But the interesting story to me, as a trademark attorney, is the name Jobs almost chose.

Jobs initially wanted “MacMan.” In the 80′s and 90′s, Sony established it’s Walkman portable music player as one of the most popular consumer devices of all time. Jobs felt that if a some of those positive feelings rubbed-off on the MacMan, all the better. And, according to Ken Segall, Jobs ” had that I like it thing going on and he followed his heart a lot of the time.”

Meanwhile, Jobs hated “iMac.” The “i” stood for internet, imagination, and individual, which Ken Segall felt made it a no-brainer. He saw that it was ownable as a distinct mark and could become the foundation for an entire lineup of consumer products.

For Apple, and all of us iUsers, it was a good thing that Segall’s reasoning eventually broke through to Jobs. Had Jobs gone with “MacMan,” not only would we likely be carrying the “PodMan,” “PhoneMan,” and dare I say it – “PadMan” – but surely Apple would have walked straight into an epic trademark battle it would likely lose.

Trademarks protect trademark owners from second-comers who, like “MacMan,” would seek to benefit from the goodwill built by the first product’s positive reputation. When courts evaluate whether a similar mark like “MacMan” infringes a mark like “WalkMan,” the court will examine the intent of the accused infringer. Jobs own admission that the “MacMan” was chosen because, in part, it might benefit from goodwill-by-association “with Walkman” would likely have been “MacMan’s” trademark downfall. And with the fall of the “MacMan” name, who knows how far Apple’s brand value would have fallen.

For an in-depth interview with Ken Segall about his time at Apple, check out this article from the New York Times. A portion is reproduced below:

So how did you come up with i in iMac?

It seems like a no-brainer to me. Keep in mind Apple was dying at the time. After Steve had returned, he was betting the company on it, that was the air about all the meetings we had.

We filled walls and did all sorts of stuff. It needed to have the word Mac in the name. And there’s an easy way to get on the Internet. When we went in to show Steve there was such things as MacRocket, another was Macster and MacMan. What Steve liked about MacMan was, we thought it sounded a little like Walkman, and he said Sony is a great consumer electronics company, and if there is a rub-off from that I don’t think it would be a terrible thing. Ten years later Steve wouldn’t feel that way any longer.

Source: New York Times

Q:Where did the Indeed name originate?

Nathan Berndt: We contemplated what we would name our brewery for quite some time while writing our business plan. We’d brainstorm for days and weeks. When we’d find a name we liked, we’d do the due diligence on the availability of it. We’d often find out the name was already in use by someone or it had already been registered with the state. Just before we decided to take a break from the naming process, someone, I think it was Tom, threw out the name “Indeed.” At the time, we weren’t sure about it as a name. After finalizing our business philosophy and mission, the name just seem to fit with our company and brand we are trying to create. We want to first create beer of undeniable quality, while at the same time embracing a mindful and adventurous approach to life. The word, “indeed,” is an affirmation of this mindset that guides our company.

What I love about Mr. Berndt’s answer is the thoughtfulness, patience, and objectivity it shows.

First, the owners brainstormed while working on their business plan. In other words, they didn’t put the cart before the horse. They used the business planning process to help guide their choice for a name.

Second, after they discovered a name they liked, they conducted a due diligence review, exploring federal and state trademark registers for possible conflicts. If the name was already in use, they moved on. This can be especially challenging for start-up businesses, because it’s so easy to get emotionally attached to a name. What’s worse, many businesses fail to even explore the availability of a name before adopting it, only later to find out in a cease-and-desist letter that another business was already using the name, is equally emotionally attached to it, and is now considering filing a trademark infringement lawsuit. Indeed avoided all of this, simply by being patient, thoughtful, and objective.

Third, the owners were persistent. They let their ultimate choice sit for a while as a possible name, and considered it objectively in the context of their overall branding and company mission. And it looks like they had some fun with it too!

Finally, when they settled on Indeed, they filed trademark applications through the USPTO’s intent-to-use process. And they did it thoroughly, too, leading to the following registrations: Indeed Brewing, the Indeed logo, and Midnight Ryder. And one very soon-to-be registered mark, Stir Crazy.

This is not to say things are perfect: Indeed seems to have run into a snag with Day Tripper and Shenanigans Summer Ale. Indeed might also want to think twice about the long-term viability of Haywire and the possible descriptiveness of Fresh Hop for Indeed’s seasonal Wet Hop Pale Ale.

But, all things considered, this is one of the better examples of pre-launch trademark planning by a start-up business that I’ve seen.

So, next time I’m out, I’ll make sure to order an(other) Indeed.

Source: Indeed Brewing Company, www. indeed brewing.com

P.S. My first Indeed came through a friend that used to work with the local artist Chuck U. Chuck U is the man behind the great steampunk artwork on the Indeed cans.

Source: United States Patent and Trademark Office

Patents:

A patent is a grant of exclusive rights over an invention to an inventor by the government. In exchange, the patent is publicly disclosed. These rights allow the holder to exclude others from using or selling the invention.  Patents do not run indefinitely, though. In the United States, patents expire after 20 years.

Interesting Patents:

Patent #6,469 : Abraham Lincoln is the only president to have a patent. In 1849, he was granted a patent for a method of “combining adjustable buoyant air chambers … to enable [ships] to pass over bars, or through shallow water, without discharging their cargos.”

