A client sent this over a few days ago. Apparently the USTM.US.COM is sending out letters falsely claiming that that applications which are entirely fine have been abandoned and canceled. As if that wasn’t enough to scare you into calling immediately, USTM.US.COM falsely claims another company has filed a new application to register a similar name.
Basically, the USPTO never sends out invoices. Regardless of how official something looks, don’t pay one of these invoices without first either calling the USPTO at 800-786-9199 or ask your attorney.
Ignoring the fact that we offer a money back guarantee when you order the Complete Trademark Search & Filing package, you still might be suspicious that the additional trademark searches are just a shameless up-sell, with no real value, so we can make a few extra bucks. After all, the difference is just a few queries in a few databases, right? Not exactly.
To sum up the value of a comprehensive search in a single paragraph, here’s a quote directly from the U.S. Patent and Trademark Office (USPTO) :
While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark.
From the USPTO’s “What a Private Attorney Could Do to Help Avoid Potential Pitfalls.”
To unpack these ideas a little more, keep reading below.
1. You Risk Investing in Building A Brand That You May Lose in the Future
Trademark law operates on both the federal level and the state level (each of the 50 states have their own trademark statues and case law that have developed over the years). Trademark rights at the state level emerge out of just opening up a business and advertising.
When you apply for a federal trademark, you’re seeking nationwide, exclusive rights to your mark. However, the USPTO only searches the federal database for similar trademarks – so it’s entirely possible to federally register a trademark that you do not have rights to and this can lead to disastrous results.
For example, let’s imagine you just started SUPER SUDS, a new artisan soap company, in sunny California. You took a quick look at the federal database, found no other trademarks with the same name, sent the USPTO an application, and in a few months your mark went onto register without an issue. Trademark secured, you moved on with your life.
In the meantime, a few years have gone by, you’ve built an awesome website at supersuds.com, you have few hundred thousand repeat customers all over the country, 3rd party retail distribution, and you’re spending substantial sums on advertising, month after month to get your brand out there. It’s all working as people are noticing, the phone is ringing off the hook with orders, and your business was just written up favorably in a lifestyle article in the New York Times. You’re thinking of hiring more employees to keep up with demand.
Then you get a certified letter in the mail from the law firm of DreamCrusher & DreamCrusher, LLP. Their client, SUPER SUDZ, a two person soap company that only sells soap from their single, tiny store in downtown Burlington, Vermont saw your great write up in the New York Times. They’re none too pleased you stole their name. They did some digging around and it turns out they were in business for a full 8 years before you. Alleging violations of Vermont state trademark law, based on the fact they had started using the mark earlier than you, they are demanding that you immediately cease selling soap under the SUPER SUDS brand or they’re taking you to court for trademark infringement.
Thus you’re now faced with the decision of either changing your name, losing years of brand equity, and seriously confusing your repeat customer base or spending tens of thousands of dollars litigating the issue or holding onto the hope that SUPER SUDZ might be open to some sort of reasonable settlement.
Having never applied for a federal trademark, SUPER SUDZ did not appear in your quick trademark search of the USPTO database. You had no way of knowing that they existed. If only you had spent a few extra dollars on a comprehensive trademark search when you had the chance.
2. A Trademark Search Report Will Help Protect You If You’re Sued for Trademark Infringement
If you’re ever sued for trademark infringement, you do not want to be in a position where the other side is able to successfully argue that you knowingly infringed upon their mark. A trademark search report is objective evidence that you did everything in your power to ensure that your mark was available for nationwide registration and that your adoption of the mark was reasonable. Without a search report, a skilled attorney is going to argue that you willfully disregarded their client’s trademark rights and forged onwards with no regard to the law. Besides having to find a new trademark and the disruption that will bring to an ongoing business, knowing infringers tend to be on the hook for attorney’s fees (theirs and the other party’s), court costs, profits from the infringed upon mark, and damages (sometimes tripled).
