Starting a new business venture is an exciting life decision that comes with many considerations; one of these considerations is the choosing of your business name! Soap and cosmetic businesses are popping up at a fast pace, and this means more names and trademarks are being registered each day.
A trademark is defined as a symbol, term or terms that are legally registered or established by use as a representation of a company or a product. This means your company's business name, logo, and unique product names might already be trademarked by someone else; and if they are, continuing to use them may be unwise. In this article, we'll touch on the basics of performing a trademark search and offer non-legal advice on why securing a trademark is an important way to protect your business!
History and Overview
The first registered trademark was secured by the Averill Chemical Paint Company on August 30th, 1870; it was an eagle with a ribbon and the words, "Economical, Brilliant". The oldest United States trademark still in use is trademark number 11210, an illustration of the biblical person Samson wrestling a lion, registered in the United States on May 27th, 1884 by J.P. Tolman Company (a rope-making company). Entrepreneurs have been protecting their business names and representations for nearly 150 years, and modern entrepreneurs are no different!
When talking about trademarks, the terms brand, logo and mark are used interchangeably trademark. Trademark also includes (but is not limited to) any brand, name, signature, smell, sound, movement or any combination of these components which separates the products and services of a business from other businesses. Trademarks are considered a form of property, and proprietary rights to the trademark can be established in two ways: either through use in the marketplace, or through the legal registration of the desired mark with the trademark office.
Registering a Trademark
In the United States, there are a few steps to follow when registering a trademark:
- An application is filed by the desired trademark's prospective owner for registration.
- Several months after filing the application, it is reviewed by an examining attorney at the U.S Patent and Trademark Office. This attorney will check for compliance with the rules of the Trademark Manual of Examination Procedure.
- If the attorney finds fault with the application, the applicant will be required to address the specific issues or refusals before the mark can be registered.
- If the attorney approves the application, it will then be "published for opposition". During this 30-day period, any third parties who feel they might be affected by the registration of the proposed trademark can step forward and file an Opposition Proceeding to stop the registration from moving forward.
- If no third-party steps forward to oppose the trademark registration, or if the Trademark Trial and Appeal board determines there is no grounds for opposition, the mark will eventually be registered.
Trademark registration can range from $275 to $325 per class and can be applied for online. It is imperative that, while completing all of the requested information for your trademark, you are very accurate. Inaccuracies in your application can result in the cancellation of your application, costing you valuable time and money.
Searching for a Trademark
Performing a trademark search on your own is an important part of the application process. There are a few things to keep in mind when you begin your search:
- Go broad within your industry. A trademark owner acquires the rights not just for its specific goods, but also for goods and services it is reasonably likely to offer. Performing a broad search, although time consuming, will help you get a firm handle on the availability of your desired mark.
- Search for substantially similar names. If you are naming your company "Creative Scents", for example, you should also do a search for "Kreative Scents" or "Creative Sense". Similar names should be paid attention to; ignoring them could be costly down the road.
- If you find that your name is already in use, stop. It is time consuming and a creative headache to find the name you want to use, and it can be very disappointing to find out it’s already taken. However, if you disregard unfavorable search results and decide to use the mark anyway, the consequences could be costly in regards to monetary damages and attorney's fees.
- If your search does not reveal anything, don't stop there. Sometimes, performing a search on your own can be confusing. Especially if you are using a common term or phrase as a logo/company name, consider consulting a trademark attorney who is specialized in searching for registered trademarks on a client's behalf. This can be costly, but for large businesses who are very successful and very public, this could be a business-saving step in avoiding a disastrous infringement.
Now that we've covered a few guidelines for searching, let's talk about how to search. The U.S Patent and Trademark Office offers a valuable online search engine that is open to the public, called the Trademark Electronic Search System (TESS). TESS is a great tool for home use, but can be a bit confusing for those not versed in legal terminology. Regardless, using this as a first point of reference can save you quite a bit of time and money!
TESS is located on the USPTO website (www.uspto.gov). Once you are on this site, locate a section entitled Search Trademark Database. This will take you to another page with more details on the search process. When you're ready, click on Search Trademarks under the heading, Trademark Electronic Search System (TESS).
Once you click on Search Trademarks, you'll be brought to a page with several search options. At the top of this page, you'll also see a link for TESS TIPS. We recommend taking a look at this page before you continue; it contains a lot of useful information about TESS and the search process.
After you've visited the TESS TIPS page, you're ready to search. You can select any options, but the two that are easiest are Basic Word Mark Search (New User) and Word and/or Design Mark Search (Free Form).
Once you click on your desired method, you'll be brought to the search screen. To get started, you can enter your desired mark. For the purpose of this article, we'll be using the sample desired business name Creative Scents.
