This book, published in 2005, contains some outdated material. However, it also offers valuable information worth remembering.

Here are a few key points that have stuck with me:

  • Trade name: Formal name of the business for purposes of bank accounts, creditors, and potential lawsuits
    • Example: The Goodnight Meat Company
  • Trademark: Name used by a business to market its goods and services
    • Example: “Sunrise Sausage” to identify a good produced by The Goodnight Meat Company
  • The strongest trademark is one that is coined (made up), such as Exxon
    • A unique name by nature is considered to be a distinctive name and a distinctive name is entitled by law to protection as a trademark
  • Weakest trademarks: Descriptive names and most ordinary names unless they gain secondary meaning over time
  • Names to avoid: Personal names, including nicknames, first names, surnames, and initials (there are more but these are the ones I cared about)
  • Ideas for what counts as specimens for service marks: a letter with the mark appearing and the services described… it could be a letter sent out to a lead
  • Ideas for what counts as a specimen for marks on goods: JPEG of your website with domain name a prominent part of the design of the home page.
    • The services being offered on your website should match the description of the services in your application
  • If you have not heard from the USPTO office in 6 months about the application… follow up
  • When your mark is federally registered… add the Registration symbol sporadically with that word
  • You can use TM (for trademark) and SM (for service mark) alongside an unregistered mark to show that you claim ownership of the mark and intend to assert your right against imitators
  • During the 5th and 6th years after federally registering your mark, you should complete and file two PTO forms:
    • Section 8 Declaration
    • Section 15 Declaration
  • If you use a mark for 5 years… it will qualify for incontestable status
  • Maintain tight control of your mark… police your trademark (you can hire a company to do this, etc.)
    • If you discover someone else using your mark, first send a letter protesting the use of the mark and asserting claim of ownership
  • Transferring ownership of the trademark… read pages 253-255
  • Distinctive (or strong) slogans can be registered as trademarks with the USPTO
    • Some slogans are inherently distinctive if, by their very nature, they create a memorable association with a particular product or service
      • Example: “Reach Out and Touch Someone” qualifies as it does not describe the service
  • Do thorough research to ensure that the trademark you want to use is not in use.
    • Search state-registered trademarks and tradenames
    • Lookup them up in the USPTO
    • Google
    • Lookup names that might sound or look alike and might cause customer confusion
  • George Eastman, founder of Kodak and a man with an eye for a good trademark, suggested that trademarks:
    • Be short
    • Be vigorous
    • Be easily spelled, and
    • Mean nothing
  • Other trademark experts recommend that name marks be:
    • Pronounceable
    • Memorable
    • Graphically attractive (for instance, no hyphens), and
    • Legally available
  • Fit your goods and services into the appropriate class
  • Short on money and can’t register multiple marks? Register the unadorned name first
    • This gives the flexibility of using the name in many different configurations in the future without having to affect new registrations
    • Consider later registering the mark under more classes to increase the scope of protection as you spread into other classes
    • There is a difference between trademark and copyright - Trademark protects expression that is used to identify and distinguish a product or service in the marketplace

Within each of these points, I could go deeper… but I will leave it to you as homework.:)

Cheers,

Gaby