Patent #1 : In 1790, the very first US patent was given. It was signed by George Washington and issued to Samuel Hopkins.  The patent covered a method of making an ingredient used in fertilizer.

Patent #N/A : Despite being a prolific inventor, Benjamin Franklyn never patented any of his designs, saying “that as we enjoy great advantages from the inventions of others, we should be glad of an opportunity to serve others by any invention of ours and this we should do freely and generously.”

Copyright:

Copyright protects original works of authorship (literary, musical, dramatic works, etc.) that  can be reproduced or communicated. A copyright gives the holder the ability to prevent others from reproducing the work.

Copyright Facts:

• Copyright can even extend to magic tricks.  On April 11th, 2012, Teller
  (of Penn and Teller fame), filed suit against another magician for imitating part of his act.
• Mickey Mouse has shaped our modern copyright law.
• There are a lot of myths about copyright.  For example, contrary to popular belief,
  mailing a copy of the work to oneself does not grant additional copyright protection.

Trademarks:

A trademark is a legally registered distinctive sign that identifies a product as coming from a single source. The mark gives the owner ability to restrict how others can use the same
or similar symbols or phrases.  There are three symbols that are primarily identified with trademarks:

Trademark Symbol (™) – This symbol indicates that the preceding mark is a trademark; however, it does not necessarily mean that the mark has been registered.

Service Mark Symbol (℠) – Similar to the trademark symbol, the service mark symbol identifies the mark as indicating a service rather than a product.

Registered Trademark Symbol (®) – This symbol indicates that the previous mark (trademark or service mark) has been registered with a government organization (e.g. USPTO).

Trademark facts:

• Trademarks are not limited to symbols and phrases.  Even scents and shapes can be
  trademarked.
• Trademarks are of immense value to businesses.  They protect the relationship between
  the consumer and the company by guarding the mark that the public associates with the
  trademark holder. Forbes recently identified the most valuable trademarks in the world.
  Google topped the list with its mark valued at $44.3 billion, Microsoft was next at $42.8 billion.
• The Bass & Co. Brewery of England claims  to hold the world’s first trademark. 
  Their pale ale’s red triangle logo was first registered in 1876.

Well, first it’s important to understand how glasses are made today:

Most high-end fashion house brands don’t design or produce their own eyewear. They sell those rights to massive companies that do it all for them. These large companies design, manufacture and sell branded glasses for astronomical prices directly to optical shops and then pay fees to the fashion brands for using their name and logo. Then, optical shops mark up frames and lenses an additional 2-3 times before selling them to you.

This system doesn’t make any sense to us and it hurts you.

The take-away from Warby Parker is that start-ups can get in on the same assembly lines as the fashion brands, but bypass the traditional retail chain model. Start-ups can create a new business around a product with designer quality, but market it through social media and sell directly to the consumer at significantly lower prices, all the while developing a new brand identity in the process. All you need to see is the success of Warby Parker to realize the potential for such new branding.

A well-known example comes from Vermont folk artist Bo Muller-Moore. Bo screen printed shirts with the phrase “Eat More Kale.” These shirts sparked a cease-and-desist letter from Chick-fil-A, alleging that the shirts are likely to cause confusion with and dilution of Chick-fil-A’s trademark to “Eat mor chikin.” The legal pressure has caused Bo to turn to social media to attempt to defend himself. He even raised money to fund a documentary of his legal battle using Kickstarter.

Trademark choices can have serious legal consequences. Without adept representation, even something as simple as a t-shirt can turn into a trademark nightmare.

P.S. A few years ago, David Kappos, Director of the USPTO, came to William Mitchell College of Law as a guest speaker! It was a big event for my alma mater! This video helps explain the differences between trademarks, copyrights, and patents for those unfamiliar with the different types of intellectual property.

TRADEMARK INFORMATION NETWORK
BREAKING NEWS

==================TRANSCRIPT FOLLOWS===================

MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello everyone. And welcome to the Trademark Information Network. I’m Mark Trademan, alongside Sandhya Mahajan, our investigative reporter, and Grant Gainsworth, our Senior News Analyst.

Here at the network, we are dedicated to bringing you the most up-to-date information that will help you apply to register your trademark and, if successful, keep that registration alive. Hope you’ll stay with us throughout the news cycle.

Now, Sandhya, I understand you have a report to start us off. A bit of a coup, I hear?

SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Well, something like that, Mark. One of the first questions that’s always asked is, “What exactly is a trademark?” And “How is that different from a patent? Or a copyright?”

To answer that question, I thought we’d go straight to the source. With me, via satellite, is the Undersecretary of Commerce for Intellectual Property and the Director of the United States Patent and Trademark Office, as well as the Deputy Undersecretary and Deputy Director.

Hello to you both and welcome to the program.

DAVID KAPPOS, DIRECTOR OF THE USPTO:
Well, thanks, Sandhya.

TERESA REA, DEPUTY DIRECTOR OF THE USPTO:
Happy to be here.

MAHAJAN:
Director, let’s begin with you. So, what exactly are patents and trademarks and copyrights?

KAPPOS:
Well, patents, trademarks, and copyrights are all types of intellectual property. They’re often confused, but each one protects a distinct property right.

MAHAJAN:
Such as?

KAPPOS:
Well, patents are technical and scientific; they protect inventions, like machines and ways of manufacturing. Trademarks are business-oriented and protect brand names and slogans and logos. Copyrights are often entertainment-oriented and protect artistic works, like books and movies, paintings and music.

