In the process of registering a trademark, dates and deadlines can be critically important.

The first reason that dates and deadlines are important in registering a trademark is that the trademark system tends to recognize the first user in commerce of a mark as being the legitimate owner of the mark.  If there are two businesses who are each using the same mark under roughly equivalent circumstances, the earlier user of the mark will win.

There are some exceptions to this concept.  The most notable of them is that, if you are successful in registering a trademark under the “intent to use” rather than actual use, the filing date of your trademark application, which is earlier than your date of your first use in commerce, can be used for determining who actually owns the trademark.

This leads to the critical role of deadlines in determining who owns a trademark.  Let’s say that two businesses are both using the same trademark.  Business A attempts the process of registering the trademark under the “intent to use” the trademark.  Business B, a day later, starts using the trademark without any attempt at registering the trademark.  A day after Business B starts using the mark, Business A starts using the mark.

There are two interesting scenarios here.  In the first, Business A successfully completes the process of registering the trademark.  Business A owns the trademark.

In a second scenario, business A misses a deadline to answer a document from the United States Patent and Trademark Office.  As a result of missing the deadline, the process of Business A registering the trademark stops because the United States Patent and Trademark Office deems that Business A has abandoned the mark.  As a result, Business B now owns the mark, because they were the first user.

This simple example should make it clear to you that dates and deadlines are critical in the process of registering a trademark.  It should also make it clear to you that you need to pay a lawyer to handle the process of registering a trademark, so that there is somebody who is paying very careful attention to make sure that dates and deadlines are not missed.

The main thing that you do with your trademark, both before and after the process of registering your trademark, is that you use the trademark to communicate the source of your goods and services (you) to your customers in the marketplace.

When someone interferes with that communication by appropriating your trademark, you have a variety of options to stop them.  The fact that you have registered your trademark can be very helpful in stopping the trademark pirates from destroying or misappropriating the good will associated with your business name.

Let’s talk about a hypothetical business named “Pasquale’s House of Tomato Pie.”  Note that, in order to register the trademark, “Pasquale’s House of Tomato Pie,” your name need not be named Pasquale.  For this example, let’s assume that “Pasquale’s House of Tomato Pie” sells frozen pizza over the Internet from Austin, Texas and ships frozen pizza to all 50 states and much of Europe.  Pasquale’s House of Tomato pie has been wildly successful and is the leading name in artichoke-and mushroom pizza.  Let’s assume, for this example, that Pasquale has done the right thing and hired a lawyer to successfully complete the process of registering “Pasquale’s House of Tomato Pie” as his trademark for selling pizza.

Because the buzz around “Pasquale’s House of Tomato Pie” is so great, some sleazy rip-off artist in New Jersey subsequently starts selling second-rate pizzas under the name “Pasquale’s Tomato Pie.” So, people get on the Internet and search for Pasquale’s pizzas and they end up buying from the rip-off artist in New Jersey rather than the real deal from Austin, Texas.  This is a problem for Pasquale.  To make matters worse, the rip-off artist in New Jersey makes bad pizza.  So, he is not only stealing from Pasquale but tarnishing the “Pasquale’s House of Tomato Pie” brand in the process.

Because Pasquale went to the trouble of registering a trademark, he has many options for dealing with the rip-off artist in New Jersey.  Pasquale will go to the lawyer who handled registering his trademark.  The lawyer will then send a cease-and-desist letter demanding that the rip-off artist in New Jersey quit using the “Pasquale’s Tomato Pie” name.  Let’s assume,  for the sake of this discussion, that the sleazy rip-off artist in New Jersey refuses to quit using the name.

What probably happens next is that Pasquale will file suit for trademark infringement.  His lawyer will file a law suit alleging that sleazy rip-off artist in New Jersey is creating a likelihood of confusion by selling pizza under the name “Pasquale’s Tomato Pie.”   Because Pasquale has taken the time and gone to the expense of registering his trademark, his chances of winning the lawsuit and stopping the sleazy rip-off artist in New Jersey are significantly enhanced.  This is the key.  Registering a trademark helps you resolve disputes without having to break some guy’s legs.

There are essentially four types of intellectual property: patent, copyright, trademark, and trade secret.

Registering a trademark protects your good name.  A registered trademark associates a particular product that you produce with you as the producer and enables the buyer of the product to know the source and quality of the goods or services that they are selecting in the marketplace.  As long as a trademark is properly maintained after you finish the process of registering a trademark, a trademark can last perpetually.  A good example of an ancient trademark is the name Du Pont, which goes back to the period shortly after the revolutionary war.  The Colt firearms trademark goes back to around the time of the civil war.  Registering a trademark helps you protect yourself from having another person confuse the public into believing that they are doing business with you.

