Quick trademark/copyright question

[davep763]

What is the name of your state (only U.S. law)? Colorado

Hi!

I recently invented a product that I'm going to market in the near future but I know it can't be patented. The name I want is already taken (although it is a slightly different product) although on their website I see no copyright/trademark information. I looked up the name on the US Patent/Trademark website and it came up 'abandoned' in 1997.

My question is: Do I pay a patent/trademark attorney $400 (or up to $1000) to do a 'more advanced' search? How deep do I need to dig? I want to avoid any litigation down the road but I'm not sure how valuable these trademark attorneys are to me at the moment. I am complete newbie to this (obviously!).

Any advice would be greatly appreciated!

Thank you
Dave

 

[justalayman]

the rights in trademark are earned through use of the mark in commerce. There are benefits of registering the mark but it is not required to claim or even defend the mark. Given you are speaking of the owners of the mark selling a very similar product it is quite likely there would be infringement if you go ahead with your plans as described.

 

[davep763]

Justalayman

Thank you for your quick reply.

Unfortunately, not the answer I wanted to hear! It's a similar product but it's for different purposes. In general, is contacting the company about using the name (or purchasing the name) ever successful? I doubt it but I'm just wondering which route to take now.

Thanks
Dave

 

[quincy]

What is the name of your state (only U.S. law)? Colorado

Hi!

I recently invented a product that I'm going to market in the near future but I know it can't be patented. The name I want is already taken (although it is a slightly different product) although on their website I see no copyright/trademark information. I looked up the name on the US Patent/Trademark website and it came up 'abandoned' in 1997.

My question is: Do I pay a patent/trademark attorney $400 (or up to $1000) to do a 'more advanced' search? How deep do I need to dig? I want to avoid any litigation down the road but I'm not sure how valuable these trademark attorneys are to me at the moment. I am complete newbie to this (obviously!).

Any advice would be greatly appreciated!

Thank you
Dave

How much you spend to best ensure you are not infringing on anyone else's trademark is entirely up to you. Prices for search firms vary.

It is generally advised that a trademark search not be limited to the USPTO database, though. There can be state registration of a mark and, as justalayman said, a trademark does not have to be registered at all. A trademark gains rights just through the use of the mark in commerce. What is different with trademark registration versus no-registration are the legal options available to the trademark holder should the mark be infringed.

To avoid some costs and most legal risks, creating a name that is unique to you and your business alone (inventing a word, combining two unrelated words to form a new one) is an option often overlooked by many but is an important option to consider. Some of the best known, most famous trademarks in the world are invented words/portmanteau words.

Good luck.

 

[davep763]

Thank you both for taking the time to reply, it has been helpful!

I might be back in the future for more guidance.

Thanks!
Dave

 

[quincy]

You're welcome, davep763. We both thank you for the thanks.

 

[davep763]

Ok, so I have another question (or 4) for you:

I came up with another product name and I registered my domain name which I plan to use as an ecommerce site.

1) By using the same logic above, as soon as I sell X number of products (is 1 enough?) through that website, will my name be 'trademarked'?

2) Or should I go through the legal channels to have it trademarked?

3) And if I go through the legal channels, how much should I expect to pay?

4) And finally, since my product could be described as a novelty product, is it that important to trademark?

As always, thank you for your time and insight.

Dave

 

[FlyingRon]

1) By using the same logic above, as soon as I sell X number of products (is 1 enough?) through that website, will my name be 'trademarked'?

There's no hard and fast number, but as long as you are using it in commerce (i.e. attempting to sell things with that name) you should get some level of
trademark rights.

2) Or should I go through the legal channels to have it trademarked?

That's up to you. Registration is frequently not particularly warranted and you can always do it later in most cases.

3) And if I go through the legal channels, how much should I expect to pay?

The filing fee alone is $375 (non-refundable). If you need legal assistance preparing the application it will run several hundred more.

4) And finally, since my product could be described as a novelty product, is it that important to trademark?

As stated, any non-discriptive/non-generic name you use for it in commerce is a trademark, it's just a matter of how much protection that mark is accorded.

 

[justalayman]

1) By using the same logic above, as soon as I sell X number of products (is 1 enough?) through that website, will my name be 'trademarked'?

it does not become "trademarked" It becomes a trademark and any use in commerce is adequate to make the claim it is your trademark (obviously subject to prior claims of the name).

2) Or should I go through the legal channels to have it trademarked?

it is a good idea to register your trademark either with any state office your state may have and/or the federal registry. It provides additional benefits to register with the federal registry over the state registries or not registering it.

