Seeking clerification on Trademarking my website's name, phrase and two logos.

[ned4spd8874]

What is the name of your state (only U.S. law)? IL
I run a fairly successful website that averages about a quarter million hits a month. I would like to TM my sites name, a phrase that I use (also the url) and two logos that I had created (they are mine, the artist relinquished all rights to me) for my site.

I've done some searching on the TM site and can't find any previous claims on the phrase or name. And I've read that I can do it myself if I just be careful and do it properly.

Out of the many questions I still have, the biggest right now is can I file a sort of all-in-one request to TM all 4 items at once? Or does each item need it's own separate request? Money is a huge factor. I don't have much and unfortunately the site doesn't generate much either.

Any help and advice would be very much appreciated!

 

[quincy]

What is the name of your state (only U.S. law)? IL
I run a fairly successful website that averages about a quarter million hits a month. I would like to TM my sites name, a phrase that I use (also the url) and two logos that I had created (they are mine, the artist relinquished all rights to me) for my site.

I've done some searching on the TM site and can't find any previous claims on the phrase or name. And I've read that I can do it myself if I just be careful and do it properly.

Out of the many questions I still have, the biggest right now is can I file a sort of all-in-one request to TM all 4 items at once? Or does each item need it's own separate request? Money is a huge factor. I don't have much and unfortunately the site doesn't generate much either.

Any help and advice would be very much appreciated!

First I would like to clarify for you a common misconception. You do not "trademark" a name (or a phrase or a logo). The name, phrase, slogan or logo ARE your trademarks.

A trademark is what you use to identify your business, product, or service from all others. These identifiers of your business, your goods or your services (the name, the slogan, the logo) can be registered with the trademark office but trademark RIGHTS in the U.S. are not acquired through registration. You gain trademark rights to names, slogans and logos through the use of them in commerce in connection with a business, the business products or the business services.

In the U.S., it will generally be the first to use the trademark in commerce to identify goods or services who will be considered the "owner" of the mark - at least in the geographic area in which it is used. There can be several trademarks that are the same or similar but they do not compete in the same marketplace, either because their markets are geographically separate or because the types of goods or services they offer the public are different.

There are several ABC trademarks that peacefully coexist, for example, because consumers do not confuse the ABC warehouse, marketer of appliances, with the ABC broadcast network, marketer of news and (sometimes horrible) television shows. Many logos that exist are similar in design but, again, they are used to identify non-competing companies.

Trademark law centers on consumer confusion. Your trademark, in other words, should be a distinctive identifier of your business product or service, distinguishing yours from all others, so that consumers are not confused. Your goal is to make consumers know who you are and not to confuse consumers into thinking your business product or service is someone else's. Consumer confusion arises (and trademark infringement suits arise) with the use of the same or similar name on the same or similar goods or services being marketed in the same geographic area or to the same consumers.

You can register your name and your slogan together, if you intend to use them together as your identifier. If your logo has enough creative and original elements in its design, it may qualify for both registration with the Copyright Office and with the Trademark Office. Again, nothing NEEDS to be registered in the U.S. to gain either copyrights or trademark rights. These occur naturally, for copyrights, upon creation of an original and creative work and, with trademarks, the rights occur with the use of them in commerce. Registration provides additional protection for both trademarks and copyrights, however, should either be infringed.

For information on registration of trademarks, logos and slogans, you can visit the trademark office website: http://www.uspto.gov and for information on registration of logos (or to see if yours can qualify for registration), you can visit the copyright office website: http://www.copyright.gov

Good luck.

 

[ned4spd8874]

Thanks for the great reply! That's good to know! I still want to register my name, slogan and logos however. I think that would be best.

One reason is because someone is kind of using my name currently. I don't want to give anything away here, but for example: my website url is companya.com and someone else created an app that does exactly what my site does and has called it companya. I want to register my url "companya" so that nobody else can use that.

As I said, my site is fairly popular and doing great and growing every day. But some have been confused when they find an app for their mobile phones that correspond to my website's url that does the same thing! I don't like this. I feel I can't do anything about it unless I register my stuff.

Also, I WANT to create an app and am in the process. However, I would like to call my app "companya" since that's what everyone recognizes as mine.

Any more thoughts or suggestions. Money is going to be the sticky point here as well...

 

[quincy]

Thanks for the great reply! That's good to know! I still want to register my name, slogan and logos however. I think that would be best.

One reason is because someone is kind of using my name currently. I don't want to give anything away here, but for example: my website url is companya.com and someone else created an app that does exactly what my site does and has called it companya. I want to register my url "companya" so that nobody else can use that.

As I said, my site is fairly popular and doing great and growing every day. But some have been confused when they find an app for their mobile phones that correspond to my website's url that does the same thing! I don't like this. I feel I can't do anything about it unless I register my stuff.

Also, I WANT to create an app and am in the process. However, I would like to call my app "companya" since that's what everyone recognizes as mine.

Any more thoughts or suggestions. Money is going to be the sticky point here as well...

Money is always a sticky point.

If there is someone else who is already using your name on an app, and the app is already being confused as being something your company produces, you may want to consider sending the owner of the app a "cease and desist" letter. The letter can advise the app owner that he is infringing on your trademark by using the name "companya." You can advise the app owner that he should immediately cease using your name to identify his app or legal action will be considered or pursued.

