Basic Facts About Trademarks: What Every Small Business Should Know Now, Not Later
MARK Thank you! Thank you! Thank you very much. Thank you very much, ladies and gentlemen. I am Mark Trademan, from the Trademark Information Network. A big thank you to the United States Patent and Trademark Office for inviting us here today. It�s always great to come visit the campus and get a chance to talk to people about trademarks.
Now, with me today is, of course, our star investigative reporter, Sandhya Mahajan.
That�s right; feel free to applaud. Good, good, good. Now, Sandhya is going to be gathering questions throughout the presentation today, so if you have a question, jot it down on one of the note cards that you�ll see in your seats and you can hand it in. And if you want to include your name, feel free to jot it down. We�ll probably answer a couple of those questions throughout the presentation and then we�ll try and answer all the rest of them at the end. So, get your pens ready...
Okay. Now, before we get started, I have a quick question for you. Now, I understand most of you are entrepreneurs and small business owners. How many of you have a business plan in place? Go ahead; raise �em up.
Good. Now, how many of you have a trademark component as part of your business plan?
OK. I was afraid of that. Trademarks are an essential part of your business. They represent your goodwill, your reputation, and they�re how people can tell the difference between the products and services that your business offers and what other businesses offer. But here�s the good news.
You�re here today. You�re going to learn about trademarks. And you can go back to your office or to your kitchen table or the coffeeshop around the corner and start working trademarks into your business plan.
What we�re going to do today is break down the basic facts about trademarks.
First, we want you to understand what a trademark is. And how it differs from a patent. Or a copyright.
Second, we�re going to discuss the benefits of federal registration. Now, you�re all business people, right? You wouldn�t want to spend money to apply for a trademark without knowing what you could get in return, right? So, we�ll talk about what a federal registration can do for your business.
Third, we want you to understand how to select or choose or create your own trademark. And believe me, folks, this part is key. The same concepts apply if you don�t have a trademark yet or if you have one already and you think it�s pretty great. Okay? Seriously, if you are part of the latter group and you think you have a fantastic trademark, stay with me here, OK? You want to make sure that your trademark is federally registrable and legally protectable. If it�s not, you could be wasting valuable time and money. And you might even be opening up your business to a lawsuit...
Fourth, we want you to understand what resources are available to you if you need help during the application process. Now, lots of people ask whether they need to hire an attorney. Or whether they can do it on their own. We�re going to talk about that, as well as give you some suggestions on where you can turn for help.
By the end, you should know how to select and apply for a trademark registration so that trademark will be federally registrable and legally protectable. And that�s an asset that�s going to help your business grow over time.
And, speaking of valuable assets, I thought we�d use some examples that you might recognize. Okay, no favoritism here, of course; these are all marks appearing on a recent Interbrand list of Top 100 Global Brands. Now, we�re only using them here because trademark concepts can sometimes be complex. And real-world examples often make the concepts easier to understand.
So, with all that out of the way, sit back and find something to take notes on. We have a lot to discuss.
First things first: what is a trademark.
Well, the legal definition of a trademark is any word, slogan, symbol, design, or combination of these things, that identifies the source of your goods and services and distinguishes them from the goods and services of another party. But the easiest way to think about it is this: a trademark is a brand for goods and services. Let�s look at a couple of examples.
Now, you probably recognize these as brands for soft drinks, right? We have Coca-Cola and Pepsi. Now, when you see each mark on a can or a bottle, you immediately know the source of the beverage. Now, you also know that it�s not the competitor�s beverage. See, it distinguishes them. That way, you don�t drink a Coke when you want a Pepsi and vice versa.
Now, Coca-Cola is a trademark in itself, but as you can see here, it is also displayed in a distinctive script, and the display of the wording in that stylized form is also a mark.
Pepsi is also a word mark, but, as you can see here, it is also shown in a particular format, and the combination of the wording and the design, well, that�s also a mark.
As you remember, I said that a trademark can be a word, slogan, symbol, design, or combination of these things. But that�s not all. A trademark isn�t limited to just words and designs.
It could be a sound. Or a color. Or even a smell. Pretty much anything can be a trademark or service mark, so long as it identifies the source of goods and services and distinguishes them from the goods and services of others.
Yes. Sandhya. Looks like we have our first question.
