Posts Tagged ‘trademark a name’

Trademark vs. Copyright: Do I need a Trademark or a Copyright

Sunday, March 14th, 2010

Many clients call my office unsure of whether or not they need a trademark or a copyright to protect their intellectual property.

The answer is that trademark registration is appropriate when you are trying to protect the name (and/or associated logo or slogan) of a business, a product or a service that you are offering.  On the other hand, a copyright protects a work of art such as the contents of a book or a movie (remember this means the contents of a book or a movie, not the title).

For example, a trademark registration protects the name of a software program such as “Microsoft Word.”  The trademark registration prevents any other company from making a program and calling it “Microsoft Word.”  A copyright protects the software code that makes up the program (thus preventing someone from copying the program’s code and reproducing it without Microsoft’s consent)

Another example is that a trademark registration would protect the name of a band such as “The Black Eyed Peas.”  The trademark registration prevents any other band from using this name to sell music.  On the other hand, a copyright protects the music the band produces (thus preventing someone from copying and distributing the music without the band’s consent – think Napster).

For more information on trademark registration please visit our home page.

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How do I trademark a product name?

Wednesday, July 29th, 2009

The first step for us to trademark your product name is to complete a trademark search. Conducting a trademark search allows us to verify that no one else is already utilizing the product name; thereby avoiding any potential conflicts that could arise. While one way to conduct a trademark search is by using the Trademark Electronic Search System provided by the U.S. Government or simply searching for similar marks on the internet, we offer a much more comprehensive and robust search package for you. Our search is conducted using complex and state of the art software, which provide a more meticulous search.

Once we have completed a thorough and detailed trademark search and found no conflicting trademarks, our next step is to assist you in drafting and filing a trademark application that we are confident will be approved by the USPTO. The application is ultimately filed online using the Trademark Electronic Application System or TEAS.

There are a few elements of the application that I would suggest preparing prior to beginning the application process. These items include: a scanned JPEG file of the drawing of the mark and a scanned JPEG file of an actual example of how the trademark is being utilized in commerce. By offering my legal advice and assistance in the preparation of these critical components of the application, I make certain that your application is as well assembled as possible.

Furthermore, the trademark application will require that you specify the mark type as either standard characters or special form. A standard characters mark is one that does not contain any design element. In contrast, a trademark that is categorized as special form does include a design element. I will help you make the decision as to which type of trademark is appropriate for your product once we review your file.

The next section of the application pertains to goods and/or services information where you will need to complete of list of goods and/or services for your application. After reviewing the description of your product we will draft a legal description of your product that is appropriate for the application.

After we complete the application, you will receive an email which will allow you to review and approve the application for submission to the U.S. Government. At that time your application will be filed and your product name will be well on its way to receiving trademark protection. For any questions on how to trademark a product name please contact Josh Gerben Trademark Attorney.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

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Should I Trademark My Name?

Thursday, May 14th, 2009

Many clients call me with a simple question: “Should I trademark my name?”  The answer is, almost all of the time, “yes.”  Obtaining a trademark on your name not only protects your name from potential trademark infringers, but also helps you ensure that no one else has been using your trademark prior to your use of the name.

When you undertake the process to trademark your name, a good trademark attorney will recommend that your first conduct a trademark search on your name.  This is because if someone else has filed a trademark for the same or similar name prior to your now imminent trademark application, the United States Patent and Trademark Office can deny your trademark for your name.  Therefore, the process of obtaining a trademark on your name is a good way to slow down and ensure the name you have selected can be used without infringing on another company’s trademark rights.

The second reason that the answer is almost always “yes” to the question of “should I trademark my name” is that when you obtain a trademark on your name you obtain the presumption of national ownership on the name. This is extremely important to a company that plans to expand in the future.  For example, even if your company’s operations today are only in New York and Pennsylvania, a trademark can help you expand to California in the future without any problems.  Let’s say that you expand to California in five years only to discover someone else has been using your name as their trademark.  If you had obtained a trademark on your name you can force this other company to stop using the name as their trademark (so long as their use began after the date you filed for your trademark).   If you had not obtained a trademark on your name, the California company could continue to legally used your name in California and force you not to use the name as your trademark in the California market.  Therefore, obtaining a trademark on a name is extremely important if you plan to expand outside of your current market.

As you can see, when you trademark a name it gives you a national right to use the name (and prevent others from using the name) as of the date your trademark application is filed.  After the filing date (presuming the trademark is ultimately approved) no other company can claim a trademark right superior to yours in the name.  In today’s competitive marketplace a trademark of a name can be an extremely valuable asset to any company.

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