MAHAJAN:
Can you give us an example of the differences between them?

KAPPOS:
Well, sure. Let’s say you have invented a new kind of vacuum cleaner. You’d get a patent to protect the invention itself. You’d register a trademark to protect the brand name of the vacuum cleaner. And you might register a copyright for the TV commercial that you use to market the product.

MAHAJAN:
Interesting. And you protect all three at the Office?

KAPPOS:
We don’t actually. Although all intellectual property is protected by the Constitution, Congress has determined that our office only handles patents and trademarks. Copyrights are registered through the U.S. Copyright Office.

MAHAJAN:
I see. Now, Deputy Director, how do you get a patent or a trademark registration? Do you just fill out a form, pay a fee, and you’re all set?

REA:
Well, sometimes applicants wish that it was that easy, but the process is actually a bit more complex.

MAHAJAN:
How so?

REA:
Well, the law requires that patent and trademark applications must be examined before they can be approved. On the patent side, for example, an invention must be new, useful, and non-obvious. So, our examiners take the time to make sure each application meets that test.

MAHAJAN:
And what about on the trademark side?

REA:
On the trademark side, the examining attorneys make sure the mark complies with all of the legal requirements for registration of a trademark: for example, that the mark isn’t descriptive, generic, or likely to cause confusion with any other registered marks.

MAHAJAN:
Sounds like that can take some time.

REA:
It does, but the examination process is critical to fostering innovation and competitiveness in the marketplace.

KAPPOS:
Which is part of our mission. We are dedicated to providing timely and high quality examination of patent and trademark applications. So, not only do we grant patents and register trademarks, but our examination process gives a layer of protection to those trademarks and patented inventions that are already on the books.

REA:
All while providing the best customer service possible.

KAPPOS:
Well, exactly. You might not always get your patent or register your trademark, but our goal is make sure the process is conducted in a courteous and professional manner from beginning to end.

MAHAJAN:
So, no guarantees, huh?

KAPPOS:
Nope. Sorry!

REA:
But, if I could, I think this is an important point. Applying for a patent or a trademark is, actually, a legal proceeding. So, it’s understandable that the process can take some time to resolve itself.

KAPPOS:
Very true. And I should also point out that we take that process, and our applicants’ experience with it, very seriously. We are constantly working to make the process more efficient and user-friendly so that our applicants can get back to doing what they do best: which is inventing, innovating, and driving our country forward.

MAHAJAN:
Well, I know our viewers will be happy to hear it.

REA:
It’s a top priority!

KAPPOS:
No doubt about it.

MAHAJAN:
Thank you both for being with us. Appreciate your time.

KAPPOS:
Anytime, Sandhya.

REA:
My pleasure.

MAHAJAN:
There you have it, Mark. A breakdown of intellectual property from the folks who know it best.

TRADEMAN:
Excellent work, Sandhya. Thanks for that.

Now, here at the Trademark Information Network, our mission is to help you save time and money when applying for your federal trademark registration. So, to that end, and to help us delve a little deeper into what a trademark is and why you would want to protect one, we turn now to this report, filed by our Senior News Analyst, Grant Gainsworth.

GRANT GAINSWORTH: TMIN SENIOR NEWS ANALYST:
Ancient stone seals. Ceramic pots. Clay bricks. Crumbling now, but still forming the solid foundation of modern trademark law.

From the time that humans began to roam the Earth, people have used marks to indicate the maker or producer of goods. Egyptians, Greeks, and Romans, for example, all used marks to indicate who made particular bricks and ceramics. And, in the case of the Romans, who was to blame should the brickwork fail…

Though the uses of trademarks, and their complexity and design, have evolved, the central meaning of trademarks has remained the same: trademarks indicate source.

What does that mean? Well, to answer that, let’s take a look at what a trademark is. Essentially, a trademark is any word, letter, number, design, or combination of those, that identifies one party as the source of particular goods and services.

Makes sense, right? When you see a logo on a digital camera, or a bunch of bananas, or a pair of jeans, you know who made or produced those goods. You use the logo to distinguish the goods you want from the goods made or produced by a competing brand.

Which explains why trademarks are so important. Over time, trademarks gain reputations. Sometimes good; sometimes bad. But consumers come to expect a certain level of quality based upon that reputation, which then drives their purchasing decisions.

So the question then becomes: “How do I get a trademark?” and “How do I protect it?” For answers, I sat down with the USPTO Commissioner for Trademarks.

So, Commissioner, how do you get a trademark?

DEBBIE COHN, COMMISSIONER FOR TRADEMARKS:
That’s a great question, Grant, and it brings up a fairly common misconception. There’s a difference between using or “getting” a trademark and owning a federal registration for that trademark.

GAINSWORTH:
And what’s that?

COHN:
Well, anytime you use a word, a letter, a number, a design, or a combination of those, to indicate the source of goods or services, that’s a trademark or service mark. In legal parlance, we call that a “common law” mark. You see a “TM” or an “SM” next to a mark sometimes, indicating that the company considers that to be their trademark or service mark, but hasn’t yet federally registered it.

GAINSWORTH:
OK…

COHN:
That’s in contrast with federally registering a trademark, which means that, not only are you using the mark in interstate commerce, but you have federally registered it with the USPTO and can use the “R in the circle” symbol after the mark.

GAINSWORTH:
So you’re saying that a person can have and use a trademark without registering it with the USPTO.

