although five separate products, requires a fee for only one class since all of these products fall within Class 25 for clothing, footwear, or headgear.
Search the Trademark ID Manual — Find Goods and Services descriptions for your business.- Search the manual — To expedite the $225 process, you will be choosing Goods and Services descriptions that have been approved in the past. You will search the Master ID List and copy the description into your application.
- To get started, search for “USPTO Trademark ID Manual” and open the manual.
- Submit several search terms into the Master List until you find a description that fits your business. For Donnie’s Carbon Free Lawns business, he first searched on Landscaping and reviewed all 28 results. He also searched on Gardening. The closest description for Donnie is 044–119 Landscape gardening.
- Choose a description– Donnie searched on lawn and got 61 results, including 044–2571 Lawn care and 044–2572 Lawn mowing services. Donnie decided to use both 044–119 Gardening and 044–2571 Lawn care for his trademark. Both are in class 44.
- Copy the description(s) — Donnie clicked on the ID Link (example 044–2571) and copied Lawn Care into his application.
- Custom description — If you can’t find an appropriate listing (for example, “Marijuana Edibles”), you must use the TEAS RF application ($275) and create a customized description of your goods and services. A custom description is needed when you have a unique product or service that isn’t listed in the manual. Side note: Since marijuana is still illegal under federal law, good luck with your trademark.
The Specimen
- The Trademark agency (USPTO) will ask for a specimen of your mark used in actual commerce. The rules state:
- The rule –“Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”
- The Catch-22 — You want to trademark your name before you invest dollars in the brand because you don’t want to discover later that it can’t be trademarked. The USPTO insists on the opposite — start your business, then trademark the name.
- The Solution: Intent to use — The USPTO recognizes this dilemma, so they offer an “Intent to Use” form. The form entails additional fees to hold the trademark for six months (extensions available) while you get ready to launch. If you sell products, the Intent to Use form is often necessary (explanation next page).
Service Businesses
- If you are a service business and ready to accept your first sale today, you are technically in commerce. Go ahead and apply. The USPTO will ask for the date you were first in business.
- Website specimen — If you are a service business, you can show your Website as a specimen. Print your Web page to a PDF file from your browser to capture today’s date and the URL in the header/footer.
- Press release — A press release announcing your launch can serve as an un-arguable specimen that your service business trademark is actively in use ($59 at NewswireNEXT, $49 at PR Underground, and others). You can also scan your marketing brochures.
- Business cards — Business cards make for a quick and easy specimen for service businesses. If a Fedex store is in your neighborhood: Go to Fedex.com and select Printing Services. Choose a relevant design and include your business name/address. Add descriptive bullets for your services that match your Goods and Services description, pay $25, and submit. A few hours later, voila — 250 business cards. Take a photo of the cards that shows that these are actual cards and not a design file.
Products
- Selling a product? — If you are producing Goods, for example, ceramics, T-shirts, software, or cookies, it’s more complicated. You will need a photo showing the trademark on the bottom of a mug, a garment label on a shirt, the packaging, a software start-up screen, etc. All of these will require an actual salable product — not a prototype. If you trademark t-shirts, you must show a t-shirt. If ceramics, photograph a mug. And yes, I made this mistake with Sara’s kimonos.
- Take it step-by-step — Your trademark specimen is one of three places in the process where it’s easy to make a mistake.
The three likeliest places for denial of your application are:
- Searching the TESS database adequately to ensure there aren’t Existing Registrants in a similar type of business,
- Selecting the correct ID Class/Description from the ID Manual, and
- Submitting an Acceptable Specimen (from an actual product, if applicable).
Fill out the form
- The trademark application asks for simple information, but be warned: the convoluted process keeps lawyers in business.
- Because you have selected your Goods and Services listing from the ID Manual, use the TEAS Plus application.
- Search on “USPTO TEAS Plus Application” to locate the form. Then click “Fill out TEAS Plus online.”
- Go slow and focus on the information requested. Double-check each page; it’s a merciless, poorly written form. Your trademark submission is likely for the “words only” (not a design or stylized font).
- Because you already have a photo of your specimen and your Goods and Services description, filling out the form should be straightforward.
- Once you’re done, celebrate your deep dive into bureaucracy. Importantly, your baby has a name, and with trademark protection, your name is in a class of its own.
One final bit of business
If your trademark is accepted, open your calendar app, count five years ahead of your registration date, and write, “File Declaration of Use of Mark in Commerce Under Section 8.” The USPTO will remind you to file, but your email must be current. Plan on getting rip-off notices from scammers posing as trademark agencies.
- Again: Between years five and six after the initial trademark registration, you must fill out a Section 8 form, which currently costs $100.
- While you’re at it, count nine years ahead. You’ll have to pay a bigger fee between years 9 and 10, as well as every 10th year onward, for the rest of your trademark’s life — a small price compared to receiving a cease and desist letter someday in the future.
