Trademark Questions

[Aaron Hats]

I want to trademark our tag line..."get a hat on" and license it for use. That way anytime a mother yells at her child to "get a hat on" before you go out I can charge them a royalty fee? How's that for multiple streams of income.

[Steve B]

Evan - Your name is a significant part of your brand. I can't imagine not being willing to spend a significant amount of money to defend it. Are you suggesting that a business shouldn't spend even $10 on a trademark?

VG - I would probably know within a week or two if someone was using my name (or something similar) in my area. In my case it would only be someone local that would be an issue and my trademark is only registered within my state - so finding out would not require any effort at all (I'd probably get a call from a friend or customer).

[vangogh]

@Aaron - brilliant and funny

@Steve - You might know in your area, but would you know in mine. You still need to fight someone here in Colorado using your name to protect your trademark. You might find out about them if they were online, but what if they weren't.

Are you talking about regsitering for a trademark or registering a trade name with the state? I think you might mean the latter. A trademark is more than $10

I absolutely agree with registering your business name with the state. Makes sense to keep others from using your name and if they register first they could stop you from using your own name.

Trademark, though is the reason Google has to occasionally sue someone for telling others to google something when they want to search for it.

Here are some basic facts about Trademarks I found since we're talking about them.

[Evan]

Originally Posted by Steve B

Evan - Your name is a significant part of your brand. I can't imagine not being willing to spend a significant amount of money to defend it. Are you suggesting that a business shouldn't spend even $10 on a trademark?

I would pay to defend it, but as noted sometimes a letter or the threat of legal action is all you need. Very few people want to deal with court.

[Steve B]

VG - They can use whatever name they want in CO or any state other than KY. My trademark is only for the state of KY. If they use the same name in any other state I wouldn't care - nor, would I have any right to defend it. It is a Trademark - not a registration of a business name. Perhaps you are confusing a state trademark (or service mark) with a federal trademark. My trademark is signed by the Secretary of State of KY - and it lasts for 5 years - so it was only $2 per year and it provides very concrete proof as to when I started using the name.

[vangogh]

I see what you're saying. I was talking about federal trademarks. I found this which links to all the state trademarks. For some reason I thought trademarks needed to be done on a federal level and not a state level.

What protection does your trademark give you that a trade name doesn't? And just out fo curiosity say I was registered for a federal trademark using the same name you used in a state trademark? Does my federal mark supersede your state mark?

[Steve B]

I don't really know for sure. But, I see that when I applied for it I had to declare that "no other person has registered, either federally or in this state, ..." That was easily accomplished by searching both the federal trademark database and the state database. I'm guessing if someone applied for a federal trademark after I had mine registered they would be prevented from using it (assuming they have to make a similar declaration). In addition to a simple one page application - I also had to submit three specimins showing actual use of the mark.

Just for clarification - the name Derby's Pet Fence is registered as a "Service Mark" because of the nature of the business (service). My other business, Bluegrass Values (direct mail coupon magazine) is registered as a "Trademark" I guess because there is more of a tangible product associated with it. The applications are identical - it was just a different box to check off.

[vangogh]

I wonder if that's true. I would think the federal trademark would supersede the start mark.

no other person has registered, either federally or in this state

so you're not required to find out if it was registered in a different state and you can't register if someone holds the federal mark. Something tells me the federal mark is going to take precedence over the state mark even if it's registered after, but I'm hardly a lawyer so really just guessing.

Hopefully we can get a lawyerly opinion to clear it up.

[Steve B]

"so you're not required to find out if it was registered in a different state". Correct - but, since a state trademark doesn't apply in any other state what would be the point?

I'm sure you could just get a copy of the federal application and see what it says. I would think it would be easy enough to find out without being a lawyer.

[Business Attorney]

I generally agree with Evan but in this case I disagree strongly with many of his recommendations dealing with trademarks. Trademarks are not cheap (the filing fee alone is $325 per class for filing a Federal registration) but for anyone who intends to develop a potentially valuable trademark, I think that filing a federal registration is very important. To explain why, I would have to write a very long post, essentially a whole article on the topic. I don't have time now, but I'll try to give at least a few reasons later.