COHN:
That’s right. There’s no requirement that you register your mark with us, or with your state, but you miss out on powerful rights and significant protection for your mark.

GAINSWORTH:
What types of rights and protection are you talking about?

COHN:
Well, there are a whole host of them. Perhaps the greatest asset, however, is nationwide protection. Getting a federal registration means you put the public on notice, throughout the country and U.S. territories, that you have exclusive rights to use that mark. In addition, getting a federal registration creates a legal presumption that you have that exclusive right. And, should you encounter unauthorized use of your mark by another party, you can sue that party in federal court. Those are pretty powerful tools. Plus, you can use your registration as a basis for registering your mark in a foreign country and to stop infringing goods from entering this country.

GAINSWORTH:
Not to mention using the “R in the circle” symbol, right?

COHN:
That’s right.

GAINSWORTH:
Now, does the USPTO enforce and defend trademark rights?

COHN:
We don’t, actually; that duty belongs to the individual trademark owner. But registration does provide a sort-of “automatic” layer of protection: if you have a live federal registration and someone else tries to register a confusingly similar mark on related goods or services, their mark should be refused registration. It’s all part of the thorough examination process the Office performs on every application. So, while we don’t “defend” your mark, per se, the registration process itself does provide a basic level of protection.

GAINSWORTH:
Good to know! Thank you very much, Commissioner, for taking the time to talk with us. I know our viewers appreciate it.

COHN:
You’re very welcome, Grant! Anytime…

GAINSWORTH:
So, remember, folks: a trademark can be any word, letter, number, design, or combination of those, that indicates the source of particular goods and services. Federal registration of your mark is not required, but it does grant you a powerful set of rights that you can use to protect your mark. Rights that ancient brickmakers in Rome never would have dreamed of…

Grant Gainsworth, Trademark Information Network.

TRADEMAN:
Thank you, Grant. Fascinating stuff.

And that’s about all the time we have for this broadcast, ladies and gentlemen. But don’t worry. There are plenty more broadcasts throughout the website, all designed to help you with the registration process: from searching for conflicting marks to filing an application to keeping your registration up to date.

And be sure to check out all the other information found on the USPTO website. There are Basic Facts about Trademarks, News and Notices, Manuals and Guides, not to mention electronic resources that will help you search, file, and maintain your valuable trademark registration.

For Sandhya Mahajan and Grant Gainsworth, I’m Mark Trademan, Trademark Information Network. Thanks for joining us.

====================TRANSCRIPT ENDS====================

P.S. MY favorite part was the comment from the character Barton C.:

Well, I didn’t realize this before I filed my first application, but there are lawyers out there who specialize in trademark law. Which is fantastic, ’cause not only do they do the search to let you know if your mark is eligible for registration, but they also file the application for you and then they’ll handle any problems that might arise through the whole process. I mean, maybe not everybody needs the help, but I figure it’s a legal proceeding. Why not let the lawyer handle it? Know what I mean?

TRADEMARK INFORMATION NETWORK
BREAKING NEWS

==================TRANSCRIPT FOLLOWS===================

MARK TRADEMAN, TMIN NEWS ANCHOR:
Refusals. Delays. Loss of time and money. Usually leading to the death of a trademark application. That’s the report we’re getting from the Trademark Office at this hour. If you fail to search for conflicting marks before filing, improperly fill out the application, or fail to submit the proper supporting documents, you may create major deficiencies in your application. Take a look.

DAVEY V., MUSICIAN:
Yeah, I didn’t really know what I was doing. But, I’m in a band with some friends and we wanted to protect our band name. So, I got on-line after a show one night and filled out the application. Um, but doing it in a rush like that was a mistake because I wasted a year and 325 dollars. Did you know that fee was non-refundable?

TRADEMAN:
So, if you are a first-time filer, wish to avoid delays, or want to avoid an application that is void from the start, stay tuned for some important tips just released by the Trademark Office.

First, use the electronic resources provided to you by the Office. For example, before you even start the application, use the Trademark Electronic Search System, or TESS, to search for marks that are confusingly similar to yours. If there’s a live mark in the system that is similar to yours and used with related goods and services, your application may be refused.

ALICIA E., LIFE COACH:
It’s a good thing I checked, actually. Turns out some guy in Alaska had already filed for the mark I wanted in a related business. So, I just picked a new mark. Saved me a bunch of money…

TRADEMAN:
Second, use the Trademark Electronic Application System, or TEAS, to file your application. Once you start to fill out the application form, remember that the Owner of the Mark is not necessarily the name of the person filling out the form.

If the owner of the trademark is a corporation, partnership, LLC, or other legally formed business, use the name of the business as the Applicant Name. And don’t forget to include the state in which the business is incorporated or organized.

If you alone own the trademark, you may indicate this by filling in your personal name, your country of citizenship, and that you are an Individual. Pay careful attention to this matter or you could end up with a void application.

NOEMI, FASHION DESIGNER:
I screwed up big time! I put down my name, plus my mom’s name, ‘cause she kinda gave me the idea. And also that I was an LLC ‘cause I wanted to file papers for that and I thought, well, if I put it down, I’d file for it, but then I didn’t. It was a mess. I guess I’ll read the form next time!

TRADEMAN:
I’ve just been informed that we have breaking news from the Trademark Office.

Karen, can we go live? OK.

Ladies and gentlemen, we’re taking you live to the USPTO campus. Standing outside the atrium is our own Sandhya Mahajan. Sandhya, what’s the story?

SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Well, Mark, I’ve just been informed that the number one mistake that first time filers make is not understanding that a drawing of the mark is not the same thing as a specimen. Ever.

A drawing of the mark is merely a depiction of the mark by itself, without anything else around it. As you can see from the screen, it could be a Standard Character Mark, meaning you don’t claim rights to any particular style, font, or color. Or, it could be a stylized or Special Form mark.

A specimen, on the other hand, shows how you actually use the mark in commerce in connection with your goods and services. For example, if you use the mark on goods, you’d submit a picture of the mark on a label or hang tag that is attached to the goods. For services, on the other hand, advertising and marketing materials are acceptable, so long as they show the mark being used in the advertising or providing of the services.

Don’t confuse the two and remember: a drawing shows what the mark is; a specimen shows how the mark is used.

That’s all from here, Mark. I’ll let you know if anything else develops.

TRADEMAN:
Thanks, Sandhya; keep us posted.

Now, uh, I guess this is now number four? Make sure to correctly identify your goods or services.

JAMIE H., GENERAL CONTRACTOR:
My goodsy what?

TRADEMAN:
Choose carefully, because an incorrect identification of goods and services could prevent registration down the road. And the Office does not issue refunds.

JAMIE H.:
Learned that the hard way…

TRADEMAN:
If you’re asking what an “identification” is or what is meant by “goods and services,” think about it this way. What do customers purchase from you? An actual physical product that bears your trademark? Or do they hire you to perform an activity for them? If it’s products, you’ve got goods. If it’s activities, you’ve got services. Although the determination of whether you’ve got goods or services can be confusing, it’s critical that you make the correct identification.

To help you along, let’s look at an example that applicants often find confusing: “T-shirts” and the silk screening of t-shirts. Let’s say you designed a bunch of t-shirts and you want to sell them. If a customer purchases one, you’re providing goods: t-shirts. Note that the customer didn’t pay you to perform an activity. He paid you for a “thing.” You, then, are a goods provider and you’d want to identify your goods as “t-shirts.”

On the other hand, let’s say a customer has created a new design that she wants you to print on a t-shirt. If you do as she asks, you’re providing a service: a silk screen printing service. Although the customer does end up with a t-shirt, she didn’t come to you to purchase a “thing.” She hired you to perform an activity. You, then, are a service provider and you’d want to identify your services as “Imprinting messages on t-shirts” or “Silk screen printing.”

But “Wait!” you might be asking. “Don’t I need to put down that I’m selling my t-shirts?” The quick answer is “No.” The selling of your own goods is never a service, but the providing of a convenient place to purchase goods is.

So, if you have a website or a retail store where you provide a place for people to purchase goods, such as t-shirts, then you’d want to identify “retail store services.” For our example here, your services would be “Retail store and online retail store services featuring t-shirts.”

See the difference between them? It can be confusing, but just remember: goods are things that bear your trademark; services are activities that you perform for others.

The Office has a listing of acceptable goods and services in the Trademark Manual of Acceptable Identifications of Goods and Services, also known as the ID Manual. For guidance, spend a few minutes with the ID Manual and see if the Manual contains an identification that accurately reflects your goods and services. If so, use that ID in your application. If not, explain the goods and services in your own words. It’s important to list the correct ID, because you can’t add additional goods and services later and you can’t switch back and forth between goods and services if you get it wrong.

TRADEMAN:
The Office has also indicated that the goods or services you identify should only be those with which you are actually using the mark or have a bona fide intent to use with the mark. Theoretical usage doesn’t count.

RICK A., ENTREPRENEUR/INVENTOR:
Uh, yes, I do. Don’t try to list everything within a class of goods or services. It’s a complete waste of time. There’s no way you’re going to use your mark on everything. Instead, just put down those items on which you’re actually going to use your mark.

TRADEMAN:
Fifth, as you figure out your goods and services, figure out your correct filing basis. If you are already using the mark in interstate commerce, you should file under the Section 1(a) Use-in-Commerce basis. If you are not yet using the mark in interstate commerce, but have a bona fide intent to do so within the next 3 to 4 years, you should file under the Section 1(b) Intent-to-Use basis. For more details on the examination chronology, check out the Application Timeline found on the USPTO website.

Finally, always remember that registration is not instantaneous or guaranteed. Each application must be reviewed for legal requirements and this takes time. Although your application usually will begin to be examined within 3 months, final disposition may be months or years down the road. You may need to respond to refusals by the examining attorney, submit additional paper work, and pay additional fees. This is especially true if you are filing under the Intent to Use basis. You will be required to submit additional forms and you will be required to pay additional fees.

While some applicants complete the application process without assistance from a lawyer, other applicants hire attorneys who specialize in trademark law to help them through the proceedings. The choice is yours; do what is right for you.

BARTON C., SPORTING GOODS STORE OWNER:
Well, I didn’t realize this before I filed my first application, but there are lawyers out there who specialize in trademark law. Which is fantastic, ’cause not only do they do the search to let you know if your mark is eligible for registration, but they also file the application for you and then they’ll handle any problems that might arise through the whole process. I mean, maybe not everybody needs the help, but I figure it’s a legal proceeding. Why not let the lawyer handle it? Know what I mean?

TRADEMAN:
A transcript of this report, a list of these critical application issues, and a printable Application Timeline are all available on the USPTO.GOV website. Remember, these are all general guidelines and may not be directly applicable to your case.

