Thank you Toni for starting this thread. I am in the midst of trademarking something and so I’ll be bugging you with some questions very soon!

Your welcome Heidi, I am sure there are a lot
of folks on EN that might benefit from the answers to a lot of trademark questions.

Great idea for a thread, Toni!

If one trademarks a series of names as one mark, does that automatically mean you own every logical component of said mark? For instance: “Edison Nation Presents Everyday Edisons™”. Will this now cover “Edison Nation™” and “Everyday Edisons™”?

Thanks.

I am 99% sure that the answer is yes. But let’s
see what some others say.

Hey Gavin, I hope someone logs on and helps you out
with an answer.

Gavin and Toni…I am interested in the answer to that question as well. Would a phrase then be covered if you broke it up? Also, if you trademarked a phrase, are you obligated to use the whole phrase in its entirety in order to put the trademark symbol after it? …hope that makes sense.

Can a product have a design patent and a trademark for it’s shape at the same time? Can it have a trade mark for it’s shape if PART of the design is a familiar shape like the red circle with a line through it that commonly represents “no?” Like no smoking

How to Choose a Trademark
http://www.ehow.com/how_10905_choose-trademark.html

How to Conduct a Trademark Search
http://www.ehow.com/how_10903_conduct-trademark-search.html

How to File for Trademark Registration
http://www.ehow.com/how_10906_file-trademark-registration.html

How to Enforce a Trademark
http://www.ehow.com/how_10904_enforce-trademark.html

A “trademark is any word, name, symbol or device, or combination of these, used by a person (individual, partnership, corporation or association) to identify his goods and to distinguish them from the goods manufactured or sold by others. Trademarks indicate the source of goods, even if that source is unknown. Some examples of well-known trademarks are: Kodak, Coca-Cola, GE, Life-Savers and McDonalds (with golden arches).

A “service mark” identifies and distinguishes a person’s services and is given the same protection as a trademark. “Citibank” (Service mark for Citibank), “Greyhound” (service mark Greyhound Bus Lines), and “Hilltop” (service mark for the Hilltop Restaurant) are a few better-known examples of service marks.

A “trade name” is a name used by a person to identify a business or vocation of that person. A trade name may be registered as a trademark or service mark only if it also functions as a trademark or service mark.

Note: A wee-bit under the weather I am, so, maybe these might help!?

Yeah, I think I contracted something from my computer…

I think it’s called E-Bola?! Once I stop coughing up this blood and the bloody feces, red eyes due to distension and hemorrhage of my sclerotic arterioles, petechia, maculopapular rash, and purpura stop, I’ll go see an M.D.

Thanks for ax’n though.:P

As far as having parts of a phrase trademarked, I don’t think so, but you get into technical legal stuff.

A slogan would be copyrighted or trademarked like Burger King…“where the customer is king”…but how could you then claim trademark protection on the individual words such as customer is king? You can’t have it all but there is something about confusing the public.

If you did McDonalds….“when customer is king”, that would be infringement.

It depends. Now with Handi-Straps, I couldn’t have protection for the word Handi only.

There are fine lines for trademarks where you do need a lawyer but I don’t think any of us are that big where we get into these big complications.

The question for trademarks is this as far as legally protecting yourself. Is the potential infringer confusing the public such as StarBobs coffee opening to confuse the public with Starbucks and feed off the reputation of Starbucks. This is now a judgement case that is decided by a judge and jury.

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Thank you Eddie and Ron for this information!

Ditto!

Heidi,

You can put the TM symbol after a name of business, name of product, phrase, or slogan at any point in time; And such does not have to be registered with the Trademark office….

Provided that you are currently in business using the mark as a means for marketing, and no other business is/was using the mark or similar sounding mark first. Though you can use the TM symbol without filing with the Trademark Office, you can not use the circled “R” symbol. You can only use the circled R symbol if such mark is registered and active with the Trademark Office.

Ron is correct, above. I copy and paste this often…

Trademark (and Servicemark) infringement is determined on a “likelihood of confusion” basis. The issue at hand is whether relevant consumers would be likely to associate the goods or services of one party with those of another party as a result of trademark usage. A variety of factors may be examined when analyzing a trademark infringement issue, the most notable of which are: the similarity – visual and phonetical – of any marks at issue; and the commercial relationship between the goods or services described by any marks at issue.

