Domain name and trademark availability aren’t interchangeable

Domain name and trademark availability aren’t interchangeable

In the quest for the perfect business name, you’ll likely find yourself doing a lot of online research and sleuthing around to make sure you don’t infringe on someone else’s trademark.

(At least, that’s what you should be doing.)

If you’re like most people, there’s a good chance that search leads you to a domain name availability checker.

But there’s a problem with that.

The problem is that your domain name and trademark are not the same.

And the availability of one doesn’t dictate the availability of the other.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Domain name ≠ Trademark

Trademarks are widely misunderstood.

But in a nutshell, a trademark is a unique identifier that allows your customers to know at a glance that the product/service they’re getting is coming from you.

Your trademark can take a lot of different forms, including words, logos, slogans, sounds, and colors.

Domain names are vastly different from trademarks.

A domain name is a unique name associated with an IP address. To be considered whole, a domain name has to be used with its suffix.

Those are the letters that follow the dot after the domain name, like “.com,” “.net,” “.org,” and so on.

In general, domain names are “first come, first serve.”

The first person to purchase a domain name retains the rights in the domain until they sell it or the registration expires. 

Even if the domain name is a trademark for someone else.

In which case, you can imagine there are instances of someone selecting a domain name in bad faith with the intention of luring potential customers to the website to purchase products they believe come from a competitor.

Or cybersquatting – when someone purchases a domain name for the sole purpose of prohibiting a trademark owner from gaining access to the name or to sell it for an exorbitant amount.

Not cool.

Infringing on another trademark

For our purposes, let’s assume the domain name owner had no ill intent when they purchased the name. 

They may not be acting in bad faith or cybersquatting, but they could still find themselves with legal issues.

How?

If the owner of the domain name starts to use it in a way that infringes on someone’s trademark rights, they could be facing a cease and desist letter, UDRP (Uniform Domain-Name Dispute-Resolution) complaint, or litigation.

Trademark infringement occurs when someone uses another company’s trademark on or in connection with goods and/or services.

And they do so in a manner that’s likely to cause confusion, deception, or mistake about the source of the goods and/or services.

In other words, you could potentially own a domain name that’s similar or even identical to someone else’s trademark without infringing on that mark…

As long as whatever you’re doing with that domain name is in no way connected to what the trademark owner does.

(And a lot of this will be determined by international classes.)

What business owners need to know

All of this is to say that you need to make sure that the domain name you plan to use isn’t at risk of infringing on someone else’s trademark rights.

And you do that by going back to the search we talked about in the beginning.

Once you’ve chosen a distinct name you feel good about for your business, you need to take it a lot further than a domain name availability checker.

You need to run a comprehensive trademark search and include as many different variations on the name as possible – to make sure there is no likelihood of confusion between your domain name and someone else’s trademark.

And once you’ve done that, you can look into registering your domain name as a trademark.

But that’s a discussion for another article.

Need help navigating it all? Apply to work with Nicole Cheri Oden Law.

 

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

Is a free trademark search good enough?

Is a free trademark search good enough?

There’s a new trademark search platform in town.

TESS (the Trademark Electronic Search System) retired after 23 years to make room for the United States Patent and Trademark Office’s (USPTO) new system:

Trademark Search.

The name may be simple, but the platform really isn’t.

As the USPTO works out the kinks with its new system, the results of your free trademark search can be a bit jumbled up.

The search engine isn’t very intuitive – you’ll probably need to set aside several hours for a basic search now.

And these new changes may leave you wondering if a free trademark search before you file is good enough.

Or if it’s time to work with an attorney.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Conducting a knockout search on the new platform

Conducting your own free trademark search, otherwise known as a knockout search, is always a good idea.

It can help you save time and money before you actually call up a Trademark Attorney.

But only if you know how to do it correctly.

With the new system, there are two different search types to choose from:

  1. Basic Mode
  2. Expert Mode

Conducting a free trademark search in Basic Mode

In basic mode, you can run simple searches for a few things:

  • the name of the trademark,
  • goods and services, 
  • an application’s serial number, 
  • a registration number, 
  • the owner or applicant, and 
  • a mark description (for logos, imagery, or words)

Just select what you’re searching for from the search dropdown menu.

Conducting a free trademark search in Expert Mode

To take it a bit further, expert mode allows you to select the Class Filter from the left-hand menu and search for specific classes.