For more breaking coverage on ways to save time and money at the Trademark Office, keep it right here. Additional news segments cover topics in the filing form, as well as what you need to know after you’ve submitted your application. Watch them now and replay them as often as you like. No need to wait for news at 11…

I’m Mark Trademan, Trademark Information Network. We now return you to your regularly scheduled trademark application filing.

====================TRANSCRIPT ENDS====================

P.S. My favorite part was the comment from the character Professor Graham-Lawson:

Searching can be a complex process, so you might want to hire an experienced trademark attorney to help you along. Your attorney will be able to help you make the determination of whether or not a likelihood of confusion exists with your mark. And remember, the USPTO cannot aid in the selection of an attorney, so be sure to check online or with your local Bar Association for an experienced one.

TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
Hello, everyone, and welcome to a special edition of “Trademan’s Trademark Talkback.” Where you ask the questions you want and we give you the answers you need. Thanks for all your e-mails, texts, video chats, and everything else you send in; keep ‘em coming. We’ll try and take more throughout the show. With me, as always, is our Senior News Analyst, Grant Gainsworth, as well as our very special guest. You know her as an author, an educator, and a frequent contributor to this program, Professor Christina Graham-Lawson. Professor, welcome back.

CHRISTINA GRAHAM-LAWSON, PROFESSOR OF LAW:
Thanks, Mark. Happy to be back.

TRADEMAN:
Well, let’s get right to it. First up: Janet in Springdale, Arkansas e-mails, “The USPTO recommends doing a ‘search’ before filing a trademark application. What does that mean?” Professor, would you like to take this one?

GRAHAM-LAWSON:
Certainly. The USPTO recommends doing a search of existing trademarks because the more you know before filing about what is on the USPTO’s Trademark register, the better decisions you might make.

To explain that a little further, Janet, let me give you some background. The first thing to understand is that the federal registration of your trademark is not guaranteed. There’s an examination process, a review process, that every mark goes through. Procedural things have to be right. There can’t be any substantive problems… There are a lot of moving parts, OK?

One of those parts, those issues, is what is known as a “likelihood of confusion” between your trademark and a mark that has already been applied for or registered. If there is a likelihood of confusion, your mark will be refused.

So, to help you avoid that situation, the USPTO recommends that you search their database of registered and applied-for marks before filing. Knowledge is power, as the saying goes, and searching might help you decide whether filing is right for you. It can help you make an informed choice.

TRADEMAN:
Good question, Janet. Thanks for the e-mail. Raj, in Fremont, California had this to say:

RAJ, CALL-IN GUEST:
Okay, so if I file for a mark and some other guy with the same mark files after me, can he, like, leapfrog me to get to registration?

TRADEMAN:
Grant, you’re the office expert. You want to take it?

GRANT GAINSWORTH, TMIN SENIOR NEW ANALYST:
Sure. Not exactly, Raj. The USPTO reviews applications in the order received. And when you file, you’re assigned a filing date. That filing date means you are presumed to have priority over applications with a later date. So, if an application filed after yours is likely to cause confusion with yours, that application will be blocked, or, technically, suspended, until your application either registers or goes abandoned.

Remember, though, that the priority created by a filing date is not absolute. You might have really strong rights based on long use of your mark, for example, even if this is the first time you’ve filed for a federal registration. So, if you’re second in line, and you have stronger rights than the applicant in front of you, you may be able to intervene with an opposition proceeding and prevent that application from registering. So while there’s no leapfrogging, the second in line does have an opportunity to assert superior rights at the proper time in the overall registration process.

TRADEMAN:
OK, Raj. Hope that helps. Just got a text from a mobile phone user in Middlebury, Vermont: Whasup with Like of Confus? The prof skipt ovr it. More info pls!

Alright, Professor. Sounds like we have a viewer who wants additional information about what is meant by “likelihood of confusion.”

GRAHAM-LAWSON:
No problem. Basically, “likelihood of confusion” means that consumers are likely to be confused by the use of similar marks on related goods and services, such that consumers mistakenly think that all the goods and services are coming from the same company, when they’re really not.

There are a lot of factors that go into this analysis, but let me give you a very basic example. Let’s say you use the brand name “TEE MARQEE” for your t-shirts and there’s another company that uses “T.MARKEY” for their hats. That’s a problem. Because the marks are similar in sound and hats and t-shirts are often produced by the same company (meaning those goods are related), there’s a likelihood of confusion.

Remember: same or similar mark; related goods and services. So, in this case, when consumers hear “T.MARKEY,” they’re going to assume that both the hats and the t-shirts are coming from the same company. That’s a likelihood of confusion.

TRADEMAN:
And what makes that bad?

GRAHAM-LAWSON:
Well, think back to what a trademark does: it indicates the source of particular goods and services. If a trademark creates confusion with another trademark, it’s not really doing its job. And the practical effect is that consumers might buy a product expecting it’s from a company that they know and trust, when the product is really from some other company. So, under the law, you may not register a trademark that is likely to cause confusion with other marks.

TRADEMAN:
Alright. Thanks for the text- uh, OK, just got word from our producer that there is more information about likelihood of confusion on the USPTO.GOV website. Let’s roll that footage, Karen.

OK. As you can see, there’s a larger explanation of likelihood of confusion, along with some examples. Great. That should help. Check it out, folks.

OK. We have a video chat from Willa. Willa, go ahead.