SANDHYA Yes we do. Steve asks if there is a difference between a trademark and a service mark.
MARK Great question. Yes. There is. Technically, a �trademark� identifies the source of goods, like shoes or laptops. A �service mark� identifies the source of services, like landscaping or accounting. But, here�s the thing. In everyday language, people often refer to a service mark as a trademark. Okay, so, throughout the talk today, we�ll just use the words �trademark� and �mark� for shorthand and if people call me Mark, I�ll try not to get too confused...
Alright, so now that we know what a trademark is, how is it different from a patent? Or from a copyright? Well, it breaks down this way:
As we�ve already learned, a trademark is a brand for goods and services. And a patent, on the other hand, protects inventions, like new engines or solar panels. And a copyright, well, it protects original artistic and literary works, like songs and movies and books. So, although all three of these here can be used together, they don�t protect the exact same things.
So, for example, let�s say that Samsung has invented a new type of vacuum cleaner. Alright? Well, it might apply for a patent, right, for the invention itself. It could also apply for a trademark, right, for the brand name that�s used on the vacuum. And it might want to register a copyright for the TV commercial that it uses to market the product.
So, those are three different types of protection for what are known as �intellectual� property. We�ve got brands, inventions, and original artistic works. Now, they�re all equally important and they all protect different parts of your intellectual property portfolio.
Yes? Sandhya? Looks like we have another question. Go ahead.
SANDHYA Roger says he already has an Internet domain name, as well as a business name. He�s wondering if that means he doesn�t need to worry about registering a trademark.
MARK Great question, Roger. I was just going to get to those differences. Perfect timing. Thanks, Sandhya.
OK. So I get this question a lot. And there�s a lot of confusion about it. Maybe because the word �registration� is involved. I don�t know. But let me ask you this. What is a domain name? Anybody? Shout it out. No need for the mic.
FEMALE AUDIENCE MEMBER Web address.
MARK Good! Great. That�s right. That�s right. It�s a web address.
It�s the wording that people type into the address bar of a web browser to go to your site. Or it could be the hyperlink that people click on to get to your site. Like USPTO.GOV or COPYRIGHT.GOV.
Or one of my favorites: TMARKEY.COM. T.MARKEY, of course, being the official mascot of the Trademark Office.
Now, most of you here are business people. How many of you have a website for your business?
Good. Good! Good, good, good. That�s great to see. Now, when you registered that domain name, did you use the USPTO to secure that web address? No, right? You registered it through one of the domain name registrar companies, right? Where they advertise a domain name for, like, 8 bucks a year or something like that. Right.
Now that means that you�ve secured a web address. It does not mean you have trademark rights in that wording. In fact, if you register a domain name that includes the trademark of another party, you may have to surrender that domain name. So, a domain name registration does not equal a trademark registration.
�But hang on,� you might be thinking. What about all those companies out there that have .COM in their name? Like AMAZON.COM? Aren�t those both trademarks and domain names? Yes. They sometimes are. A domain name can function as a trademark, so long as it is used in a way that it identifies the source of particular goods and services.
Let�s take a look at AMAZON.COM. Now, you can see that AMAZON.COM is used as a web address. Here. And it is also registered as a mark for an online retail store. See, right up here and down here, it is used as a source identifier. Does that make sense? Okay, good.
There is also a difference between a trademark and a business name. A business name is just that: it is simply the name under which you do business in a particular state or jurisdiction. If your state requires that your business name is registered with your specific state, I�m sure most of you have done so already. However, a business name registration with your state does not grant you trademark rights. It merely means that a particular state allows you to do business under that name.
Now, can a business name also be a trademark? Of course! Just like a domain name, it all depends on how you use it. So, if you use your business name to identify the source of your goods and services and distinguish them from the goods and services of another, that�s trademark use.
To enjoy the nationwide rights offered by a federal trademark registration, you must file an application and receive a registration from the USPTO. Individual states also offer to register trademarks, but any protection granted is limited to that state.
So, Roger, there you are, to re-cap. Just because you have a domain name and a business name, it does not mean that you have a trademark registration. Okay? You have to use those names as trademarks in order for them to become trademarks. And to obtain the benefits of a federal trademark registration, you have to make sure that you apply for and get a registration through the United States Patent and Trademark Office. Okay, great.
