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Thread: Trademarking a name
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04-18-2004, 01:19 PM #1Eternal Member
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Trademarking a name
I have always been a firm believer in doing things right the first time around. Spend what you need to spend, don't nickel and dime anything. Ever.
So it really burns me that I (for some inexplicable reason) weakened and tried to go the "cheaper" route on something recently. I have a name for a new site (to be developed) and I wanted to register it as a trademark. So instead of paying a trademark agent to do all the work, I decided to file an application myself. It still cost a few hundred bucks, but did not require any agent fees.
Well, I got a reply back. There was some objection to the name being trademarked, claiming it conflicted with an existing trademark. I did not see the conflict, but that's what the letter said.
So immediately I thought, if I had gone with an agent, who knew the ins and outs of the business, could I have avoided this "rejection" letter? As it turns out, I'm going to now go to an agent anyways to take care of it, so where have I saved by trying to do it myself?
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04-18-2004, 03:11 PM #2Web Hosting Master
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Would you mind providing the company who will complete these trademark application for you. Thanks
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04-18-2004, 03:20 PM #3Eternal Member
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I have not selected a trademark agent yet, but there are many out there. I'm just upset that I wasted money trying to do it myself first.
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04-18-2004, 05:57 PM #4Web Hosting Master
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What would a trademark agent have done? Say "sorry there is a conflict, pick another name"? What makes a trademark agent any more likely to get it to go through than yourself filing for it? If there is a violation, there is a violation whether you filled out the paperwork, or paid someone else to.
What is the name you are trying to trademark? (pm me if you dont want it public) maybe some of us can help you figure out where the violation lies.
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04-18-2004, 06:07 PM #5Eternal Member
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I am not sure an agent would have helped. I'm not in the business. I just think that an agent might have known the ropes more and perhaps worded the application in such a way to get it approved. I'm just speculating of course. I will only know once I pay someone to try for me.
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04-19-2004, 05:36 PM #6Junior Guru Wannabe
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re: trademarking
Hi:
I applaud your interest in doing everything correctly upfront, however, trademarks happen to be the one area where it may not pay off in the end. Do you have a specific reason for wanting the trademark? Regular use of your name in business (on letterhead, checking accounts etc) provides you with a common law trademark that is defendable in your region. The only reason to go with a formal trademark is if you are launching something nationally and have reason to believe that someone might infringe.
Honestly, the best thing you can do to defend your trademark is simply to mail yourself an envelope with your name and/or logo on the outside of the envelope. The courts look for "first use" whenever there is a dispute and usually side with the company that has been using it the longest - sometimes even if they are not the official trademark holder.
Also, you should be aware that there are certain types of names that are just not trademarkable (usually becuase they are deemed too generic).
If you do choose to go forward, I would be happy to post a list of naming criteria you should consider first. Then, you should have an agent or an attorney conduct a 'Triple-tier search' before submitting paperwork. This will tell you upfront whether someone else holds a Trademark that is similar or if there are already common law trademarks that you would be infringing upon. Also, a good attorney/agent should be able to tell you upfront if you are going to have troubles and should not charge you anything. Also, for a little extra, they should be able to give you an official "legal opinion" that can be submitted with your application.
Good luck, but honestly, in most cases, I wouldn't bother!
Kelly
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04-19-2004, 06:13 PM #7Web Hosting Evangelist
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I applied for a trademark a few years ago and was rejected because it was too generic. It turns out some REALLY big company used the name as one of their product lines. It actually gave us a little free publicity. But unless you plan on spending the money defending the trademark if someone infringes, it may not be worth the trouble.
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04-19-2004, 07:00 PM #8Web Hosting Master
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Originally posted by studiosoho
Honestly, the best thing you can do to defend your trademark is simply to mail yourself an envelope with your name and/or logo on the outside of the envelope.
In this case that distinction might not really be important, because we're talking about a website and domain name -- you'd still be able to bring a UDRP case against someone using an infringing domain name without trademark registration. But, for example, I could use the same mark Vito wants to use for the same kind of service as long as I don't use it in a domain name and there'd be nothing he could do... as long as I don't sue him (assuming I register), we'd never end up in a court where he'd have the opportunity to bring out his postmarked envelope -- unless and until he registers the mark. If it's a good enough name to begin with, it might be worthwhile to register it before things go that way and get the legal presumption of ownership on record.Last edited by JayC; 04-19-2004 at 07:11 PM.
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04-19-2004, 07:53 PM #9Junior Guru Wannabe
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good point. additionally, if you have registered it, you can proactively send would-be infringers a notice that they are infringing on a registered mark and possibly get them to back off from the outset.
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04-19-2004, 10:11 PM #10Build It Better!
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There may be something else to consider here as well Vito. Perhaps the Agent could have wiggled your application through, but would that have created an expensive legal scenario later on for you if someone who has a similar mark files a complaint?
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04-19-2004, 10:17 PM #11Eternal Member
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All good points made. I think I will still go the route of an agent. There is a local one that was recommended to me - I'm just waiting for a call back.
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04-20-2004, 12:25 AM #12Junior Guru Wannabe
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you might also check out brandfidelity.com...it is free to register and they have good information and check lists. you can also get an idea of pricing for this service and compare what the agent tells you. i haven't used their service, so i can't recommend, but I refer to their materials frequently.
-kelly
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04-20-2004, 11:47 AM #13Web Hosting Master
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an agent would have performed a search and either advised you that the chance of the application being approved was low or would have worked to make the application's chances higher.
trademarks are tied to specific classes of goods. if you wanted to trademark 'Vito's Rocks' for the (fictitious) class of goods 'Jewellery and Ornaments', it would not conflict with a trademark 'Vito's Rocks' registered by a Harlem crack dealer named Vito in the (fictitious) 'Crack cocaine and accessories' class of goods, provided that you did not submit an application for an overly broad class of goods, such as 'Things that make people feel good and cost a lot of money in the end'. a competent agent would be able to advise you on these matters as well as respond to USPTO inquiries pertaining to the application.
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04-20-2004, 11:53 AM #14Eternal Member
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Originally posted by rusko
...'Vito's Rocks' registered by a Harlem crack dealer named Vito...
I swear I thought it was baking soda.
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