I started hearing a few phrases in a certain community, and would like to make merchandise that has those phrases on it. I want to trademark it so that it does not get copied. I also want to know what happens to any merchandise if someone starts selling the phrases on merchandise before and after trademark?
YOu use it on goods to signify source. Then you can protect it as a slogan. If you have not yet used it, then you can file an ITU application which is an intent to use application stating that you intend to use it to signify source. Your best bet would be to find a great trademark attorney to assist you as many of us charge flat rates to file applications. Also many of us give free initial consultations. Why not use one?
Trademarks are only protected for the class(es) of goods or services you apply them to. They can be registered on a "use" in commerce or an "intent to use" basis. As a beginner, you probably want to review the following page of FAQs (especially "general" and "getting started" - http://www.uspto.gov/learning-and-resources/trademark-faqs
The above is general legal and business analysis. It is not "legal advice" but analysis, and different lawyers may analyse this matter differently, especially if there are additional facts not reflected in the question. I am not your attorney until retained by a written retainer agreement signed by both of us. I am only licensed in California. See also avvo.com terms and conditions item 9, incorporated as if it was reprinted here.
Trademark protection in the US is tied to use in commerce. If someone else used the same thing in commerce before you, that person would have higher rights unless you filed an intent to use TM application before that. Whether there is a problem with someone else using your mark also depends on whether it is the same class of goods or services. You trademark it by filing a trademark application with the US Patent and Trademark Office. (uspto.gov) Their website has a great deal of data that you can look at. But bottom line you should have a clearance search done and get an opinion on that search by a trademark attorney to protect yourself the best possible from potential claims from others and to have the best chance of preventing competing uses once your TM is in use.
Please note: This answer is not intended and should not be considered as legal advice. Such professional advice requires full disclosure to an attorney of a client’s circumstances and that attorney’s opportunity to analyze those circumstances against applicable law.
I would be careful about using phrases you are already hearing from the community. If other people are using them in their commerce, the phrases may already be protected. Registration of a trademark with the USPTO is not the origin of your right to it. If someone in your area can show that they were using it first and that you got it from them, your trademark may be denied. Even if it is not denied, it may be later invalidated if those other people challenge it.
Trademarks aren't monopolies on words or phrases. They're signifiers of source on itemized goods or services. So if by "merchandise" you mean t-shirts, that's class 25, which is clothing, so that class covers hats and socks and shorts, as well as t-shirts. But you have to specify the goods you're actually making and selling, assuming you want to apply for a "use" trademark, rather than an "intent to use" trademark.
Trademarks are not designs. If you want to put some phrases on some merchanise, that's not a trademark, A trademark is a BRAND. Like Hanes t-shiirts. Apple computers. Scotch tape.
So maybe what you really mean is you want to register a name for a merchandisei company and then print phrases on this merchandise. Chances are, you can do this without violating any rights, since short ohrases are not eligible for copyright, and are probably not registered by anyone for a trademark for the reasons mentioned.
It's not so simple, as you see. That's why YOU shouldn't apply for anything. You should hire an IP lawyer, and discuss your plans with them before you apply for anything., Note that USPTO fees are non-refundable, and they charge about $300 per mark and per class, so if you wanted to apply for 3 marks in 3 classes each, for example, clothing, mugs, and calendars, that would cost $2,700 - and that's not counting legal fees. Note also that TM applications done by a lawyer have about twice as good a chance of being accepted by the USPTO as those done by DIYers.
Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.
You should re-read Attorney Koslyn's spot-on response. Selling a product that displays a particular phrase very often does NOT create any trademark rights in that phrase.
Trademark rights arise only when a word, phrase or design is used to signify the SOURCE of the product.
Any other use is simply "ornamental" -- that is, it simply draws attention to the product and motivates a consumer to buy it not because of the reputation of who makes the product but because the product / phrase combination creates an attractive product.
You need to speak with your own California-licensed intellectual property attorney about your business plans. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Just because you place a phrase on a shirt does not make that a trademark. When we say "trademark" it means a source identifier of a good or service. No one can coin a phrase and lay claim to it. So for example, if I started making shirts and placing phrases on them like "love the earth" or "you are the environment" this is just ornamental use. But if I aim to associate my brand with these phrases like Nike does with their tagline "Just Do It" or McD's "I'm Lovin It" then yes it serves as a trademark and you would have to properly clear these before you invest in them.
It is of course best practice to clear it before you start using any trademark and starting with a strong one is your best strategy. Know as well that merely registering your business name with a state or county agency or acquiring a domain does not convey any right to use that name in commerce as a source identifier or trademark. For example, I can presumably register my new tech start up "Boogle" with the CA secretary of state because there is no other business already doing business there under that name, but this does not mean that I would not be infringing on the Google trademark, which I would be. The onus is on you to ensure the name you choose is not a problem.
Your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the links below on the importance of the due diligence process and common start up mistakes from Entrepreneur Magazine and our overview guide.
I suggest that you consult with a lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free consultation, get some insights then pick the best fit to work with and know you are free to work with counsel located anywhere as you have many options available not just those that provide services in your home state.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
A phrase is not protectable as a trademark, unless it can be recognized by the purchasing public as originating from a particular source. So you can only register a phrase as a trademark and enforce the phrase if it is being used (or you plan to use the phrase) on or in connection with the goods and services to market or advertise the product or service. So, putting a phrase on a T shirt will usually not be trademark use, since it is merley ornamental. But having the phrase on a hang tag or in advertising and displays for a product would be trademark use. I suggest that you retain an experienced Trademark Attorney to consider your current or planned usage of the phrase and clear it for use and, if appropriate for Registration.
For more detailed advice, I recommend that you contact an experienced Trademark attorney to advise you in confidence about your options and potential costs. Many IP specialty firms, like ours, offer an initial free conference by telephone, video conference or in person if you are available locally and would be happy to speak with you. Call and speak with an experienced Trademark attorney who can assist you.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
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