I’m happy to bring a guest post to you today from Leland Faux. Leland is an attorney that blogs at LawoftheBrand.com.
Leland blogs about trademark, copyright, and online business issues at Law of the Brand. He helps small business owners navigate these and other legal matters. If you’d like to submit a question (or get legal help), you can email him at [email protected]
In this post, I’m going to discuss some basic trademark issues that you should know as you build a niche site. Then, with that background in mind, I’ll go over the 3 steps to claim a trademark. But before I do, let me share some stories that illustrate the issues.
Story Time: Trademark Issues in Real Life
First, there is apparently a niche market for flowers encased in crystalline resin. A gal was marketing these as “Flower Crystals.” Well, she ended up with a cease and desist letter because “flowercrystals” is a registered trademark owned by another person who, you guessed it, sells flowers encased in crystalline resin. (More details).
Similarly, a friend of mine started a business and was able to get on a very popular podcast to market his brand. The problem: his brand uses the same words and a similar logo that are registered to another company. This means he has a high risk of getting his own cease and desist letter–or worse, a demand for all profits and other statutory damages, such as triple damages and attorney’s fees and costs. This is not an issue you want hanging over your head when you are getting your business going. (More details).
Spencer, here at Niche Pursuits, had his own experience with a trademark cease and desist in building a niche site. He ended up shutting down the site. (Read the post.) I would suggest that you read up on trademarks here, and they go check out that article and the comments section. People have different ideas on the matter. You should see what you think.
As these stories demonstrate, it is important to be aware of the trademark landscape any time you are creating a website, brand, business, or product. So with that in mind, let’s get to the basics.
What is a Trademark?
A trademark is something you use to identify the services or products that come from you. It can be a logo, name, words, sounds, colors, or even smells. If it’s a “mark” you use to identify your products or services in trade it is a “trademark.” (Technically a mark for services is a “servicemark” but there’s no difference).
There are actually four types of trademarks: common law, state registered trademarks, federally registered trademarks, and international trademarks. Common law trademarks are often referred to as unregistered trademarks.
Infringement occurs when someone other than the trademark owner uses the mark or a confusingly similar one in commerce. If you infringe on a trademark, the trademark owner can force you to stop your activities and may be entitled to damages. These damages can include any profits you have derived from the infringing activity and, if the trademark is registered, statutory damages such as triple damages and attorney’s fees and costs.
In practical terms, this means that all of your hard work can get shut down or end up going to the trademark owner. Even if you successfully defend a claim, you’ll likely incur significant attorney’s fees and expenses in evaluating and defending against it. The bottom line is that you want to avoid trademark infringement problems. And you’re in luck because following the three steps I’m about to share will help you do just that, and more!
The 3 Steps to Claiming a Trademark
Step 1: Brainstorm Strong Trademark Ideas
When it comes to trademarks, there is a scale from weak to strong marks. The law is not really going to protect weak marks. When you are thinking of potential trademarks, you should go for strong marks. Here is the scale from weakest to strongest:
These are words that are just the name of the product or service. For example, the word “apple” for apples is generic. It will not be given trademark protection.
These are words that are not quite generic but are merely descriptive of the product. An example might be “Awesome Tasty Apples” for apples or “A+ cleaners” for dry cleaners. This type of wording may not be given trademark protection. It is possible, but not likely.
These words might be suggestive of some of the features or attributes of the product without describing it exactly. Suggestive marks are strong marks. An example of this might be “Netflix” because Netflix provides movies (ie: flicks) on the “Net.” For comparison, a descriptive trademark for what Netflix does might be “Internet Movie Club.”
Fanciful or arbitrary words
These a words that are either made up or are completely arbitrary to the product. A good example of an arbitrary mark is Apple for computers. Although “apple” is a generic word for apples, it is arbitrarily applied to computers. A fanciful mark might be Xerox (although interestingly enough, Xerox became so popular that the word “xerox” became the generic term for making copies).
When you are considering trademarks for your site, products, or business, you should avoid weak marks if your goal is to have an enforceable trademark.
Step 2: Perform a Trademark Search to the Level that Satisfies You.
Once you have an idea of what you want your trademark to be, you should perform some sort of trademark search. The purpose of a trademark search is to avoid infringing on an existing trademark. The question here is how detailed do you want to search? As mentioned, there are four types of trademarks (common law, state, federal, international). When you are investigating the trademark, you should consider each.