That said…

Note that you can only trademark a phrase by using it – not by registering anything with the USPTO (registration enhances existing trademark rights, and can be used to establish a priority date that predates usage – but usage is what establishes trademark rights to begin with). "Edison Nation Presents Everyday Edisons™ – if the phrase is being used as a trademark – meaning for the most part that it is being used in commerce to DISTINCTIVELY identify a product or service without “defining” it, then you have a trademark. Although it seems to me that in this particular case, depending on context, Edison Nation and Everyday Edisons might be functioning as trademarks, but the phrase as a whole may be just a generic definition of events.

If you were to try and register the entire phrase as a trademark, the benefits of trademark registration would only apply to the full phrase – and not individual parts of it – and the benefits would only apply if you were using the phrase in commerce as a trademark. But, as long as you are using it as a trademark, you will be protected against any confusingly similar trademark/name usages.

Also, do note, that while Ron’s “Handi” obviously can’t easily function as a trademark by itself due to its non-distinctiveness, “Honda Accord” for example works differently.

Hypothetically yes but thats a messy subject that i don’t care to touch further. Google ‘trade dress.’

The design as a whole must function as a trademark, thats all that matters for the most part.

Hello,

I have a question on trademarks. I designed this plastic case for a specific purpose. This will be sold online only. But the name I thought of for this product/website is already being used by three people.

1. There is an iphone app by the same name
2. There is a blog by the same name [xyz].blogspot.com
3. And someone has registered a website by the same name (though there is nothing in there, just a ‘parking’ page)

First off, do I need a trademark? If yes, can I still go ahead an apply for a trademark, as the first two items are not related to my product/category, and the website has nothing on it? And only the .com domain name is taken, I can still get the .net domain name…?

It’s just that I couldn’t think of any other name for the product/website.

Thanks.

You can definitely register the .net domain name.

Domain names are separate from trademarks, except where they are used as a trademark.To answer your other concerns, really I would recommend reviewing the rest of this thread…

Do you need a trademark? You never need a trademark per se, you either have one or you don’t. Whether you need a distinctive name/logo/etc rather than a generic name and/or logo relates to marketing and branding strategy.

Hmm…nobody seems to have accessed this thread in a while, but I have a TM questions so I will follow the initial post and display it here and hopefully someone will see it and help with some guidance…

Situation: Think I jumped the gun. I have a patent and recently signed a non-exclusive license agreement. Since non-exclusive I thought to myself, self, one day maybe you to will make this product, so why not now secure your fabulouse name idea. So I went to legalzoom and applied for a TM. So just recently I got a letter back with a substantive refusal.

So know what? Well I got about 5 letters in the mail with attorneys who are ready to help me respond to get the mark…

But now as I learn more, I think I’ve jumped the gun. As I don’t actually have a product just yet that I’m ready to sel and probably wouldn’t for at least 12 months or soo….

So what would you do?

Do I just let it die and chalk it up to an expensive lesson learned.
Should I proceed to respond with an attorney, pay more money get a name and still have no product to mark?
Can I place the application on hold?
Other ideas.

Uggh hate to think I just wasted about $400 —if anybody is looking to name a plastic product, maybe you want to take over this application…sure that couldn’t be done anyway…

Seeking advice.

Karen…read a little above. First step these days is to make sure you can get the domain name. If you can’t then you may be severely compromised. Also, all you have to do legally to protect a trademark is clearly tell the world you are using this mark. Somehow a website helps because you have then “published” this announcement. You have made a public announcement that you are doing business as. There are fine lines here…don’t know how much having the website counts as…consult a specializing trademark lawyer.

Next, with each legitimate sale in each state you then protect your trademark in that state. There are other ways too and even a way I heard to get your name registered without using the USPTO. Trademarks get VERY intricate and hairs are split at the office action at times and still a conflict comes later if you get big and someone just wants money out of you and challenges your trademark.

I registered one trademark myself like you and stopped at the office action which is where you will need a lawyer to take over as it gets complicated. This was for a toy invention which is on hold now.

Many of the biggest products are not registered and you will only see the TM next to the name and not the R in a circle, so the biggest of companies don’t always register but clearly own the rights to the name.

For you, you can build a website and maybe make some literature and insist on a contract with a licensor that you retain the rights of the trademark. They probably will not like that if they are a big company but I think trademarks are worth much more than patents because trademarks last forever. I own the rights to my Handi-Straps trademark by my usage even though I have a 50-50 split of all profits with my manufacturer.