Now, just to make sure that everything is clear, this is the way it all breaks down. Okay? Trademarks are brands. Patents are going to protect inventions. Copyrights protect original artistic works. Domain names are web addresses. And business names are just the entity name under which you have permission to do business in a particular state.
Now, patents and trademarks are both handled by the USPTO. For more information, check out USPTO.GOV. For copyrights, you�re going to want to go to the Copyright Office website, which is COPYRIGHT.GOV. Domain names are handled by domain name registrars: check INTERNIC.NET for a list of all those different domain name registrars. And business names, you want to check with your Secretary of State�s website and you can get more information there.
Okay, so, now that we know what trademarks are, we need to know why it�s important to register them with the United States Patent and Trademark Office.
A lot of people ask me, �Is federal registration of my trademark required?� The quick answer is �No.� But, it will enhance your rights.
See, in the United States, trademark rights are created through use of your mark in commerce and not through registration. These use-based rights are known as �common-law� rights. The rights, however, are limited, often to a particular geographic area. That means it might be hard for you to enforce those rights outside that limited scope and it might be hard for other people to know about your rights.
So, federal registration is going to greatly enhance your rights. Specifically, registering your mark is going to give you the following benefits:
First, it creates a legal presumption that you are the owner of the mark. Otherwise, that�s something that you are going to have to prove if you wanted to enforce your registration either in or out of court.
Two, it gives you a legal presumption of the exclusive right to use your mark nationwide with the goods and services that are identified in your registration.
Now, that's in contrast to a state trademark registration which only gives rights within the borders of a particular state. So, federal registration is going to give you a presumption of rights throughout the entire United States and its territories.
It puts the public on notice that you are the owner of the mark. If there's a question as to who owns the mark, it can be looked up in the USPTO's online database.
And that's the fourth benefit. Being listed in the USPTO's database means that others considering potential marks can find your marks when they search the database to see if their mark is available. The existence of your mark in the database can help others avoid selecting a mark that is too similar to yours. In addition, the USPTO relies on the same database for its own search and it will find your mark when examining someone else's application. The USPTO will then cite your registration against a confusingly similar mark in a later-filed application, preventing a potentially conflicting mark from registering.
Five, a federal trademark registration gives you the ability to record your trademark with U.S. Customs and Border Protection. That agency will use your trademark registration to prevent importation of infringing or counterfeit foreign goods.
Six, you have the right to bring legal action concerning the registered mark in federal court.
Seven, you have the ability to use your U.S. trademark registration as a basis for applying for a trademark registration in many foreign countries. It's a great benefit when your business takes off and you become a global phenomenon... Right? Okay�
And, eight, a federal trademark registration means that you have the right to use the coveted "R in the circle" symbol with your mark. And that�s something you cannot do unless your mark is federally registered. That symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. Now, it also can serve to cut off the rights of others who might have started using the same mark after you applied to register your mark.
So, as you can see, registration provides a lot of benefits. And it probably explains why the USPTO has registered millions of trademarks over the years.
OK. So, let�s see where we are. You�ve decided that your business needs to protect its brand. So, you�ve determined that what you need is a trademark registration. Not a patent or a copyright. And you�ve determined that pursuing the benefits of a federal trademark registration is the right investment for your business. The question then becomes, �What�s your trademark?� Do you have one already? One that you�d like to use? Or no idea at all and you�re open to any good ideas that come along?
Well, before you apply for federal registration, it�s important to understand that not everything that you want to register as a trademark can be registered. The USPTO examines every application for compliance with federal laws and rules and if the application doesn�t comply, the office will send a refusal letter known as an �Office Action.� Now, in some cases, it�s possible to overcome the refusal, but not always.
In addition, even if the USPTO registers your mark, it doesn�t mean it won�t be challenged later on by another party. So, to help you avoid those situations, we need to talk about what some of the common pitfalls are and how to avoid them.
The most common reason for refusal, and the most common pitfall, is what is known as �likelihood of confusion.�
That�s a likelihood of confusion between the mark in your application and a mark that is federally registered to another party. Now, typically, the refusal arises when two key elements are present.
One, the marks are similar. And two, the goods and services of the parties are related.
That is, the marks look alike, sound alike, have similar meanings, or create similar commercial impressions.
And, in addition, the goods and services of the parties are related in such a way that consumers would mistakenly believe that the goods and services coming from your company and the goods and services coming from the other company are all coming from one source. Okay?