You can even select coordinated classes (those the USPTO has grouped together for goods and services that are closely related).

And you can search by field tags – a “code” you can add to your search to find detailed information.

For example

The field tag [on] would search and return matching owner names.

A note of warning here:

The new system no longer provides one-click access to a summary of information about the specific registration or application.

You’ll need to know how to navigate the Trademark Status and Document Retrieval (TSDR) page to find relevant information.

Why you should do your own search

Before you even start your search on the Trademark Search platform, make sure you’ve done a little sleuthing first:

–Look for your trademark on social media sites

–Check out domain hosting sites

–Dig around on Google

If that quick check doesn’t return any conflicts, you’re probably ready to try running a search on “basic mode” to dive deeper.

Doing your own search means you can confidently move on to the next step of hiring an attorney for a comprehensive search.

The difference between a comprehensive search by an attorney and your free trademark search

So what will an attorney do differently than you can do with your own free trademark search?

To be honest, you can do a lot of the same things an attorney will do for you if you have the time and energy to dedicate to your search.

For example, these are things your attorney will do that you could do if you know how:

–Narrow down the search by class

–Sort through canceled and abandoned registrations

–Take coordinated classes into account and sift through all of those

In addition to exploring all the variations of a mark, including

-plurals or nonplurals

-each word by itself (if your trademark has more than one word)

-any acronyms and what they stand for

-phonetic equivalents

-all English equivalents if the mark is in another language 

And running all those variations through Trademark Search to check for other applications or existing registrations.

But your attorney will also expand the trademark search to include state and common law trademarks that could cause potential headaches down the road for you.

Not to mention that a proper comprehensive search can take hours and hours thanks to the immeasurable different variations of the trademark.

Because if there’s even one misspelling or incorrect search option, you may think you’re in the clear when you really aren’t.

And no one wants to find out they aren’t in the clear after they file their trademark application.

When your free trademark search goes wrong

Shortly after the launch of Trademark Search, a client came to me after filing her own trademark application. (She had used the new platform to run her own knockout search.) 

2 weeks after filing, she had an email in her inbox: “Cease and desist.” 

Turns out there actually was a business with an extremely similar mark for extremely similar services that held a trademark registration with the USPTO. 

And they were requesting that she expressly withdraw her trademark application. 

She didn’t know what she had done wrong and was ADAMANT that she hadn’t found an exact match for the same goods and services.

Upon reviewing her case, I found she’d filed her application in the wrong class with an inaccurate description of her services.

So not only was she out the filing fees she paid to the USPTO, but she also had to pay additional fees for me to clean up the mess. 

A huge part of what I do involves empowering online business owners to handle their own legal.

And you need to do some initial legwork – like running knockout searches – before you contact an attorney.

But that’s all those free trademark searches are really good for: 

A quick initial check.

Once that’s done, you definitely want to talk to an attorney to make sure you’re not gambling with your time, money, effort, or brand.

Apply to work with Nicole Cheri Oden Law when it’s time to secure your trademarks.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

 

Are trademark rights forever?

Are trademark rights forever?

The new PDF registration certificates from the United States Patent and Trademark Office (USPTO) aren’t as spiffy as the old paper certificates – but they’re just as valuable.

Because once you’ve received that email, you’re officially a registered trademark owner.

You deserve to celebrate!

But don’t get ready to wash your hands of the whole trademark registration biz and carry on as before.

In fact, if you want to keep your newfound trademark rights, you’ve just signed on for a whole list of trademark ownership obligations.

And if you don’t stay on top of them…

You could just as easily lose your trademark rights.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Maintenance and renewal filings

There are several actions you’ll need to take in the first 10 years of trademark ownership.

Between years 5-6

File a Declaration of Use under Section 8 to show you’re still using your registration. 

You’ll need to include specimens for each class of goods and services you originally listed in your application.

An optional step at this stage that I highly recommend is to:

File a Section 15 Declaration of Incontestability.

Once your trademark is incontestible, certain aspects of your registration can’t be challenged by third parties.

Aspects including:

  • The validity of the registered mark. 

The incontestable status of a trademark creates a legal presumption of its validity, making it easier for the trademark owner to defend against challenges to its registration.

  • The owner’s ownership of the mark.

In court proceedings, incontestable trademark registration is considered conclusive evidence of the trademark’s ownership.

  • The owner’s exclusive right to use the registered mark in commerce.