3) And if I go through the legal channels, how much should I expect to pay?

that one Quincy would probably be able to tell you but I think there is a FAQ on the USPTO site that has that question and answer.

4) And finally, since my product could be described as a novelty product, is it that important to trademark?

that is your decision. If you want to be able to claim sole use of the name, it would be a good idea to claim it as a trademark and register it.

as to it being a novelty product and is it worth registering it; Maybe you should check out Ron Popeil and his product line. That might give you a better answer than I could ever construct.

 

[quincy]

Ok, so I have another question (or 4) for you:

I came up with another product name and I registered my domain name which I plan to use as an ecommerce site.

1) By using the same logic above, as soon as I sell X number of products (is 1 enough?) through that website, will my name be 'trademarked'?

2) Or should I go through the legal channels to have it trademarked?

3) And if I go through the legal channels, how much should I expect to pay?

4) And finally, since my product could be described as a novelty product, is it that important to trademark?

As always, thank you for your time and insight.

Dave

How much it costs to register your trademark depends on how you intend to file your application. The fee to file your application by paper is currently $375 per class. The fee to file your application through the USPTO's Trademark Electronic Application System (TEAS) is currently $325 per class. There is also a TEAS PLUS filing which has an application fee of $275 per class.

You would add to the application fee any attorney fees you might have, should you choose to have legal assistance in filling out and filing your application.

Registration of a trademark is not necessary. You gain rights in a mark, and protection for your mark, just by using it as an identifier for your product or service.

 

[davep763]

Thank you to everyone that replied. I'll probably hold off for a bit on registering it for a trademark....at least until I make my first billion, ha! I think that money could be better spent on marketing, at least for now.

Thanks again for taking the time to reply, it's cleared up a lot of muddy things in my noggin.

I'm sure I'll be back for more noob advice soon!

Dave

 

[quincy]

There is generally someone hanging around the forum to answer questions, so come back any time.

 

[davep763]

Back again with a simple question...

So after reading up on professional sports licensing, it's obvious that I can't obtain a license yet for logos and such. For right now, I'd like to make letters that spell out a team name in the team's colors. D E N V E R B R O N C O S in orange and blue etc... That should be completely kosher because you can't trademark letters and their respective colors, correct?

I'm also curious about partnering with someone who already has a license (NFL, NCAA, etc..) but I can look that up in more detail myself (or if anyone wants to chime in I'd be grateful for that).

As always, thank you for your help!
Dave

 

[quincy]

Back again with a simple question...

So after reading up on professional sports licensing, it's obvious that I can't obtain a license yet for logos and such. For right now, I'd like to make letters that spell out a team name in the team's colors. D E N V E R B R O N C O S in orange and blue etc... That should be completely kosher because you can't trademark letters and their respective colors, correct?

I'm also curious about partnering with someone who already has a license (NFL, NCAA, etc..) but I can look that up in more detail myself (or if anyone wants to chime in I'd be grateful for that).

As always, thank you for your help!
Dave

Names and colors can be trademarks and, in the case of sports teams, both typically ARE trademark-protected - either in combination or on their own. For example, I cannot use University of Michigan's rights-protected block "M" and I cannot use maize and blue together and I cannot use the name "Michigan" on a maize-and-blue or maize or blue product, without infringing on U-M's trademark rights.

You will need to obtain directly from the organizations that hold the rights (the NFL, the NHL, the NCAA, the NBA, whatever) a license to use the team names, logos, colors, slogans or anything else that is rights-protected. These licenses are not inexpensive and the organizations that grant licenses tend to be extremely selective. Most licenses that are granted are not transferrable.

Here are possibly helpful links to three previous threads that discuss sports trademarks in greater detail:

https://forum.freeadvice.com/sports-arts-entertainment-law-86/using-sports-team-names-cities-493346.html

https://forum.freeadvice.com/sports-arts-entertainment-law-86/selling-reconstructed-hockey-jerseys-legal-506442.html

https://forum.freeadvice.com/copyrights-trademarks-39/pro-sports-teams-nicknames-532968.html

 

[davep763]

Wow, that's interesting.

Quincy, you state "you CAN make, say, "MICHIGAN" tee-shirts in maize and white, or blue and grey, or even pale blue with lemon yellow, to avoid infringement"

So if the colors are off a little bit it might be legal? Who determines if they're 'off' enough?

Thanks
Dave