A comprehensive search report covers not only the federally registered marks at the USPTO, but also trademarks that were registered in each of the 50 states, and a search of millions of new and established U.S. businesses, most of which who have not filed for a state or federal trademark (but have applied for a business license or formed a company in their state), and just about every website domain name type available (.com, .net, .org, and about 200 others). Beyond the steps we take in completing a comprehensive trademark search, there’s little more you could do ensure that a name is available to register. A search report is 5 or 10 pages that could make a huge difference if you ever find yourself in court.
Conclusion
Filing and acquiring a federal trademark without a comprehensive search is entirely possible, but carries with it great risks, which may not emerge for years or decades. It’s probably not worth risking your future livelihood to save $300 dollars now.
If you have any questions about registering a trademark, please call us at 800-451-5815 or use the contact us form.
Most businesses have some sort of online presence now and others are nothing but their online presence (in the case of many software companies). We’re frequently asked if a business needs to trademark their domain name in addition to their business name.
If your brand and domain name are the same or nearly the same, trademarking the company’s brand will provide adequate protection and will encompass your domain. Further, by trademarking your brand, it will greatly assist you in stopping unscrupulous competitors from registering similar domain names if their doing so to unfairly confuse your customers (see our UDRP service as one potential remedy to this situation).
On the other hand, if your domain is significantly different from your main brand name, call us to discuss your particular situation. It may or may not make sense to trademark the domain.
If you’re thinking about undertaking a new venture, it’s a great idea to make sure you have rights to your desired name before you invest in advertising and inventory. Doing such can help avoid the situation of having to change your name after you have spent months or years acquiring customers to avoid a trademark infringement law suit. Not only is this situation a huge waste of resources, it would only have a negative impact on your bottom line.
It’s entirely possible to determine if your desired trademark is available and then begin the registration process far before you actually start selling your goods and services. With an intent-to-use application your rights in the applied for trademark start from the day you send in your application. While you don’t have any trademark rights to enforce until you actually start using your trademark in the marketplace, what an intent to use application does give you is priority rights in the name until you do. You can keep an intent-to-use application open for a little over three years before you have to demonstrate to the trademark office that you are actually using the trademark to advertise your goods or services. While the government filing fees associated with an intent-to-use application are a little more, it’s rather inexpensive insurance when you consider the business costs associated with having to change your name several years down the road.
People frequently contact us looking to trademark a name and state that they’ve done their own trademark search on the USPTO website and are certain that there are no conflicting marks. Often, when we go to draft the application there are other registered trademarks turned up in our search that would bar registration. The issue is that a proper trademark search is more than just typing in the exact spelling of your mark and clicking submit.
Trademark law requires that a new prospective trademark not be exactly identical to an already registered mark (which is where most do-it-yourselfers stop) but also that it not be confusingly similar. “Liklihood of confusion” is a fairly expansive legal concept and unless you’re willing to spend many hours learning trademark law (and how to conduct a proper trademark search), there’s a considerable risk that you would submit an application and $325 in non-refundable fees only to be denied registration. Not only do you need to know what to search for, you also need to have a deep enough understanding of trademark law to interpret the results.
We include a free search with every one of our trademark registration packages. If we turn up something that’s likely to bar the registration of your desired trademark, we’ll let you know before the app is submitted and work with you to either come up with a new name or refund your purchase.
Many people have called about trademarking names of books. It seems like a great idea. However, as a general rule, it’s not possible to trademark individual titles. So, if you’ve just written one book, in most cases, you will not be able to secure federal trademark registration.
However, trademark protection is available to series of books. If you’ve written more than one book under the same name you’re in luck. Book series such as “The Hardy Boys,” “Harry Potter,” and all those “Idiot’s Guide” books have been able to secure federal trademark protection.
In general, there is a prohibition on registering trademarks that are primarily one’s last name. The reason behind this rule is that others with the same last name should be able to use their names as well for their business identity.
At the same time, if you can prove to the trademark office that consumers view your name as the source of your particular goods or service and not a a reference to your last name, then it may be possible to secure full federal trademark rights.
Securing rights to a mark that is primarily made up of your last name requires that the facts surrounding your use correspond with the requirements of trademark law. If you are considering trademark registration of a surname, you should consult with a competent trademark attorney to avoid needlessly submitting an application that is certain to not register.