Incontestability provides a defense against certain grounds of cancellation, such as claims of descriptiveness or likelihood of confusion.

Between years 9-10

File a Section 8 Declaration of Use combined with a Section 9 application for renewal, including specimens for each class.

You’re once again declaring that your trademark is still in use for the goods and services listed in the registration.

Every 10 years after

You will need to continue filing a Section 8 Declaration of Use combined with a Section 9 application for renewal every 10 years. 

And, of course, there are filing fees that go along with each of the steps laid out here.

Policing your trademark 

A lot of business owners think they’re pretty much done worrying about trademark registration once they have that certificate.

But it’s not time to let your guard down yet.

Because for as long as you’re a trademark owner, you’re responsible for policing your mark and taking action if someone else tries to infringe on your trademark rights.

In fact, the USPTO literally states

You are responsible for enforcing your rights if you receive a registration, because the USPTO does not ‘police’ the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.

And if you don’t?

Your trademark registration could actually be canceled.

Here are a few ways you can police your mark:

–Set up a free Google alert to get notified whenever your trademark is mentioned online.

–Regularly run internet searches on your preferred search engine.

–Regularly search for your mark on social media.

–Check the USPTO database for new filings.

If you find an infringer, chat with an attorney for next steps – including a cease and desist letter – right away.

Proper trademark use

Once you own a registered trademark, you want to make sure you’re actually using it properly.

This is especially important on your website (aka your virtual storefront) so you don’t endanger your mark’s protection.

Here are 5 steps to take:

  1. Use the proper trademark symbol.

Should you use the ™ or ® symbol?

The ™ symbol is used for common law marks representing goods or services not federally registered with the USPTO, including marks whose registration is pending. 

In the case of unregistered marks, the ™ symbol always is correct.

The ® symbol is used for marks registered with the USPTO. 

This symbol can only be used once federal registration is granted (applying for a trademark isn’t enough) and only in connection with goods and services listed in the federal registration. 

  1. Check that the symbol is in the right place.

The ™ or ® symbol should be placed immediately following the mark.

It’s standard practice to place the symbol in superscript in the upper-right-hand corner.

  1. Check that you’re using the symbol frequently enough.

Use the symbol in the first instance the mark is used, in the most prominent use of the mark, or in the website footer.

It’s best practice to use the trademark symbol at least once per web page on which the mark is used. 

And placing the trademark symbol in any static representation that is repeated on every page is also a good idea (for example, trademark notice in the website footer).

  1. Use your trademark as an adjective only.

Your trademark should be used throughout your webpage as an adjective (aka a word that describes the traits, qualities, or number of a noun). 

Trademarks should never be used as nouns (a person, place, or thing), a verb (an action word), or as a possessive. 

  1. Update your trademark notice.

Include a trademark notice in either the website’s footer or on a standalone page that lists all trademarks (common law or registered) as trademarks of your company.

Protect your trademark rights forever

The cool thing about trademark registration is that so long as you:

–Stay on top of your renewal and maintenance filings 

–Police to protect your mark from infringement and genericide

–And use your mark properly

That registration could last forever. 

Listen to episode 30 of Uncomplicating Trademarks to learn how our Watch The Mark services do the heavy lifting for you.

Or apply to work with me if you already know you need a trademark attorney on your side.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

Can you request a USPTO refund if your trademark application is refused?

Can you request a USPTO refund if your trademark application is refused?

The short answer is no.

You can’t request the United States Patent and Trademark Office (USPTO) refund your fees if your trademark application isn’t successful. 

There’s actually a big ol’ warning on their website when you go to pay the fees. It reads:

Once you submit this application, we will not cancel the filing or refund the fee. The fee is a processing fee, which we do not refund even if we cannot issue a registration after our substantive review. This is true regardless of how soon after submission you might attempt to request cancellation of the filing. Therefore, please review ALL information carefully prior to submission.

In other words…

No takesies-backsies when it comes to your trademark registration fees.

Which is why you want to be really sure you’ve filed your application correctly.

Because your trademark is never guaranteed registration and (as we’ve just learned) there are no USPTO refunds available once you start the application process.

So what can you do?

Make sure your application has the best chance at success possible by educating yourself on the process.

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

Avoiding the reasons for trademark registration refusal

The sad truth is that nearly half (48.3%) of all trademark applications filed with the USPTO will be rejected.