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Searching Federal Trademarks
Searching federal trademarks is the most accessible of these trademark searches. I would also argue that it is the most important because these trademark owners have shown, by registering their trademarks, that they want to enforce them and they paid the fees to do so. The US Patent and Trademark Office (USPTO) keeps a database of registered trademarks that is free to search. It is called the Trademark Electronic Search System (TESS). People refer to searching the federal database as a “knockout search” because if you find a potential issue, you can (and should) knock that option out from your choices.
Searching TESS is an art form on it’s own. A search may include not only the exact words but also synonyms and words that sound or look similar. But you can at least put the name you want to use and see what comes up, if anything.
Searching State, International, and Common Law Trademarks
Doing a search of all the different types of trademarks is referred to as a “comprehensive search.” Unfortunately, I don’t know of any databases that make it free or easy to do a thorough investigation of state, international, and common law trademarks. States may have their own records. Each country has records too. For common law, you can see what comes up on google, but best practice is to search yellow pages, business directories, state business registrations, domain registries, and so on. But obviously doing all of these searches manually will be cumbersome.
There are several companies that have built the technology or systems to scrape available databases for all types of trademarks. The costs of gathering the information will range from a few hundred dollars to well over $1,000. A rule of thumb is the more expensive searches are more comprehensive. Examples of search companies are TrademarkNow and Corsearch.
These searches essentially give you raw data and information. You then need to use this information to investigate and make a judgment call on whether you think your intended trademark passes muster.
No one will force you to perform a trademark search. The purpose of the search is to help you understand your business environment and to evaluate risks. If you want to take on the risk of not performing a search, or even of using another person’s trademark, that’s entirely up to you.
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Step 3: Apply for the Trademark
If you believe the trademark is available, you can claim the common law trademark simply by using it in commerce. There’s actually nothing else you need to do (but you can get my free report with more tips on common law trademark at lawofthebrand.com) If you are only doing business in one state, you may want to register the trademark in that state. This is typically done on a form with the Secretary of State.
If you are engaging in interstate commerce (ie: across state lines), you should consider a federal trademark. (Related: Pros and Cons of Trademark Registration). You can apply for a federal trademark through the USPTO. In fact, they provide a guide to walk you through the process. Most often, I recommend at least doing a basic word mark–meaning you trademark the words you are using as opposed to a particular stylized version of the words. If you trademark the words themselves, you can then style them however you prefer.
The Review Process
Once submitted, an attorney employed by the USPTO evaluates the application. You can familiarize yourself with the Trademark Manual of Examining Procedure to understand what these attorneys are looking for and to help you through the application process. You will not likely receive a response for about 8 months. Because there is a lot of grey area and subjectivity in trademark law, the trademark office often requests some modification or seeks clarification on your application. Although there are no official numbers, trademark attorneys anecdotally observe that 85% of applications come back with at least some minor revisions requested.
On the other hand, the trademark office may deny the application. This often occurs if the trademark is merely descriptive (a weak mark) or if the office deems the trademark to be confusingly similar to a prior registered mark. You will get an opportunity to respond if this occurs.
If your application passes the attorney’s review, the USPTO will publish the application for opposition. This means anyone who takes issue with the registration can file an opposition to the application. When that occurs, you will have to make your case before the Trademark Trial and Appeal Board (TTAB). Of course, the hope is that by choosing a strong mark, performing and adequate search, and appropriately filing the application you will avoid the costs of dealing with infringement claims, oppositions, and the TTAB.
TLDR: Putting it all together
Here’s what you should have learned: A trademark identifies the trademark owner’s goods or service in commerce. Infringing on another person’s trademark puts your business at risk. The 3 steps to claiming a trademark help you avoid these risks by helping you:
- Create a strong trademark,
- Investigate whether that or a similar mark is already in use (a Trademark Search) by–at a bare minimum–performing a knockout search using TESS, and
- Apply for a trademark with the USPTO to protect your own trademark.
If you don’t want to go through all of this by yourself, I’m happy to help. I have the resources in place to help you perform and evaluate a trademark search, submit a strong trademark application, and respond to common USPTO office actions. I can also help you with infringement issues, whether they are claims against you or if you find that your trademark is being infringed upon.
If you have questions about trademarks or want help, you can reach me by email ([email protected]) or by text: 702-291-1799. I also handle copyright and other legal issues for online business.