Trademark, Part II, How Do I File?

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Previously, I wrote about how owning a domain name may not be enough to protect your brand and your professional identity. The next step is to get a trademark.

Applying for a trademark is kinda like applying for college. You have to do a whole bunch of crap and jump through lots of hoops, and then you have to wait a year before anything comes of it. But, much like college apps, if you do it right and all works well it can be a critical step in building a great future.

So how do you do it?

First, Pick the Right Name

First thing you do is pick the right name. The best names, for trademark purposes, are fanciful ones. An example of a fanciful name is Kodak or Exxon. Neither of those names had any meaning in the English language before the brands came along. Thus, there wasn’t any real danger for anyone to challenge their trademarks on the basis that they had been previously using the name.

Next best is an arbitrary name. An example of an arbitrary name is Apple Computers. While Apple is a common word, the decision to connect “Apple” to the computer industry is arbitrary, and thus, an arbitrary name. The third type of name is a suggestive name. Examples of this include “Greyhound” and “Playboy.” While you might guess that Playboy Magazine has racy photos and caters to philanderers, it’s not necessarily implicit from the name itself.

The last type of name is a descriptive trademark. An example of this is “Soccersavings.com” or “Running Warehouse.” The only thing this business name does is to describe what the business is. The problem with these names is that it is next to impossible to get a trademark on them. That’s not to say that you can’t have a successful business with these types of names, but at least for the first five years you’re in business, there’s nothing you can do to prevent someone else from starting a business with the exact same name.

Do the Search

The next step is to make sure that no other business already owns the trademark. Only problem is that a trademark search doesn’t just mean searching for brands that are spelled exactly like your business. You have to search for near misses and very similar names in similar industries as well.

The important question is whether your brand will create a “likelihood of confusion” with a similar brand. Cleo Cola couldn’t get a trademark because it was too close to Coca Cola. In the startup world, there are a million different companies starting businesses right now with names that include the word “cloud.” It’s not unreasonable to expect a few of them to get shut down because their names are too close to a competitor’s. If you’re one of those companies, it’s not a bad idea to start thinking about going early to the land-grab and letting the USPTO know you got there first.

Do the App

Last but not least, you have to file the application. There are two types of applications. Teas and Teas Plus. Teas Plus has stricter requirements and costs $50 less per class.

I could write another three blog posts about why Teas Plus sucks. Just trust me and don’t use it. Or use it and hire me later to fix whatever mess you got into because you decided to use it in the first place. Either way is fine. But for your sake I’d recommend the former course of action.

Once you’ve chosen Teas, you enter your information, the information about the mark you want to register, choose the basis for filing and class of goods and services under which you’re registering, and then upload a version of the mark. After that, your attorney will sign his or her life on the line.

Then what?

After that, you wait. Assuming no one objects to your application and all goes well, it’ll take about a year for you to get your official certificate of registration. Admittedly, it’s a pain in the butt of a process. But if you’re serious about your brand and your business, there’s no other way to make sure that you own your identity.

If you’re thinking of spending thousands of dollars developing your brand, make sure you don’t have to spend thousands of dollars again when you find out someone else has a right to take it away from you.

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