In fact, the U.S. has the lowest success rate for successful trademark registration worldwide.

Ouch.

Some of the most common reasons a trademark registration will be refused include:

  1. You’ve created a likelihood of confusion with an existing registered trademark (or a mark with a pending application).
  1. Your mark is too descriptive.
  1. Your mark fails to function as a trademark – it consists of common terms or phrases consumers are unlikely to perceive as a brand identifier.

The best thing you can do is understand why trademarks are refused and take preventative measures.

Understanding the trademark application process before you file

Besides running a thorough trademark search to avoid your mark coming up against a claim of “likelihood of confusion,” there are a lot of things to consider about the trademark application process.

Choosing to register words and/or design

One of the first considerations includes whether you’ll apply to register your words or a combination of words and design.

If you register as a word mark, you’re simply registering the text. Which means those words are protected no matter what they look like.

If you register as a design mark, your mark is only protected when it’s presented in the same format as it was when you applied for registration.

You’ll have to decide which option is best for your brand.

Choosing from an in use or intent to use application

Another choice you’ll need to make is whether you should file your application as an in use or intent to use your trademark.

An in use application can be filed when you’re actively using your trademark in commerce (for goods and services).

You’d choose this option if you’re already committed. 

(Hopefully, you conducted a knockout search and had an attorney run a comprehensive trademark search well before you committed, though.)

An intent to use application can be filed if you haven’t actually started using your mark yet, but you plan to in the future and want to “reserve” the mark for yourself.

Filing an intent to use application is more work, but it’s the right move if you’re serious about protecting your mark(s).

Choosing your international classes for your trademark application

International classes help distinguish your trademark usage and make it easier to spot potential infringement.

Most marks will fall into multiple categories, so it’s important to choose the right ones.

If you fail to choose the right international class(es), your trademark might not be completely protected – even if you do reach registered status.

Saving on fees in other ways

There’s no doubt that filing a trademark application can be overwhelming, time-consuming, and expensive.

And while it would be nice if you could get that USPTO refund for trademark applications that don’t make it to registration, we know that’s not possible.

Sometimes, business owners find other ways to save on fees.

Like using an online trademark service that gives you a discounted price.

The problem?

You’re still doing all the legwork yourself – including choosing classes, drafting goods and services descriptions, and selecting specimens – without much (or any) oversight or input from the service provider.

Plus, there are no refunds from those online services when things go sideways, either.

Your best bet to avoid the headaches and hassles of trademark registration refusal in the first place is to work with a trademark attorney.

They’ll run a comprehensive search and help you make all the tough choices outlined here.

Your trademark attorney will even help you respond to – and potentially work through – a USPTO refusal.

Apply to work with Nicole Cheri Oden Law, and let’s set your application up for success. (Since we know there are no USPTO refunds available.)

 

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

 

When to claim color in your trademark application

When to claim color in your trademark application

What immediately comes to mind when you picture a Tiffany’s box?

It’s not the shape or size (though the best things do come in small packages, right?).

It’s probably not even Tiffany’s stylized logo or word mark.

It’s undoubtedly that hyper-specific, instantly recognizable Tiffany Blue color.

That particular shade of blue is a Pantone Color called “1837 Blue.”

Named for Tiffany’s founding year.

That’s how ingrained the color is into Tiffany’s brand identity.

So, okay, you’re not exactly running a multi-billion dollar jewelry business.

But when does it make sense for you to claim color in your trademark application? 

(And when can you skip it?)

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us. 

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

The role of color in your trademark application

Design mark applications with the United States Patent and Trademark Office (USPTO) give you the option to claim color for your trademark.

A design mark (aka a special form mark) is a mark that includes text along with specific stylized elements – like graphics, artwork, font, and of course, color. 

Here are the 2 options for color when you’re filing your trademark as a design mark:

  1. You don’t claim color

If you choose not to claim color, you’ll provide a drawing (aka image) of the trademark with your application in black and white. 

But that doesn’t mean you’re limited to ONLY black and white when you share your mark. 

You can use whatever colors you’d like, so long as the design itself doesn’t change.

  1. You do claim color

If you do claim color, then you’ll submit your drawing (image) in the exact same color you wish to register as a trademark. 

And your design must appear in that same color whenever you share your mark. 

Arguably, registration of a design mark in black and white provides the most comprehensive protection since your design is protected in any color you choose to represent it in.