From here, you can search a few different ways. First, you can input the exact name of your desired mark; this will bring up every mark containing your search words (for example: searching Creative Scents will bring up every mark that contains both "Creative" and "Scents", in no particular order). However, if you'd like to narrow your search, you can use quotation marks (") to surround your search terms to find only marks that use the desired phrase. (For example: Creative Scents will yield every mark that contains both Creative and Scents. Searching "Creative Scents" will narrow the search results to include only marks in that exact order).
Even if your search provides no matching results or similar names, don't stop there! Now it's time to look at the big picture. Companies love to come up with different ways of spelling names to be unique in a saturated market. It is very important to do a search for these variations too.
Using an asterisk (*) in your search will help to find trademarks that begin and end with your word. (For example: say you are searching for Creative Scents. Typing "Creative* and *Scents" will result in marks starting with Creative and ending in Scents. By connecting them with the word "and", you will get Creative Scents as a result, but also results like "Creative Scentsations".) These search methods will help you to find similar marks. Also, search for vowel and consonant substitutions (like "x" for "c", "oo" in place of a long "u" sound, etc) to maximize your reach and eliminate the possibility of overlooking a very similar name with only a few letters different. Use the same consideration with numbers; try searching "4" in place of "for", "2" for "too", etc. Additionally, search your desired mark with abbreviations like "R" for "are", or "4U" for "for you". Searching for alternative name spellings is also very important; if you are attempting to register "Smith Soaps", check for "Smithe Soaps". Although it is technically a different name, it can still present a potential infringement.
To make things a bit easier, you can also use the wildcard character "$" in your search. "$" represents one or more optional characters and can be used to find alternative spellings. (For example: searching for $reative* and *Scents will yield both Creative Scents and Kreative Scents.) You can also use "$N" in your search; this can be used to search for a number of letter variations, where N is the limit of letter variables. (For example: Essent$2l would produce both Essential and Escentual.)
I've Searched... Now What?
Now that you've searched TESS, it is also strongly recommended that you perform a basic internet search for your company's name. Much like your search in TESS, you will want to search in a variety of ways.
To perform an internet search, open Google (or your search engine of choice) and type your company's name precisely as you'd like it. Then, enter your company's name with an alternate spelling (if you'd like Creative Scents, type Kreative Sense, Kreative Scents, etc). Even if there is not already a registered trademark for the name, if there is another company using the name already, they can dispute your attempts to both use and trademark the name. Be thorough, and most importantly, take your time. Although searching TESS and search engines can be time-consuming, taking the time initially will save you a potential financial headache later on.
Maintaining Your Trademark
If you do decide to register your trademark, there are special considerations when it comes to maintaining it. In the United States for example, failure to actively use a trademark for a certain period of time will constitute abandonment of the mark, and then anyone can use it. Abandonment also applies if a mark is registered with a description of a specific type of product or service, and is then used in a different category; if you believe you may span categories, it's best to register it for each one. Also, if you register a trademark and it becomes generic or commonly used, it may be ruled invalid.
If you register your trademark and continuously use it, in theory, it will last in perpetuity, as long as the trademark owner keeps the mark registered with the USPTO by filing an Affidavit(s) of Continuous Use as well as Applications for renewal, if/when required. You'll need to file an Affidavit of Continuous Use specifically between the 5th and 6th anniversaries of the registration of the mark or during the 6-month grace period that automatically follows the 6 year anniversary. During this renewal period, you can also choose to file a Declaration of Incontestability; this declaration will protect you by making your mark incontestable (meaning, immune from any future challenges). In the case of filing this declaration, you would still need to actively use the trademark, as it can still be subject to abandonment. You must also be mindful that you have registered it properly; fraudulent trademark registration is not protected under any declaration, and such a registration can cause a revocation of your mark. Additionally, U.S trademark registrations must be renewed on or before every 10-year anniversary.
Trademark law is designed to protect the general public from being misled about either the quality or maker of a good or service offered. Those who register their trademarks are also viewed at a higher standard by consumers, because it is an incentive for business owners to maintain a positive reputation. We've given you quite a bit to consider in this article, but if there is one thing you can take away from it, it should be that protecting your business name, your products, and your reputation is tantamount to every other important business decision you will make. After all, if the adage "an ounce of prevention is worth a pound of cure" holds true, doing your due diligence before building your business around a particular name or mark can save you from costly rebranding or litigation down the road; a process that will inevitably cause financial hardship for you and your business, as well as potential damage to your reputation.
Don't miss out on your opportunity to learn about trademark law at our 2017 Annual Conference! We are fortunate to welcome Robert Lippman, a Principal with the law firm of Lemery Greisler LLC, to our Speaker Lineup for the conference! He will be hosting a session called Protecting Your Business Brand-don't miss out on this valuable discussion about intellectual property including trademarks, patents, trade secrets, and much more.