You need to read a book just on trademarks because I can write for another two hours on this matter…it is intricate. If I was you I would build a website with the product and the name and some literature so your licensor sees you have come some distance and will MAYBE allow you to retain rights to the trademark….but consider yourself lucky if they let you do that…but maybe you can explain that if they give up on your product you plan on continuing pushing it…they may understand and just put a clause in the contract or something where they can use the trademark….I don’t know…gets intricate…see what they will go for.

I wouldn’t worry so much on registering now. I did the same thing as you. Forget how long you have to retrieve if it gets abandoned too…but there is also a time limit you have to get the product you have trademarked into commerce as you “promise” to bring this trademark name to commerce and not just sit on it. You cannot go register a name with the USPTO and then go sit on it for many years…if you do…you lose the rights after a certain amount of time…two, three years or something.

Get a book on it…very important stuff…and you should also find out how much “weight” building a website with the name holds protection without any sales. Just securing the domain I don’t think says anything about securing trademark….but any publication in a public newspaper, on TV or radio or a website is considered a legal announcement of letting the public know you are using a name in business and does have some legal protection after that. Next is advertisements I would think. Stronger is the legitimate sale in each state. Sell one in NY you are establishing rights only in NY. Next sale to Ohio…you know have rights in NY and Ohio.

When you register a name you have immediate rights in all states without even one state if the mark is granted, but you have a limited amount of time to use it in commerce or lose it…and if you stop business for an amount of time you lose it too.

Just a briefing…hope that helps.

Ron Komorowski
Inventor of Handi-Straps
www.handi-straps.com

Hi Karen,
I sometimes reference http://www.nolo.com for information. It might be a good place to start. :)

Ron,
Please forgive – but I have to disagree with you and accuse you of spreading slightly incorrect information about trademarks. ;) I hope you don’t mind.
1) You say the first step is domain name. However, name ownership is achieved only by the provisions of law set forth as trademark law. While one can register a domain name easily, it is not reviewed to determine whether it meets the requirements for ownership protections. To own a name, you must meet all the requirements detailed in the statute.
It is true that a headache will come if someone has registered a URL that is the same as a trademark, but their position is weak as they have not established (via trademark examination) that they are entitled ownership of the name. They merely have a registration in the domain database. A trademark holder will beat a URL registrant in an ICANN process – everytime. Good to register a domain name first, but this does not impart any ownership.
2) You also state that “with each legitimate sale in each state” – however, it is not the actual sale which imparts ownership of a name – but rather merely offering for sale. If one creates a website today (viewable in more than one state), the website having a product for sale, and that product the name used as an adjective next to the generic term for the product, then you will satisfy the requirement for use in commerce. Forget about the state-by-state approach – complete waste of time.
3) Do not stop at the office action – these are actually really easy to overcome most times. Just call the examiner who is quite friendly and often will make great suggestions to get the mark into compliance. I have done precisely this no fewer than 10 times.
4) ‘TM’ is not an indication that you clearly own the rights – it merely means you clearly claim the ownership rights for the name and alerts others that you make this claim; you actually own nothing by using TM.
5) A website with ‘literature’ will guarantee you will fail. You must make a website with a bonafide offer for sale – of the product in connection with the mark (name).
6) You must achieve actual use in commerce or you lose the mark after 6 months – extensions are sometimes available.
7) The ‘weight’ that a website holds is HUGE! = 100%. You must merely make a bonafide offer for sale – and you must use the mark as an adjective in connection with the products generic name, for example: “Podunk Donuts”; Podunk is the adjective, donuts is the generic term of a special kind of bread product.
8) Forget about ‘public announcements’ that is for registering a DBA. It has no value in trademark law. You have no legal protection of a mark by announcing it in a newspaper. Forget about sales in each state. Just use the mark, in interstate commerce (offer of sale).

Most of you can make a website with a legitimate offer of sale in about 15 minutes – 20 for others. After you make this, you are entitled to file for the trademark. If you don’t even want to do that, then you can file your trademark application as an “intent to use” application and you will have 6 months to later prove the mark is in use. Easy eh?

Please keep in mind I am not a trademark attorney and you should always seek competent legal advice from qualified counselors before taking any action on any particular legal matter. Just use the general information above to gain a better understanding of general principles, but do not rely upon it as if it were legal advice – because it is not legal advice.

Domain Names
Patent and Patent Related Services

Been through all this years ago when I began building websites and naming them and their products…

Here are some great sites on the subject…
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Is registration of my mark required?
No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

• constructive notice to the public of the registrant’s claim of ownership of the mark;
• a legal presumption of the registrant’s ownership of the mark and the registrant’s exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
• the ability to bring an action concerning the mark in federal court;
• the use of the U.S registration as a basis to obtain registration in foreign countries; and
• the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol “®” only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

http://www.uspto.gov/trademarks/basics/register...