So, note that the marks and the goods do not need to be identical. Okay? They only need to be similar and related.
Alright, let's take a look at an example. So, what if the mark "X-SEED" is registered for "agricultural seeds." Now, you want to register the mark "EXCEED" for "live plants." At first glance, the marks are not identical and the goods are not identical. They are, however, similar and related.
In particular, when spoken, the marks sound similar, see: "EXCEED." Right? The USPTO considers all possible pronunciations of a mark, so both marks may be pronounced the same way, even if one party may have intended the mark to be pronounced differently.
In addition, the goods here are related. See, that is, the same companies that sell "live plants" also sell "agricultural seeds." As such, consumers are likely to believe that both the live plants and the agricultural seeds come from the same company, right: the �X-SEED� company.
Now, here, your mark will be refused and you will not be allowed to register it with the USPTO. You would have wasted valuable time and money that you could have otherwise spent on selecting a mark that is actually registrable.
Sandhya, looks like we have a question?
SANDHYA Yes, we do. Linda would like to know if there are any situations where identical marks can co-exist.
MARK Great question. Yes, yes. Yes, there are. Generally, two identical marks can co-exist, so long as the goods and services are unrelated. Okay, let's say, for example, that the mark "LINDA" is registered for "gardening gloves." But you would like to register the mark "LINDA" for "photography services." And let's also assume that no court has held that the mark, the �LINDA� mark, is actually a famous mark. Okay? Now, customers aren't accustomed to seeing gardening gloves and photography services coming from the same company, so those goods and services are considered to be unrelated and there is no likelihood of confusion. So, yes: in some cases two identical marks can register. Thanks for jumping in with that question. That�s a good one. Thank you. It's an important thing to keep in mind.
Alright. Now, to help you avoid a likelihood of confusion, you should do what is known as a �trademark clearance search.� That involves searching in a few places for use of marks that are similar to yours. And remember, you are typically looking for use with goods and services that are related to yours.
The first place to look is in the USPTO database of federally registered and applied-for marks. The database is available on USPTO.GOV and you can search it for free using the Trademark Electronic Search System, which is known as TESS. Now, that�s the same database that the trademark examining attorneys at the USPTO use when they are examining an application, searching for conflicting marks.
Now, because TESS only covers federally-registered marks, and as we discussed earlier, there are unregistered marks, it's not the only place you�re going to need to search. Other resources you should check include state trademark databases and also business name databases. And you�re also going to want to look on the Internet. When you�re searching on the Internet, you want to do a search for websites and articles that have similar marks that are related to your goods and services.
Now, that�s a lot of searching, but you should do it to avoid inadvertently stepping on someone else�s trademark rights. If you do, they might engage you in a legal battle, claiming you have infringed their trademark. And if you lose, you might have to destroy your inventory and all of your marketing materials. You might even be forced to pay monetary damages. As a small business, I�m guessing that all of those things are not included in your budget.
Okay, so, doing a pre-application clearance search is very important.
There are trademark lawyers and companies not affiliated with the USPTO that you can hire to do your search for you. A trademark lawyer can also evaluate the search results and give you a legal opinion letting you know if your mark should be available for you to use and to register.
For more information about searching and about likelihood of confusion, be sure to watch the Trademark Information Network broadcast called �SEARCHING.� A little shameless plug. And consider hiring a trademark attorney for assistance. We�ll talk more about hiring an attorney in a little bit.
So, that�s one aspect of selecting a mark. You want to choose or create one that isn�t likely to cause confusion with another mark.
Another important consideration is choosing a mark that is legally protectable from the start. You want a mark that you can defend against others who might try to use a same or similar mark.
Now, marks that are immediately protectable are considered inherently "strong." Now, �weak" marks, on the other hand, are terms that describe some aspect of your goods and services. Weak marks often are more difficult and costly to protect and enforce than strong marks.
The simplest way to think about weak and strong marks is to picture them on a spectrum or on a gauge. Weak marks are cold; strong marks are hot. Now, the higher you move up the gauge, the easier your mark is to protect. Now, as you can see, there are generic marks, descriptive, suggestive, fanciful marks and arbitrary marks. We�ll go through them one by one.
