Expert: Shannon Moore - 6/22/2010

Question
QUESTION: I'm putting together an on-line contest and have come up with, what I feel is, a good name for it.  The contest name is made up of two words. I did an "Advanced Search" on Google, asking for exact phrase only, and nothing came up. What would be my next step to securing a copyright on my contest name? Do I need to be concerned about exposing the name to anyone who might try to get it before I do, and selling it to me?

ANSWER: Dear Dave,

My apologies for the delay - I was having trouble logging into the site until today.

You wouldn't copyright it. Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

To protect a 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.

It's necessary to have comprehensive research on the mark done prior to filing to ensure that there is no possibility of infringing upon another party.

This entails searches of 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.

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: Thank you for clearing up several things for me.  I need a Federal trademark.

What's the best (cheapest) way to have (or do) this comprehensive search?  I don't understand the search process?  What is a "comprehensive" word search?  It seems to me that it ought to be pretty simple to do a word search these days?  Can someone actually have the words I want to use for my contest name registered, and yet not have them accessible on the world wide web?  And if they're not listed digitally, how can one possibly read thru every registered set of words? - unless they've been alphabetized, and if they're listed alphabetically, why would that search be difficult?

ANSWER: Dear Dave,

A comprehensive search of a name entails searches of the pending & registered Federal and State trademark files as well as the US National Common-Law files. This type of search is done by research companies or attorneys.

Definitely search the internet as much as you can since it's free. But access to the thousands of databases is not what the general public typically has access to as well as the know-how of the different ways a search should be conducted. Here's a few articles I wrote about the problems with relying on the USPTO as a search engine:

http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarksound.htm
http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarkappearance.htm
http://www.tmexpress.com/newsletter/archive/2008/07-2008/trademarkmeaning.htm

Yes, an applicant can have what's called an Intent to Use filing, which means they are taking the steps to register the name but have not yet used it yet. When this is the case often times the only database they show up in is in the Federal database.

No databases are not organized that way. Since we're talking about millions of records to go through, companies or attorneys use various database providers to search through them. A comprehensive search consists of looking for similarities in Sound, Appearance or Meaning.

Here's an article on how to do an effective PRELIMINARY search: http://www.tmexpress.com/newsletter/archive/2008/08-2008/preliminarytrademarksea

Let me know if you have any other questions.

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: Patent attorneys are so expensive!  What do you think of on-line companies that will hold my hand thru this - like, Trademarkia, LegalZoom, or TradeMark Express?

I just used LegalZoom to take me thru copyrighting my first song (I just mailed the required music info today).  It was very user friendly.

Answer
Dear Dave,

To be clear, you're looking at trademarks, not patents.

I'm certainly biased as I'm the General Manager for TradeMark Express but yes, you can certainly go through trademark research & application companies to accomplish the trademark process versus hiring an attorney. If you'd like further details on what we do, feel free to email me directly at shannon@tmexpress.com

I can be unbiased in saying that you should, please, be sure that what you're paying for includes COMPREHENSIVE research of the trademark AND common-law files as well as application preparation & submission. Additional benefits like attorney referral, same day, step by step, etc. are good things to keep an eye out for too.

Let me know if you have any other questions.

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