Patents are different from registering a trademark in that patents protect your exclusive right to make the things or perform the processes that are your business.  Patents exist for a fixed term (which we’ll oversimplify by calling it 20 years, though it is more complex than that and requires some detailed calculations for each specific patent).  A patent helps you protect yourself from having some knock-off artist manufacture goods or provide services identical to the ones that you have developed.

Copyright is different from registering a trademark in that copyright protects a particular expression fixed in a tangible medium.  Copyright prevents people from reproducing your ideas as they are expressed in print or recording or other tangible form.  There may be some overlap in trademark cases where a trademark is a drawing and the re-use of the drawing by a rip-off artist also creates unauthorized use of a registered trademark.

Trade secrets are the things that you don’t tell other people, whether those are your customer list or your secret formula for blueberry pie.  Registering a trademark, applying for a patent, or registering a copyright all involve very public conduct.  Trade secrets are about protecting yourself from a competitor hiring an employee and learning the things that you don’t tell anyone.

A trademark is any device (generally a name, but you can register all sorts of trademarks) that identifies a product or service with the source of the product or service.  The process of registering a trademark is the process of reporting to the United States Patent and Trademark Office that you claim exclusive use of the device for your goods and services.

Types and examples of devices that can be registered as trademarks include:

1.)    Names –  Famous examples of registered trademark names include

1. Kleenex, which is a trademark for tissues.
2. Coca-Cola, which is a registered trademark for a soft drink
3. Remington, which is a registered trademark for firearms and ammunition

2.)    Sounds –

1. The ringtone of the Nokia phone is a trademark registered for telecommunications equipment
2. The opening sounds of Microsoft Windows are a registered trademark for software.

3.)    Colors –

1. “Tiffany Blue” is, as every woman knows, a registered trademark for jewelry.
2. A particular shade of brown is a registered trademark for shipping.  This trademark belongs to UPS.

4.)    Drawings –

1. A circle divided into three equal slices is the registered trademark of the Mercedes automobile.
2. The Krupp company is identified by the registered trademark of three interlocking rings.

5.)    Package shapes –

1. The most famous package shape is probably the inverse-oval bottle used by Coca-Cola, a registered trademark that you can see all over the world.

6.)    Sculptural representations –

1. Some universities register as trademarks the sculptural reliefs that are used on their class rings.  A great example of this is the ring of Texas A&M University, for which there are at least 3-4 registered trademarks.

At the end of the day, all of these trademarks work by identifying particular goods and services as being produced by a particular manufacturer and possessing particular quality.  They are registered to protect the producer of the goods and services from having someone else adopt the device and trade on his good name.

Once you’ve made the right decision and hired a lawyer to handle registering your trademark, the next trick is to hire the right lawyer to handle registering your trademark.

Trademarks are not like patents.  In patents, a lawyer has to have a science or engineering degree and take a separate registration exam in order to represent clients who are applying for patents.  In trademarks, any lawyer is technically capable of registering a trademark for you.  And that’s a problem.

You need to go to a trademark specialist.  Just like you may not know all of the small details that are necessary to properly accomplish the task of registering a trademark, a lawyer who handles wills, divorces, incorporations and other matters may not know of all of the details that are necessary to get things right in the process of registering a trademark.  A lawyer really doesn’t know the details of registering a trademark until he has registered a hundred trademarks or practiced trademark law for at least five years.  Until then, he will tend to make rookie mistakes in registering a trademark that will tend to cost you time and money.

So, here are some questions to ask in selecting a lawyer to handle registering your trademark:

1.)    How much of your practice is dedicated to registering trademarks and resolving trademark disputes?

The answer needs to be more than 50%.

2.)    How many trademarks have you successfully registered?

You are looking for an attorney who has registered more than 100 trademarks.

3.)    How many trademark disputes have you successfully resolved on behalf of people who had registered trademarks?

You are looking to hear “more than a dozen.”  Honestly, you just want to be sure that you’re not buying a parachute from a guy who has never jumped out of a plane.

4.)    Do you have specialized docketing software to handle the calendaring and docketing of trademark deadlines?

The answer needs to be “yes, we have software that automatically calculates and sends reminders for everything from six-month abandonment dates to post-allowance five-year dates.”  Microsoft Outlook is not “specialized software” for handling the process of registering a trademark.

5.)    Have you ever been the subject of a grievance or a malpractice suit?

