Trademark and unfair competition

I’ve been working with lots of folks on registering trademarks and I thought I’d give you a glimpse of what to expect or think about if you are considering trademarking your business name, a logo, or a phrase.

WHAT IS TRADEMARKABLE

Trademark includes any word, name, symbol, or a combination of the those used by a person to identify and distinguish their goods, product or services from those of another. So, logos, names, slogans, podcast names…all can be trademarked.

WHY DOES TRADEMARK EXIST?

First, trademarks exist to help consumers differentiate between brands. Think of it like this: the potato chip isle at the grocery store is a sea of potato chips, and brands want to distinguish their potato chips by saying, “HEY! These are OUR legit Cheetos, Ruffles, Fritos, Tostitos, Doritos…” Big brands don’t want you, as a consumer, buying imitation Doritos thinking they are legit Doritos.

Second, trademarks matter to YOU, the small business owner so you can keep copycats away from your brand. Your branding might include an inventive name for your business, a logo, a cool podcast name, an awesome slogan, or an original name for a product or service or course.

However, not everything can be or should be trademarked. See below for three things to consider when thinking about trademarking.

Step One – Is it worth it?!

Make sure the name or logo or phrase is worth trademarking! A strong mark worth trademarking is distinct, unique, and easily recognizable. It is not just merely descriptive. For example, Apple computers. You don’t associate an apple with a computer, typically. But through branding, marketing, and time, Apple won the right to call that their own! On the other hand, the name “Super Nutrition” for say, a sports drink, is super weak, because it’s not personalized, it’s just descriptive.

Step Two – Is it available?

I recommend hiring a lawyer to do a comprehensive search to see if your name is available. But, if you are doing it yourself, at a minimum, do the following:

First, search the name/logo and variations in spelling through the online system at the United States Patent and Trademark Office using their online search engine. They call this the TESS system (Trademark Electronic Search System) and, also, just plain google it.
Second, if the name is already being used, or has been used in the past, there is so much analysis to be done! Again, hire a lawyer so you understand the likelihood of infringement.

Step Three – How should you register?

Once you know you name is worth trademarking, and you know it is available, it’s time to register!

You file the application online at USPTO.gov.

Two types of registration:

1-A registration. If you are using and have been using for a while.
1-B registration. Intent to use (“ITU”). Typically for new or forthcoming offers that haven’t launched.

There are two types of applications:

TEAS Standard
TEAS Plus

TEAS Plus can ultimately be quicker, and a little less expensive, but it has to you meet all requirements up front.

The TEAS Standard option has very few requirements up front, however you eventually need to meet the additional application requirements later in the process, and you pay a higher fee per class of goods and services ($350/class).

You’ll be asked to identify the type of goods and services–you do this by selecting your goods and services type from the Trademark Identification Manual. It’s probably a good idea to study the manual before you begin your registration.

Timing: Your application should appear in the Trademark Status and Document Retrieval (TSDR) system in about a week. Once you file, you will eventually get Notice of Allowance. Then, you must show them that you are using it. To do this, you may take a screen shot and send it in to USPTO.

Your application will go through the review process, and it can take quite a bit of time, normally around 6 – 8 months.

Wick Law, LLC is a small business legal practice, representing owners, investors, and entrepreneurs in all aspects of commercial, corporate, and business law, estate planning, contracts and negotiations, business litigation, and real estate. For more information: Contact 614-572-6366, visit www.mwicklaw.com, or email us at mwick@mwicklaw.com. Wick Law, LLC is located in Columbus, Ohio.

(Materials in this article have been prepared by Wick Law, LLC for general informational purposes only. This list is for educational purposes and is not to be considered exhaustive. More items could be added to this checklist based upon the type of transaction or industry standards. These materials do not, and are not intended to, constitute legal advice. The information provided is not privileged and does not create an attorney-client relationship with Wick Law, LLC or any of the firm’s lawyers. This checklist is not an offer to represent you. You should not act, or refrain from acting, based upon any information in this checklist. Wick Law, LLC maintains offices in Columbus, Ohio, and has lawyers licensed to practice in Ohio and in the United States District Court, Southern District of Ohio. The firm does not intend to practice law in any jurisdiction where the firm is not licensed.)