The coldest or weakest marks aren�t even really marks at all. They are generic words that are incapable of identifying source. Think �BICYCLE� for �bicycles� or �MILK� for �a dairy-based beverage.� These are common, everyday names for goods and services and they are not registrable by themselves.
Descriptive terms are warmer than generic terms, but they are still very hard to protect. They directly tell you something about the goods and services. Think "CREAMY" for "yogurt" or "THE ULTIMATE BIKE RACK" for "a bicycle rack." Okay? Descriptive terms generally are not registrable without showing that the mark has, through long use, become a source identifier.
Now, things certainly get a little bit warmer when we get to suggestive marks. As the name implies, they �suggest� something about the goods and services, some characteristic of the goods and services. Think �QUICK N� NEAT� for �pie crust� or �GLANCE-A-DAY� for �calendars.�
These types of marks are registrable and are the next best thing to the hottest and strongest types of marks: �fanciful� marks and �arbitrary� marks. Fanciful and arbitrary marks are the easiest types of marks to protect because they are inherently distinctive and they immediately function as source identifiers. Now, because they are typically creative or unusual, it�s less likely that other parties are using them for related goods and services.
Alright, so, fanciful marks are invented words with no dictionary or other known meaning. Alright? Think �XEROX� or �CISCO� or �MICROSOFT.�
Arbitrary marks are actual words with a known meaning, but the words have no association or relationship with the identified goods and services. Right? Think �APPLE� for computers, �BLACKBERRY� for smartphones, or �GAP� for clothing.
Now, I understand that marketing folks often recommend adopting a trademark that is descriptive, because it immediately tells the consumer something about your product or service. And from that point of view, sure. It makes sense. You don't have to educate the consumers as much, because the mark already tells the consumers about the goods. But, from a legal perspective, adoption of a descriptive mark may end up costing you more money in the long run. See, it isn't immediately protectable and you cannot register it without showing that consumers have come to understand that it does not just describe the goods, but instead has become what consumers will rely upon when they�re looking to identify or distinguish your goods and services from the goods and services of others. Think about how costly it might be to develop rights in a descriptive mark and to enforce those rights. You might need to give up the mark altogether and start over with a completely new mark. Now that could be a very expensive road to go down.
Choosing a fanciful mark or an arbitrary mark, then, is a great way to help consumers identify the source of your goods and services and distinguish them from the goods and services of others. These kinds of marks are immediately protectable.
They�re not always protectable, however, if you fail to police use of your mark by others. In fact, hot marks can cool over time and may even become generic.
The words �ESCALATOR,� �ZIPPER,� and �YO-YO.� These were all once inherently strong trademarks. Because the owners failed to police the marks or may have even misused the marks themselves, the marks lost their source indicating power and became generic in the United States.
See, once non-ESCALATOR brand moving staircases became known as �escalators,� instead of �moving staircases,� the �ESCALATOR� brand no longer had trademark meaning. It became the common everyday name of the goods themselves.
It�s important that you select a strong mark and continue to police it. That�s why trademark owners continue to remind you, for example, that you are photocopying a document, not Xeroxing it. And you are not grabbing a KLEENEX, but a KLEENEX brand tissue. And GOOGLE reminds you that you can only �GOOGLE� on the GOOGLE brand search engine... Make sense? Okay.
So, those are the two big considerations when choosing a mark. Choose a protectable mark - one that is suggestive or arbitrary or fanciful - and be sure to conduct a clearance search to avoid filing a mark that is likely to cause confusion with a previously used or registered mark.
And, there are other factors to consider, though. Some of these may also prevent your mark from registering. Some of the situations to be aware of include where the mark is a surname, where it is geographically descriptive, deceptive, disparaging or offensive, a misspelling of descriptive or generic wording, or an individual�s name or likeness that is being registered without that person�s consent, a title of a single book or a movie, and matter that is purely decorative or ornamental. There are a lot of things to think about.
Yes?
SANDHYA Mark, we have a question here from Conrad. He says he�s looking to expand his business overseas. And are there any additional things he should consider when selecting his mark?
MARK Yes. Definitely. In addition to conducting a clearance search in the country in which you think you might be expanding into, think about how your mark is going to translate into that country�s language. Will it translate into something generic? Or offensive or strange? You might have heard the story about how Kentucky Fried Chicken, when it was expanding into China, it wanted to use its classic phrase �Finger Lickin� Good.� Well, that apparently translates into �Eat your fingers off.� So, maybe not the best marketing phrase.
