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The Trademark Process

Written by: Nancy Baum Delain

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Intellectual Property Trademarks

Posted over 2 years ago. 0 helpful votes, 0 comments

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Name Your Baby — But Don't Wed the Name

Your first step is brainstorming. You have the perfect product and you want it to stand out in the marketplace. It needs an original name that has nothing to do with what it is or what it does. You need to come up with a list of three to six names. The names you come up with should have nothing to do with what the product or service actually is. If you can make up a word, that would give you the strongest trademark protection; next strongest is to use an existing word in a way that has nothing to do with its dictionary meaning; the weakest of the immediately granted marks is a word that suggests what the product/service is; descriptive marks, that describe the product/service, must acquire secondary meaning before they issue. Generic marks (calling a spade a spade) never issue as registered trademarks.

Search Out Your Baby's Name

Run a search of the US Patent and Trademark Office's database looking for your product/service's name. If that comes up clear, run a search of each state's trademark database (some you can do online, some you have to call, two you have to pay for — these two states each charge a small fee to run the mark through their databases). If your state search comes up clear, run your name through a translator to be sure it doesn't mean something offensive is some obscure language. If you plan to market your product/service internationally, you will want to run a search of the trademarks in the countries where you plan to market. <br><br> If any one of these searches indicates that your name may not be available, repeat the search step with the next name on your list.

Start Using Your Baby's Name as a Trademark or Service Mark

Start using the name in public in association with your product or service — and put ™ next to it every time you do. Trademark is a use-it-or-lose-it proposition, and it is far easier and cheaper to get a mark on a name that is in actual use in interstate commerce (that means you sell the product in more than one state within the United States, or you have a website up that uses your mark as a mark. Note that Ohio, New York, California, Minnesota and Texas are states; Canada and Mexico are not states for this purpose).

Register Your Baby

File your trademark registration with the US Patent & Trademark Office online, using the proper class(es) and paying the appropriate fees. Once the mark is in use in interstate commerce (see the definition of "interstate commerce" in Step 3), you are eligible to register it with the US Patent and Trademark Office. If your mark is used within one state only, you are eligible to register it with that state's trademark registry. Optionally, file your ™ application in every country in which you plan to do business. Each country has its own procedures and criteria; check with local counsel in each country in which you plan to register. If you're feeling brave, file for registration under the Madrid Protocol (the USPTO has a nice explanation of Madrid on its website). Madrid allows you to file one registration for multiple countries, but it is a complex treaty in and of itself.

Respond Timely to Keep Your Baby Alive

The trademark examiner may issue an Office Action to refuse to register your mark AS IT STANDS in the registration. This sometimes cannot be overcome, but is often simply a question from the examiner. In the US, you have six months from the date the examiner issues his/her Office Action to respond to it; no extensions are available. If you fail to respond within the allotted timeframe, the mark will become abandoned, examination will cease and the registration for the mark will not issue.

Celebrate Your Baby's Registration

Congratulations!! The examiner has issued a registration for your trademark or service mark. Pop the champagne cork!!

Support Your Child

Trademarks require that periodic maintenance fees be paid to the US Patent & Trademark Office to maintain registration. Pay your fees timely. The first is due five years after issuance. The second is due 10 years after issuance. Further fees are due every 10 years after that.

Additional Resources

The US Patent and Trademark Office's website is a plethora of clear, understandable, reasonably well organized information.

The World Intellectual Property Organization's website is an excellent resource for foreign filing information and information on treaties that affect intellectual property.

US Patent & Trademark Office

World Intellectual Property Organization