Don Costar

Trademark Basics

Quotes are from an article in the Nevada Lawyer magazine -- by Martin H. Weiner. (Reno Attorney)

“Imagine trying to protect ownership of land under a real property law system in which there are no deeds – no fixed boundary lines – and no recording statutes... Welcome to the world of Trademarks.”

“Trademark Law is most like the world of dogs. The male dog claims his territory by marking its perimeter bushes, trees, and walls, with urine. The dog hopes that this will discourage intruders. (If the intruder recognizes what the smell means)”

“The intruder, and the incumbent, growl at each other and make fierce displays near the periphery of the claimed territory. The deeper into the claimed territories, the fiercer the displays, and the more likely that actual combat will result.”

As I've stated before, A trademark claim can be started by simply placing the TM after the name you've chosen as your mark. That involves no cost, and is a notice to the world that you intend to register that mark with the US Patent and Trademark Office in Washington DC. It gives you no rights or title to the territory you are claiming, but it notifies competition that you are “sniffing the bushes” so to speak, to find out if you will be able to register it – once you have engaged in Interstate Commerce with it, or you INTEND to use it in interstate commerce.

The USPTO does not decide whether you have the right to use a mark. They only make a determination whether or not you have the right to “register” it. Even without a registration, you may still use any mark adopted to identify the source of your goods and/or services. Once a “registration” issues, it is up to the owner of a mark to enforce its rights. So how do you enforce your rights? Now you take the role of the big dog. When your application is filed it is published in the Official Gazette (paper and online) for 30 days. That's called the “Publication For Opposition.” If, after the 30 day period, no one files an objection you are issued a “Certificate of Registration.” That's how you protect your rights – by checking the published applications every month and file a protest if some dog wanders on to your territory..

Doing a trademark search is obviously a wise move, because if you don't “sniff the bushes”, so to speak, to find out if any other dog has claimed that territory, you may find yourself in a growling match with a big dog who doesn't intend to share... On the other hand, by identifying the other dog, there is always the possibility that the incumbent dog has given up his interest in that territory and you may be able to negotiate an amicable settlement to take over. In either case, it's still wise to sniff out any existing ownership.

Remember, I once made the statement that if you can find any name, or title, in the dictionary – chances are you will not get a trademark issued by the USPTO. I said common usage words (in the public domain) will not fly when applying for a trademark. Well, I was very wrong about that. Chris Wittman and I were discussing that a few days ago, and he pointed out many instances where common usage words were indeed under Registered Trademark protection. So I looked around...

Sure enough – I found a perfect example – KRAFT Stove Top Stuffing Mix. “KRAFT” is a registered trademark of Kraft Foods Global, Inc. And “Stove Top” is a registered trademark of the same company. Two separate registered trademarks in the same name of a packaged food product. “Stove Top” may be construed as a slogan, I suppose, or even a Logo because of the fancy lettering font that spells it out. I don't know. But obviously “stove” and “top” are words in public domain, and in common usage.

Another example – CLOROX Fresh Care fabric refresher. The name “CLOROX” is a registered trademark, and the words “Fresh Care” are also a registered trademark. Again, two registered trademarks in one product name. Fresh and Care being public domain and common usage words. It also had the notice Patent Number 6,454,876, so it was a patented chemical formula too.

Now it gets even more interesting – on a box of RITZ Crackers was the mark of a U within a circle, instead of the R. I noticed the box was labeled NABISCO, but the ownership was again KRAFT Foods Global, Inc. And neither the KRAFT or the NABISCO names had any trademark designation at all. Fascinating...

One more – the Church and Dwight Co., Inc and the manufacturing company – Arm & Hammer use the words “BAKING SODA” on their product. It also is a U within a circle instead of the R.

Vince Chemist suggested that the Circle U designation had more to do with the food product being Kosher than with any trademark identification. So I did some more research, and sure enough – Vince was right on... The Circle U designation is a graphic representation that the food product is indeed Kosher. The Circle is actually a graphic O, and stands for “Orthodox.” The U stands for “Union.” The letter D alongside the Circle U means the product contains dairy products. Anyway, as a general rule, it is my understanding that in order to register a trademark it still is probably best not to try to register a common usage word, like “crackers”, or “cookies”, or “soap” unless they are part of an artistic Logo. Chances are you won't get it past the USPTO. Remember, the USPTO doesn't care if you use those words, they only object if you try to register them to get legal protection in a Federal Court.

There are currently 45 categories of trademarks, called classifications, and the basic principle behind the trademark system is called “fair trade practices.” That means, not to confuse the public with a similar name for a product that the original, or incumbent dog, has spent a lot of money, time and work presenting a quality product to the public.

The cost of filing for registration of a trademark is $325.00 for each classification sought, if filing electronically. It's $375.00 for each class, if filing a paper application through the US Postal system. The cost of maintaining the status is $100.00 every ten years. (effectively $10 per year)

An Important Note: The $50.00 saving by filing electronically is decidedly not the only benefit; the file serial number given to your trademark application is usually not assigned for several months. That is, whenever the USPTO attorney examiner gets around to your file. (they are literally drowning in a backlog of paper claims and applications) On the other hand – the file serial number is assigned almost instantly to applications filed electronically, 24/7. (except from 11PM Saturday 'til 6AM Sunday)

Go to http://www.USPTO.gov or click on the patent office link on my web site at http://www.doncostar.com – then click on Trademarks in the left side column – then click again on Trademarks Main Page at the top of the left column. Now on the right, between the vertical red lines, click on “File” or “Search” to continue. Searching is spelled out in detail.

The application forms apparently cannot be downloaded off the Internet at the USPTO website. When I tried to do it, to bring an example, I got this message:

“The USPTO has replaced the PDF printable version of this form with a form for filing electronically, complete with on-line Help. Please see TEAS (Trademark Electronic Application System). Under the Forms Column, scroll down to access the appropriate form.”

Also, when I tried to download the form the USPTO web site would not let me unless I was actually submitting an application, including the fee by credit card. So to file the application you must go to the web site and complete it. That seems to preclude filing any paper form without first calling 800-786-9199 to ask for a paper application to be mailed to you. The folks at the Trademark Office are really trying to discourage any paper filing anymore.

HOWEVER – when you come to the page titled “Trademark Electronic Application System” you can click on this link near the top of the text: To preview all pages of the initial Trademark/Servicemark application, to determine what information is needed before starting an actual application, click here. (New)

Now for the “Logo” or drawings, or whatever you're submitting to be “registered.” That is found on a special link on their web site: http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm

The requirements are quite specific, and tell you what you must do and also what you can get away with if you're an amateur artist, or filing for yourself.

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