What is a Trademark and How do I get one?

Dana Robinson, Esq.

The first question that I get in from new business owners my trademark practice is “how do I protect my trademark.”  This a good question, but it is almost always a premature question.  The more important question is, “can I use this new name without risk of being sued by a prior user?”  This is the important question.  Whether your new name is “protectable” is important, but you can live without a protectable mark; you cannot have a name that is likely to infringe someone else’s name or you could be sued. 

In the U.S., trademark rights are created by use: you use a name to sell products and services and thereby “create” rights, even without registering the trademark.  The “first user” of a mark gets the rights, and is technically the “right party” to register the name as a trademark. 

What does this mean?  It means that you can’t just go “register” a trademark.  You have to see if anyone has used it before you who might have prior rights to the name first.  You can pay an attorney to conduct a full search ($1500 and up), or do your own search by looking on the Internet for prior uses of your chosen trademark.  How do you know if a “prior trademark” is a problem for you?  Trademark law gives the prior user a scope of protection generally for “similar marks” used for “similar goods or services.”  So, as you look over other parties that use the same or similar trademarks to the name that you want to use as your trademark, you have to ask “is this a similar mark for similar goods or services?”  If one party uses a trademark for real estate services, and you want to use the same mark for selling shampoo, then there is a good chance that you are not going to infringe the prior user, and that you might be able to obtain a trademark registration of your own.

Some trademarks are difficult to protect.  For example, you can’t protect the word “barber” for a barber shop; no something is missing here can anyone else.  Can you use the name “Barber shop” for your barber shop?  Yes.  Can you protect it?  No.  Now, if you open a barber shop called Clean Cuts, there is more protection.  Thus, if there is a “clean” use prior to yours, it might be a problem for you.  If there are no known prior uses of “clean” for a hair salon, such as Clean Hair Cuts, Klean Kuts, Clean Salon or the like, then you can consider your trademark likely to be “clear.”  Change Clean to something else that doesn’t confuse the reader with the final ‘clear’…like Cute or Sassy…

If a trademark is “clear” of prior users, then filing a federal registration is the next step.  To register, the United States Patent and Trademark Office allows registration online.  In addition, online “filing” services such as FileOnline.BIZ will register trademarks for a small fee.  Finally, trademark attorneys like myself will register trademarks for about $800, including the underlying USPTO fee.  Filing is not the “end” of the process, but the beginning. The USPTO will examine the trademark, and may reject it for various reasons, in which case, you can make arguments, talk to the USPTO Examiner, or hire an attorney to take it from there. 

Once you have “cleared” your rights and you begin using your trademark to market your goods or services, you can use “TM” for your brand, whether or not you have applied for a registration.  This designation means, “I claim trademark rights.”  Not until you have received an actual registration certificate from the USPTO can you use the ® symbol.