Expert: Shannon Moore - 2/10/2010

Question
QUESTION: Hi Shannon.

Basically, I have an idea for a name that I've always wanted to use for a record company.  It may be many years before I can make that record label a reality, but I would like to patent the name in advance so nobody can steal it before I get there.

Through Google, I see that a few people have used this name, but each is very informal, and I have a strong sense that none of them hold patents on the name.

Is the process of patenting a name complex and time-consuming?  I'm not sure where to look.  Also, do you know what patenting a name might cost?  Who collects the payment--the federal government?

Many thanks,
Chris


ANSWER: Dear Chris,

You wouldn't patent it; to protect an original invention OR a significant improvement to an existing product, a patent would be filed. Here's the USPTO's definition: http://www.uspto.gov/web/offices/pac/doc/general/index.html#patent

To protect a business name within your industry, you would apply for a trademark.

Trademarks can be names of products or services, logos, slogans, packaging and even sounds and smells. In essence, a trademark can be almost anything that is used to identify a particular product or service. Registering a trademark grants the owner exclusive rights to the mark within the specified industry.

Of course, it's necessary to research the mark comprehensively prior to filing to ensure that there is no possibility of infringing upon another party.

This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files. Then, if clear, you can decide if you would like to file for a Federal or a State trademark.

To register a trademark, that's done either through your Secretary of State for a State trademark or the US Patent & Trademark Office for a Federal trademark.

If you are only conducting business in one state, then a State trademark is most appropriate. If you conduct (OR are planning to conduct) business in at least 2 states OR between the US & any other country, you can file for a Federal trademark. The Federal government, USPTO, charges $325 per classification. State fees vary, from $10 to $120.

Hope that helps! I wish you much success & happiness in all your ventures! If you'd like further details on comprehensive research, please let me know.

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com
Twitter @TradeMarkExpres


---------- FOLLOW-UP ----------

QUESTION: Hello again, Shannon.

You mentioned two things I'm wondering about:

You wrote:

"This entails searching the pending & registered Federal and State trademark files as well as the US National Common-Law files."

Is there a website where this can be done?  I'm looking for a time-efficient way to check on the name I want to register for a trademark, and I don't really know where to begin.

"Then, if clear, you can decide if you would like to file for a Federal or a State trademark. To register a trademark, that's done either through your Secretary of State for a State trademark or the US Patent & Trademark Office for a Federal trademark."

I would definitely want to file for a Federal trademark.  Should I just look for a USPTO website?

I really appreciate your help!
Chris

ANSWER: Dear Chris,

Here are some links where you can do some preliminary checking. However, please be aware that this is merely scratching the surface of what's out there.

http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4010:mc7tt1.1.1 -- USPTO – Preliminary Search of Federal trademarks
http://www.statelocalgov.net/50states-secretary-state.cfm --Go to your state's Secretary of State page to see if they have a searchable database of business names
http://www.hoovers.com/free/
http://www.thomasnet.com – Must register (free) to search their database

Only comprehensive research will tell you if the name is truly available. But, these links are free & a great place to start, so I'd try them out first.

Comprehensive research consists of looking at marks that are similar in Sound, Appearance or Meaning in the pending & registered Federal AND State trademark files as well as the US National Common-Law files. These services are offered by attorneys or research companies, like the one I manage.

Filing a trademark application can be tricky as the USPTO is very picky about how it's filled. Look here for further info:

http://www.uspto.gov/main/trademarks.htm -- USPTO's Main Trademark Page

Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com
Twitter @TradeMarkExpres

---------- FOLLOW-UP ----------

QUESTION: Hello again Shannon.

So I've finally visited the USTPO and, according to my research, I can proceed with the initital application since no other entity has rights to the mark I want to use.  (It's just a standard character format mark.)  It is my understanding that I'll complete the Initial Application and an ITU.  This apparently witll cost a non-refundable $325, which is fine, but assuming it passes and gets an NOA, I will then have to sign an SOU within 6 months and pay another $100.  That's also fine.

My concern is that it will be many years before I can ACTUALLY USE this word to be the name for a company.  So will all this be in vain if I don't actually make use of the mark for business purposes in the near future?  

Essentially:  If I file an SOU and don't actually make use of it, will it all expire and I'll have to apply and file and pay fees again in the future?  Or, will these steps be "permanent" and my trademark will be "mine" to use or sell to someone else who can actually start up a business using it?

Thanks again.
Chris

Answer
Hi Chris,

First, I want to be clear that just because the USPTO site shows the name as available does NOT mean it is - there are many flaws to that engine, never mind the fact that it's missing State trademark or Common-Law databases. I wrote a series about these flaws:

Flaw #1, Sound: http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarksound.htm
Flaw #2, Appearance: http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarkappearance.htm
Flaw #3, Meaning: http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarkmeaning.htm

Second, you are correct about the fees and the procedure for the ITU. Once the NOA is mailed, you do have 6 months to respond - either with a SOU or an extension for another 6 months. These extensions are $150 per class and you can file 5 extensions. So really as long as you stay on top of those extensions, you can maintain a pending trademark for about 3 years. Please be aware "you must use the mark in commerce and file an SOU within three years (36 months) of the NOA issuance date."

Hope that helps! I wish you much success & happiness in all your ventures!

Warmest regards,
Shannon Moore
http://www.tmexpress.com
http://tmexpress.blogspot.com
Twitter @TradeMarkExpres