WILLA, CALL-IN GUEST:
So, I sent in my application and got back this letter from a USPTO examining attorney and she said she did her own search of trademark records. So, I guess my question is, if the Office does its own search, why do I need to search? Oh, and was I supposed to search? ‘Cause I didn’t.

TRADEMAN:
I think you touched on this a little earlier, Christina.

GRAHAM-LAWSON:
Here’s the deal, Willa. Yes, it’s true that examining attorneys conduct their own searches of the USPTO database. They’re required to, under the law. But, they conduct this search after you’ve filed. And if their search reveals that your mark is likely to cause confusion with a live trademark in the system, you get a refusal. And the Office can’t give you a refund.

WILLA:
Couldn’t I just change my mark?

GRAHAM-LAWSON:
Well, the ability to change, or “amend,” your mark after filing is very rare and only applies in select circumstances. And any amendment that would overcome a likelihood of confusion refusal probably isn’t covered by those limited circumstances.

But that leads me to my point: if the examining attorney can find the conflicting mark in the database, it’s there for you to find too. So, if your search uncovers a mark that will block yours and you decide to register a different one instead, you’ve just saved yourself hundreds of dollars, months of time, and plenty of frustration.

WILLA:
Can’t the USPTO do the search before I file?

GRAHAM-LAWSON:
Unfortunately, no. The USPTO will not conduct preliminary trademark searches and it cannot help you assess whether to file.

TRADEMAN:
OK…

GAINSWORTH:
Mark, if I could tack on here. I just want to remind viewers that not every application receives a likelihood of confusion refusal. Based on our conversation here, it might sound like it, but your search might come up clean, with no likelihood of confusion issues. Same with the examining attorney’s search. Now, of course, your mark could be refused for other reasons, but just remember that the USPTO does not always issue a likelihood of confusion refusal.

TRADEMAN:
Good point, Grant- though let me get this straight, based on what you two have talked about over the last few minutes. Focusing on the issue of likelihood of confusion alone, it sounds like there are several times it can rear its head during the application process: Before you file, when you do your own search; After you file, if the examining attorney finds something you missed; and then, essentially, whenever an earlier user of the mark asserts rights in that mark, even if that person, or company, has not yet registered the mark. Is that correct?

GRAHAM-LAWSON:
Correct.

TRADEMAN:
Then what’s the point of searching? It doesn’t sound like it’s worth it.

GRAHAM-LAWSON:
It is, though, yes. Because think about it- let me give you an example: if the USPTO database already contains an application or registration for the same mark for goods and services related to yours, don’t you want to know before you pay the filing fee? You want to minimize the odds that you’ll get a refusal. Or that someone will pop out of the woodwork and challenge your use of the trademark.

TRADEMAN:
So, how do you do that?

GRAHAM-LAWSON:
You have options. There are attorneys out there who specialize in trademarks and they routinely conduct the types of searches we’re talking about. They’re known as “clearance searches.” The attorneys look for common law trademarks and state and federal trademark applications and registrations that might conflict with your mark. And, if you want, the attorney can help you with the rest of the application process.

Of course, you always have the option to do it on your own. There are no set rules on the best way to conduct a thorough search, but it at least includes going to USPTO.GOV and using the Trademark Electronic Search System (also known as TESS) to look for federal registrations and applications that might conflict with your mark.

While you’re online, use your favorite search engine and see if the results show anyone using a mark similar to yours for related goods and services.

And I’d also check out state-level Secretary of State websites and see what’s in the state trademark databases.

A thorough search will include other resources, but these are some good starting off points for finding what’s out there, covering federal, state, and common law trademarks.

TRADEMAN:
Sounds like a lot of work.

GRAHAM-LAWSON:
It is, but selecting and protecting your trademark is part of building your business. It’s an investment in the goodwill and reputation of your company, so you want to take the time to do it right.

TRADEMAN:
Sound advice from Professor Graham-Lawson. Looks like we can squeeze in one more e-mail: Estevan in San Juan says, “I’m planning to do a search on my own. Can we have more information about TESS?” Grant?

GAINSWORTH:
Well, as Christina said, TESS is available through the USPTO.GOV website. As you can see, you can use the system to search for word marks, design marks, and combinations of words and designs.

Before you begin, though, take a look at the “TESS TIPS” and be sure you read and understand them. The tips give you an explanation of what the USPTO database includes, how to construct a complete search, and how to interpret the search results.

Also be sure to consult the Help page. In addition to providing tips for more efficient searching, the Help section provides lots of critical information about using TESS. Including a Glossary, Frequently Asked Questions, and sample searches.

TRADEMAN:
There you go, Estevan; hope that helps you. Any final thoughts, Grant?

GAINSWORTH:
Yes, I think Christina mentioned this already, but I want our viewers to remember that a TESS search only includes federal trademark registrations and applications. To do a complete clearance search, you need to check other resources for state registrations and common law trademarks.

TRADEMAN:
Christina?

GRAHAM-LAWSON:
Searching can be a complex process, so you might want to hire an experienced trademark attorney to help you along. Your attorney will be able to help you make the determination of whether or not a likelihood of confusion exists with your mark. And remember, the USPTO cannot aid in the selection of an attorney, so be sure to check online or with your local Bar Association for an experienced one.

TRADEMAN:
OK; great. Thanks to you both. That’s all the time we have for today. We’ll try to get to more of your calls and e-mails and chats next time. In the meantime, feel free to replay this broadcast as many time as you need and print out the available transcript. And keep an eye out for more of these broadcasts throughout the website.