It is important to note that cease and desist letters are only letters, even when drafted and sent by an attorney. They have no force of law behind them and the recipient of a C & D can choose to ignore the letter without penalty. That said, when a C & D is sent by an attorney, the recipient of the letter is made aware that an attorney has been contacted and legal action becomes a real possibility. If the recipient believes he is infringing on your mark and has no defense, he may stop using the same trademark to prevent the risk of a lawsuit. If he ignores the letter, on the other hand, you may be forced into the position of suing in order to keep the companya name as your own.

Registration of the name will make you the "presumed owner" of the mark, but this is a rebuttable presumption. The app owner can challenge your rights to the name. If he can show he has used the name longer than you have, or if he can show that his use of the trademark does not conflict with your use, he might be able to keep the name. If you can show first use of the mark and can additionally show that consumers have been confused by the dual use of the name, you could be able to keep the name and prevent him from using it on his app.

But all facts matter. A personal review of both your website and its contents, and a personal review of the app, is wise and advised. Perhaps, if money is an issue, you can see if a law school in your area can assist with this review and offer an opinion.

Good luck.


edit to add: I see you have listed as your location "Madison Heights, Mi" but have put "Illinois" as your state name? Are you going to school in Illinois?

 

[ned4spd8874]

Money is always a sticky point.

If there is someone else who is already using your name on an app, and the app is already being confused as being something your company produces, you may want to consider sending the owner of the app a "cease and desist" letter. The letter can advise the app owner that he is infringing on your trademark by using the name "companya." You can advise the app owner that he should immediately cease using your name to identify his app or legal action will be considered or pursued.

It is important to note that cease and desist letters are only letters, even when drafted and sent by an attorney. They have no force of law behind them and the recipient of a C & D can choose to ignore the letter without penalty. That said, when a C & D is sent by an attorney, the recipient of the letter is made aware that an attorney has been contacted and legal action becomes a real possibility. If the recipient believes he is infringing on your mark and has no defense, he may stop using the same trademark to prevent the risk of a lawsuit. If he ignores the letter, on the other hand, you may be forced into the position of suing in order to keep the companya name as your own.

Registration of the name will make you the "presumed owner" of the mark, but this is a rebuttable presumption. The app owner can challenge your rights to the name. If he can show he has used the name longer than you have, or if he can show that his use of the trademark does not conflict with your use, he might be able to keep the name. If you can show first use of the mark and can additionally show that consumers have been confused by the dual use of the name, you could be able to keep the name and prevent him from using it on his app.

But all facts matter. A personal review of both your website and its contents, and a personal review of the app, is wise and advised. Perhaps, if money is an issue, you can see if a law school in your area can assist with this review and offer an opinion.

Good luck.


edit to add: I see you have listed as your location "Madison Heights, Mi" but have put "Illinois" as your state name? Are you going to school in Illinois?

Thanks again for the great advice! I still have to figure out what to do with that other guy. Like I said, having a registered TM would help me I think.

Does it matter if there is a space in the name. For example, my site is beerlover.com and his app is Beer Lover; would you think that's close enough? Remembering that both my site and his app are exactly the same. Also, it is a very specific niche. There are only a handful of sites/apps that do what I do. Also, it's not like we both do beer reviews or something. More like I rate bottle labels and so does he. Make sense?

I almost forgot, his app is a paid for app, I think he charges .99 for each install.

Oh, also, I am currently living in Illinois. I used to live in Michigan, but moved about a year ago. I just forgot to update my location on here.

Thanks again for all the great advice! I need to start saving my pennies!!!

 

[quincy]

Thanks again for the great advice! I still have to figure out what to do with that other guy. Like I said, having a registered TM would help me I think.

Does it matter if there is a space in the name. For example, my site is beerlover.com and his app is Beer Lover; would you think that's close enough? Remembering that both my site and his app are exactly the same. Also, it is a very specific niche. There are only a handful of sites/apps that do what I do. Also, it's not like we both do beer reviews or something. More like I rate bottle labels and so does he. Make sense?

I almost forgot, his app is a paid for app, I think he charges .99 for each install.

Oh, also, I am currently living in Illinois. I used to live in Michigan, but moved about a year ago. I just forgot to update my location on here.

Thanks again for all the great advice! I need to start saving my pennies!!!

Registering a trademark is a good idea, but I am concerned about the examples you give.

The owner of a "Beer Lover" trademark may not be able to register the mark, unless or until the mark has become connected in consumer's minds with the specific product or service it is used to identify. It would (probably) be considered a weak mark. It would (probably) be seen by a trademark examiner as inadequate in distinguishing one beer-related product or service from all other beer-related products and services. For instance, the word beer (like the words computer or bank or doughnut and other nouns) can be used by anyone. They are not protectable on their own under trademark laws.

Now, if the trademark "Beer Lover" were used on something not beer-related (for instance, as a clothing line or a fragrance identifier), then it might be considered distinctive enough as a trademark to be eligible for registration.

Leaving that issue and heading on to the spacing of words in a trademark - Spaces will not make a trademark-infringing trademark non-infringing. For example, trying to use "Star Bucks" instead of "Starbucks" is not going to work for a coffee shop (or for that matter, because Starbucks is a famous mark, even as an identifier for products or services that have nothing to do with coffee). The use of the same name will cause confusion, or is likely to cause confusion, with consumers and, as I said earlier, the purpose of a trademark is to distinguish one product from another so consumers will not be confused as to the origin.

I understand that money is a problem. It is for most people. But if you are developing a business, you really should invest some money in its protection by sitting down with a legal professional in your area who can help you work on the areas of your business (including the trademarks, phrases and logos) that are likely to cause you grief.

Good luck.