And keep in mind that there are other possible considerations when dealing with foreign languages. If your mark includes a foreign word or phrase, how will it translate into English? Will it translate into a generic word. �VINO� for �WINE?� Or is the English translation likely to cause confusion with a registered mark? Like, �LUPO� for �WOLF?� So, those are all things you want to keep in mind. Great question, Conrad. Thank you.
That�s a lot to think about, right? Now, I�m not trying to overwhelm you here, but the trademark registration process is pretty complex. It is, technically, a legal proceeding and you have to comply with all of the USPTO�s requirements and rules. Remember, you�re not �buying� a trademark registration. You�re applying for one. That means, if the USPTO refuses your application, your mark will not proceed to registration and, in addition, you will not receive a refund of your filing fee. The filing fee covers the USPTO�s processing costs; it is not a guarantee of registration.
Right. So. Keep in mind, though, that the Office�s mission is to register trademarks. It wants you to file an application that is perfect and ready to go. Okay? No requirements to fix; no refusals to be made. The Office wants you to get it right the first time. And that�s one of the reasons why they�ve invited us here today.
So, in order to help you get it right the first time, the USPTO makes a lot of information available to you on the USPTO website. It�s in the trademarks section of USPTO.GOV. Now, you can download the Basic Facts About Trademarks booklet, you can see application timelines, FAQs, manuals, pretty much anything you want to know about trademarks, you can find it there on the website.
It also has something that I'm quite proud of, a complete series of the Trademark Information Network news broadcast videos, starring a particular knobby-headed newscaster, as well as a fantastic investigative reporter, and that series explains the whole trademark application process from beginning to end. And links to that series are right there on the website.
If you have general questions, you can call or email the Trademark Assistance Center at the USPTO. They�re happy to provide you with as much information as they can and maybe they can point you to some of the relevant materials that are on the website. The phone number is 1-800-786-9199 and email TrademarkAssistanceCenter@uspto.gov. But remember, the information they provide is general information only.
So, while the Office wants to help you as much as it can, there are some limits on what it can do.
For example, the Office cannot provide legal advice. It cannot tell you whether your mark is eligible for registration before you file. It�s also not allowed to conduct a pre-application clearance search for you. The only time the Office considers whether your mark can be registered or conducts a search for conflicting marks is after you have filed your application. Why? Well, that�s because answering those questions requires a complete legal review of your case and your application filing fee covers the cost of that review.
The USPTO cannot enforce your trademark rights or bring legal action against an infringer. It is your legal responsibility to police your trademark and to protect it from infringement. Only you or your attorney may bring legal action against others that are infringing your mark.
So, for all of those reasons, many applicants hire an attorney who specializes in trademark law to represent them throughout the process. And there are multiple benefits to that.
For example, before you file, an attorney can obtain or conduct a trademark clearance search for you.
Now, you can conduct this type of search on your own, but an attorney who specializes in trademark law can provide you with a legal opinion regarding the availability of your mark for use and also for registration and it can help you interpret the results to avoid potential conflicts.
An attorney can also help you navigate the application process, by advising you on what types of marks receive the most protection. They can help you draft an Identification of Goods and Services or select the appropriate specimens to turn in. They can also help you prepare responses to any refusals or requirements that the Office may issue.
Basically, a private attorney can help you understand the scope of your trademark rights and advise you on the best way to maintain and enforce those rights after registration, from filing the proper registration maintenance documents to watching for infringing use.
Yes! Sandhya!
SANDHYA Jacqueline here, says that she would love to hire an attorney, but she�s a small business and doesn�t really have the budget to afford it. She wants to know if any other options are out there for her.
MARK Yes, Jacqueline. You are reading my mind. Thank you very much. I was just going to get to that. So, there are other options.
Most attorneys do charge a fee for their services. But there are, however, free and reduced-price options that may be available, if you meet financial eligibility requirements.
For example, attorney bar associations often have �pro bono� divisions where they provide legal services to those who couldn�t otherwise afford them and sometimes those services will include trademark services.
In addition, the USPTO supports a Law School Clinic program through which law students, working under the guidance of a qualified faculty member, can assist you with your application. Just go to USPTO.GOV and search for the term �Law School Clinic.� You�ll find information about the program, along with a list of participating schools.