If the answer is yes, you don’t want the guy registering your trademark.

6.)    Do you have malpractice insurance?

The answer needs to be, “Yes.”  If a lawyer screws up the process of registering your trademark, and his negligence costs you money, there needs to be an insurance policy standing behind his work to make you whole.

1. You don’t want to mess up when you are registering a trademark

Registering a trademark is a lot like changing the alternator on an automobile.  It’s pretty simple, and most people of average intelligence can do it themselves, but there some small details that can be incredibly destructive if you get it wrong.  It’s better to have a mechanic handle the process of changing your alternator.  It’s better to have a lawyer handle the process of registering your trademark.  In either case, the work is more likely to get done right by someone who has done it hundreds of times and knows the small details that have to be carefully observed to make sure that everything works.  In the case of changing an alternator, getting things right is the difference between going home safely and getting stranded... or maybe doing serious damage to your car.    In the case of registering a trademark, doing things right may the difference between securing the exclusive use of your business name and losing that right… or worse maybe getting sued for infringing somebody else’s trademark.

2. If something does get messed up, you want to have somebody who will stand behind the work.

The other big advantage in hiring a lawyer to handle registering a trademark for you is that hiring a lawyer to handle registering a trademark means that there will be somebody to stand behind the work.  If you make a mistake in your trademark application that costs you the right to exclusive use of your mark, you have nobody to blame but yourself.  If you hire a lawyer to register your trademark for you, and the lawyer makes a mistake in registering your trademark, your lawyer has a large number of incentives, the least of which is the value of his own good name, to see to it that the mistake is fixed for you.

At the end of the day, if you end up with some sort of colossal mistake that costs you the right to use your business or product name, that mistake can cost you a lot of money.  When you hire a lawyer to handle registering your trademark, and the mistake is made by the lawyer, his malpractice insurance may be available to help you pay those costs.

3. It just isn’t worth the inconvenience.

The final big advantage to hiring a lawyer to handle registering your trademark is convenience.  Regsitering a trademark is handled by a part of the government called the United States Patent and Trademark Office (USPTO).  The USPTO is famous for long delays in responding to applications submitted by applicants for patents and trademarks.  When you file your trademark application, rather than waiting on the USPTO to respond by yourself, having a lawyer handle the registering of your trademark means that you have made the lawyer responsible for remembering that the USPTO is expected to respond.  You’ve made the lawyer responsible for following up if he doesn’t hear anything.  Lawyers who spend a lot of their time registering trademarks will have computerized calendaring systems specifically designed to remind them to follow up on the trademarks that they are registering for their clients.

You’ve probably reached this blog because you are staring a new business or launching a new product and somebody told you that you should consider registering a trademark.  Congratulations!  I admire the nerve of entrepreneurs, and the decisions that you are making that bring you to the point of registering a trademark (like defining the purpose and identity of your new business) are one of the most exciting phases and forms of self-determination that many people ever experience.  You are to be commended both for the courage that brought you to the point of offering a new product or business in the market and for having the foresight to consider registering a trademark.

You want to understand the costs of registering a trademark and the benefits of registering a trademark.  I’ll start with the costs of registering a trademark, because this is pretty simple.  The United States Patent and Trademark Office charges a minimum fee of $325 to file an application to register a trademark for a product or business that is already in the marketplace.  There is an additional $50 fee if you are registering a trademark with a paper application rather than using the online application system.  There is an additional $150 fee if the product is not in use, but you are reserving the business name by registering a trademark on the basis of your intent to use the trademark after registering the trademark.  This is the basic cost for government fees.  For reasons that I will explain later, I recommend that you hire a lawyer to handle registering your trademark.  This costs more, but you really do get what you pay for.

The benefits of registering a trademark are substantial.  A trademark is a distinguishing device (it can be a name, a drawing, a sound, a color, or a smell, among other things) that helps consumers identify the source of a good or service.  By registering a trademark, you are filing a claim with the government that helps to resolve disputes if there is ever a subsequent disagreement about who owns the device that you register as your trademark.

The first benefit of registering a trademark is conflict resolution.  In the event that you have a disagreement with another business about who owns your trademark and has the right to use it in the marketplace, successfully registering your trademark serves as a piece of evidence that you may be the actual, exclusive, nationwide owner.

The second benefit of registering a trademark is conflict avoidance.  When large companies are selecting names for new products and services, they will typically search the trademark register and avoid names or other trademarks that are already in use.  People want to make money.  They want to avoid trouble.  By registering a trademark, you help them avoid trouble by keeping them away from your business name.

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