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Registered marks versus common law marks

In the United States, a trademark which has been registered with the USPTO uses the ® symbol. A business that does not actually register a trademark may instead use the common law designation “TM” in superscript next to the mark. Using the “TM” mark does not actually confer any legal rights in federal law, but it may nevertheless help a business acquire secondary meaning concerning a specific mark.

Registered and non-registered trademarks are both eligible for protection under the Lanham Act. The advantage of having a registered mark is that after five years of unopposed use, the mark becomes “incontestable”. An incontestable mark cannot be attacked on the grounds that it is merely descriptive (even if it is). This means that the defendant in a trademark infringement suit cannot directly attack the plaintiff’s mark, but must instead focus on showing a lack of a likelihood of confusion. Even without incontestability, a registered mark has a presumption of being a valid trademark, placing the burden on the defendant to attack the plaintiff’s mark.

http://en.wikipedia.org/wiki/United_States_trad...

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Notices of Rights in Unregistered Marks:

The registered symbol, “®,” the legend “Registered, U.S. Patent and Trademark Office,” and the abbreviation, “Reg. U.S. Pat. & Tm. Off.,” should be used only on, and in connection with, marks registered with the PTO. The use of these notices on unregistered marks is a crime, punishable by fines and/or imprisonment.

Technically, providing notice of rights in unregistered marks is optional, but the prevailing wisdom is that such notice should be employed. Such notice is consistent with the rationale underlying proper trademark use, and enhances a mark’s source-identifying function. Notice of rights in an unregistered mark, consists of one of the following notations, usually appearing above, and to the right of, the mark in which rights are asserted:

1.™ for an unregistered trademark; and,
2. (SM) or™ for an unregistered service mark.

Affix Your Mark to Goods and Services

Not all product nicknames, business slogans, and broadcast advertising phrases are trademarks and service marks. In order for trademark rights to be created and maintained, a mark must be affixed to a specific product, or used in the provision of a particular service. Marks cannot discharge their source-identifying duties, if they cannot be seen on products, or with services.

Trademarks are “affixed” by applying them directly to a product, to containers in which the product is packaged, or to tags or labels attached to the product. Service marks are “affixed” by using them in signs and other advertisements offering the services, and on letterhead and invoices through which the services are provided. As a general rule, a mark is not a mark until it has been affixed!

I have a registered TM for Sleepy Head (as it refers to a Pillowcase). By using Google Alerts, I am notified when another company is using that name. If that co. is selling pillowcases, I go after them. The first time, I nicely requested a cease & desist but to no avail. After several requests, I hired an attorney and the company stopped using that name. The next time I found a pillowcase company using Sleepy Head, I quoted the laws the attorney had noted and took care of the issue myself. Because the other co. told me their pillowcase was satin and was not a conflict with my fleece pillowcase, I continued to try to educate them: they eventually hired an attorney who had to admit his client was in error and would seek another name.

All of this takes a lot of time and money but, otherwise, why would we TM a name if not to protect the usage? www.SleepyHeadPillowcase.com doesn’t protect anything since the other company used the same domain name but with the word ‘satin’ included. My point is, once you have the TM, you must stay on top of it and a domain name can’t protect you.

You guys are awesome, thank you so much for all the wonderful information. I have the day off from work tomorrow so I am going to take the time to read all this information very carefully and reference nolo and come back with any questions. So wish I had the time to do this FT…

This license deal was a wonderful opportunity and I can’t learn fast enough, I’ve read the nolo How to Make Smart Licensing deals (AWESOME)—my attorney was shocked on the redlines I gave him (he thought I had another attorney mark it up)… Read the Nolo ‘Your Crafts Business’, ‘Patent Pending in 24hours’ and ‘Patents’ seems I’m due to amazon for a nolo trademark reference guide now…

Want a business idea…bring nolo into the 21st century and have them make video series on all this…with cliff notes.

I think reading 5 nolo books should get you some sort of certification ;)

Julie, congrats on Sleepy Head and the mention on the today show… Funny I have a pillow related idea in EN right now that I love and often think about patenting and trying to market on my own…we’ll see how it goes.

If I offer you all dinner can you all fly to my house for a sleepover and fill my head with all your collective knowledge? Thanks again!!! Will read and reply to all below shortly.