There is also free and low cost business advice through the SCORE program run by the Small Business Administration. Check out SCORE.ORG and a SCORE volunteer may be able to assist you with your trademark questions.
Another great program is the Patent and Trademark Resource Center program. Or PTRC program. Now, PTRCs are located all across the country and have been designated by the USPTO to house copies of patent and trademark materials and to make patent and trademark information available to the public. Use the PTRC page, which is on USPTO.GOV, and you can find the location nearest you.
And all of that is in addition to the USPTO website resources I mentioned a few minutes ago. You can review all of the materials, on the website, for free, 24/7.
So, Jacqueline, if you cannot afford an attorney, be sure to check for low-cost and free options, and be sure to use all the available resources and materials to educate yourself as much as possible about the trademark process.
For those of you who are planning to hire an attorney, I can�t recommend one and the USPTO can�t either. But, you can check your local telephone listings. You can do a search on-line. Or check with your local bar association. Whatever you do, make sure to hire one that is licensed in the United States and is experienced in trademark law. This is an investment in your business and you don�t want to waste your money on someone who can�t really help you.
Yes. Sandhya?
SANDHYA Along those same lines, Paula wants to know about these �trademark filing� companies that advertise online. She says they sound tempting, but are they worth it?
MARK Well, you need to be careful and read the fine print because some of the companies out there charge for unnecessary services or for services that they do not actually provide.
Now, companies may offer to help you with your application. And that�s OK, but make sure that an attorney is on staff and handling your case. Only a licensed attorney should assist in the preparation and filing of your application. Now, you�ll also want to make sure that an attorney from the company will be on hand to handle any issues that might arise during the application process. Most applicants receive a letter from the USPTO, called an �Office Action,� that outlines any issues with the application and it requires a legal response.
Now, because some of these trademark filing companies do not include responses to Office Actions in their initial coverage and pricing, you may find yourself needing to pay more money to the company or you may find out that the company doesn�t handle responses and you�ll either need to file the response yourself or hire an attorney to do it for you. Now, be very careful when engaging in business with these companies. Make sure you understand what the filing company lawyer will and will not handle and what fees they will charge you.
And, by the way, after you file, you may receive solicitations from other companies. These solicitations are often made to look like they come from the USPTO, but they�re really not. Avoid those, OK? Unless the correspondence comes from the United States Patent and Trademark Office in Alexandria, VA or from the domain @uspto.gov, it�s a solicitation.
Now, the USPTO website has information about these other types of companies, so be sure to check it out and take a look at the provided examples.
Thank you, Paula.
Alright, folks. Well, that�s the end of my presentation. But before I conclude and open up the floor to more questions, I want to review the high points of what we�ve talked about today.
A trademark is a brand. It indicates the source of your goods and services and distinguishes them from the goods and services of others.
Federally registering your trademark is important because it provides additional benefits and protection for your mark, including nationwide protection.
Selecting a mark is incredibly important, as you want to select a mark that is inherently strong � so, it�s suggestive, fanciful, or arbitrary - and one that isn�t likely to cause confusion with someone else�s mark.
Hiring an attorney to help you with your application isn�t required, but it is highly recommended. If you can�t afford an attorney, be sure to use all the resources that are available on the USPTO website and you can search for free and reduced-cost legal services that may be available through various organizations.
And most importantly, remember that your trademark is the face of your business. When an executive at Coca-Cola was asked what its most valuable asset is, he said that, without question, it�s the Coca-Cola trademark. The company could lose everything and be able to re-build itself, based on the strength of that trademark name alone.
See? Look at it. It�s one of the top brands in the world. Think about your trademark being that important. Makes you realize how powerful a trademark can be.
Now, a registered trademark is also something that investors and lenders and franchisees look for. It is tangible evidence of an intangible asset. And it shows that you�re serious about your brand.
Now, might it be hard work to select and apply for a trademark that is protectable and usable? Sure. But if you ask any single one of the companies that is up here in the top 100 global brands, each and every one of them is going to tell you that it is absolutely worth it. And, who knows, maybe we�ll see one of your trademarks up here on this list one day...
Okay? So, thank you, everyone. Thanks to the USPTO for hosting us. On behalf of Sandhya and me, thanks for coming. And if you have any questions, feel free to step on up. Thanks...