With special thanks to Grant Gainsworth and Professor Christina Graham-Lawson, I’m Mark Trademark, Trademark Information Network.

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P.S. The warning in the beginning is VERY important:

I know, I know, it’s a “name” section, right? It should be easy. Wrong. More applicants incorrectly fill out this section than just about any other. And that’s not good. If this section is incorrect, your application may be void and you will have lost valuable time and your non-refundable application filing fee.

TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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MARK TRADEMAN, TMIN NEWS ANCHOR:
I know, I know, it’s a “name” section, right? It should be easy. Wrong. More applicants incorrectly fill out this section than just about any other. And that’s not good. If this section is incorrect, your application may be void and you will have lost valuable time and your non-refundable application filing fee.

Remember that the Owner of the Mark is not necessarily the name of the person filling out the form. The Owner of the Mark is the legal entity that owns the mark. It could be an LLC, a corporation, or perhaps an individual citizen. Let’s take a look at some common examples.

If the owner of the mark is an LLC or corporation, use the company name as the Applicant Name. And don’t forget to include the state in which the business is organized or incorporated.

If the owner of the mark is a legally formed partnership, use the partnership name as the Applicant Name and identify the state in which the partnership is legally formed. In addition, you must include both the names and the countries of citizenship (or entities and states of organization) of the general partners.

If you, as an individual, own the mark with someone else, but have not formed a legal business partnership, you may be joint applicants, not a partnership. If so, you must provide information about each joint applicant. To begin, fill in your personal name as the Owner of the Mark, indicate you are an Individual, as well as provide your Citizenship. After filling in the contact information, click Add Owner at the bottom of the page. This will allow you to add the Name, Citizenship, and Contact information for the person with whom you are jointly applying. If there are more than two of you, be sure to click Add Owner and supply the required information for each individual joint applicant.

Another small business entity type is the Sole Proprietorship. Laws concerning the formation of this entity vary state by state, but it is typically a legally recognized business owned and operated by a single individual. Here, indicate the name of the Sole Proprietorship as the Owner of the Mark and click on Sole Proprietorship. Click on the state in which your business is legally organized and indicate your personal name and citizenship. All of this information is required, so make sure you don’t forget to include it.

If none of these situations apply to you and you alone own the trademark, indicate this by filling in your personal name, your personal contact information, click that you are an Individual, and provide your country of citizenship.

Easy enough, right? Or, at least, not as confusing as it might have been?

Feel free to replay this video and click on any of the links within the form for more information. And keep an eye out for more of these videos throughout the website.

I’m Mark Trademan, Trademark Information Network.

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P.S. Although the host says this is the easiest part of the application, I have actually seen mistakes made to the drawing. These mistakes can’t be undone; unfortunately, the only fix is to refile the application and pay a second application fee of $325!

TRADEMARK INFORMATION NETWORK
BREAKING NEWS

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SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Thankfully, this is one of the easiest parts of the application. But don’t relax too much; it is critical that you complete this section correctly.

The depiction of the mark you submit now is what will appear on your registration certificate once the application process is completed. And remember: you cannot add or subtract words and designs to the mark throughout the process, except in very rare circumstances. So, the mark you submit now is what will register later. And you want it to look perfect, right?

Before we talk about some of the important issues in this section, you should know a quick definition. Sometimes you will see official documents that refer to a mark “drawing.” Don’t be alarmed; there’s no sketching involved… The word “drawing” merely refers to a “depiction of the mark.”

A mark may appear as a Standard Character mark or as a Special Form mark. A Standard Character mark is the most flexible of all mark depictions. It grants protection to the wording itself, without regard to the font, style, size, or color. Although the mark looks like plain typed wording when registered, a Standard Character mark means that you can change how you display the wording over the life of the trademark. Not bad for a simple looking mark, right?

A Special Form mark, on the other hand, is a mark that comprises special characteristics, like fonts or designs or colors. Special Form marks can be broken down into two categories: Stylized marks and Design marks. A Stylized mark is a mark in which the wording appears in a particular font. A Design mark can be a composite mark, in which you protect wording that is combined with a design. Or, it can be a mark comprised of design elements alone.

Remember, then, to submit a Special Form drawing when you want trademark protection for a particular design, stylization of wording, or combination of the two. If you want protection for wording alone, without regard to font, style, or color, the Standard Character format might be the one for you.

When submitting a Special Form drawing, you must also comply with additional requirements. After uploading the mark image, you will see a field for entering the “literal element.” This field is used to indicate all of the words that appear in the attached mark image. Do not use this field to add words, letters, or numbers that do not appear in the attached image. The submitted image must be complete and depict your entire mark. Then, you must submit a complete description of the mark. It can be simple and very straightforward.

If the mark is in color, you must claim each of the colors in the mark and indicate the location of each of the colors within the mark. Be sure to be complete and precise. If you do not wish to claim any particular colors, simply submit a depiction of the mark in black and white and indicate that no colors are claimed.

Because of all of the additional requirements and limitations created by color Special Form marks, most applicants apply either for Standard Character marks or for Special Form marks that appear in black and white. This allows them the greatest flexibility in use of their marks as their businesses grow and change over the years.

I know that’s a lot of terms and information, so feel free to replay this video. And look for more videos and links to information throughout the website.

I’m Sandhya Mahajan, Trademark Information Network.

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