So, if registering your mark in black and white is so great, why is claiming color even an option?

Because if color is a distinct part of your brand’s identity – and you know you won’t be changing it – then claiming color may be the best move for your brand.

I mean, imagine if someone claimed they bought you a gift from Tiffany’s, and it came in a bright pink bag.

You’d immediately think they bought you a knockoff, right?

More brands whose colors are their visual identity

When you see a brown van roll up in front of your house with a delivery, you immediately know it’s UPS (United Parcel Service of America, Inc.). 

UPS has been delivering parcels in their signature brown vehicles since 1919 and has several trademark registrations that claim the colors brown and gold as part of their mark. 

Target’s, well, target logo is no doubt distinctive, and they claim that particular shade of red in the trademark registration for its online store.

And can you guess what color Home Depot claims in its registration?

Orange, of course.  

You could probably picture each of those colors and logos in your mind as soon as I mentioned them.

That’s because we’ve been trained to associate all those colors with their brands. 

They’re an integral part of each of those brand’s visual identity.

Will you claim a color trademark?

An important reminder: trademarks and brands are different.

Your brand is the overall feeling your customers or clients get from your business. It’s their experience and your reputation that’s built over time that creates your brand.

A trademark is something that represents your brand and helps your customers/clients easily identify you.

But despite the difference, the two are closely linked.

A trademark gives you a tangible way to protect your brand from copycats and rip-off artists. Which is why it’s worth considering whether you need to claim a color trademark or if you’re better off submitting your application in black and white.

At the end of the day, it will always come down to how you want your brand to be represented and which option provides that representation with the most comprehensive protection.

For help deciding what’s best for your brand, apply for your trademark consultation.

 

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today. (Hint: Episode 2 is all about the difference between a trademark and a brand.)

Should you include words, design, or both in your federal trademark application?

Should you include words, design, or both in your federal trademark application?

Logos.
Word marks.
Design marks.
Special form marks.
Standard character marks.

If the graphic design elements of your brand’s perfect logo weren’t confusing enough – the federal registration of that mark certainly is!

Because if your logo combines words and design…

You’ve got a couple of options available when you submit a trademark application with the United States Patent and Trademark Office (USPTO).

**Just before we dive in: this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.

This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.

Please chat with an attorney in your area to make sure you’re protecting your business.**

2 options for submitting a ™ application for your logo

There are 2 ways you can register your logo as a trademark with the USPTO:

1. Register as a word mark.

A word mark (aka a standard character mark) is simply text.

There is no design or graphic element to it. So, if you file a trademark application for a word mark, you’re only applying to protect – you guessed it – the words.

The USPTO’s application for a word mark specifically states:

“The mark consists of standard characters without claim to any particular font, style, size or color.”

This means your word mark is protected whether you use it in cursive, uppercase or lowercase, purple, in huge text on a billboard, or surrounded by fancy artwork.

Bottom line: the words themselves are protected, no matter what they look like.

2. Register as a design mark.

A design mark (aka a special form mark), on the other hand, specifically includes stylized elements like graphics, artwork, or color.

Registration of a design mark requires you to use the exact same design every time – you can’t move words or images around.

So, if tinkering with your logo is your favorite pastime, a design mark may not be for you.

Bottom line: the logo is only protected when you use your design mark in the exact same way it appeared when you filed your trademark application.

Real brand examples of word marks and design marks

How does this come into play in the real world?

Let’s take a look at Apple Inc., for example.

The company has a word mark registration for Apple Watch.

It also has a design mark registration for Apple Watch wherein the word “Apple” is replaced by their well-known logo (the apple with a bite missing from it).

Another example is Nike Inc.

The company has a word mark registration for Air Jordan.

It also has a pending design mark registration for Air Jordan, where the text appears in a stylized banner above a basketball with wings.

Or take Pespsico Inc., for example.

They have a word mark registration for Pepsi (obviously).

But they also have several design marks, including a stylized version of the word “Pepsi” in a very specific font (their infamous new logo that people have mixed feelings about).

When should you file a trademark application to protect both words and design?

All those examples of famous brands with both word and design marks are great, but when should you file a trademark application to protect both words and design?

A good general rule of thumb is this:

If your trademark includes both text and stylistic elements (like Pepsi’s new logo, for example), it’s a best-case scenario to file 2 registration applications with the USPTO.

1 for a word mark AND 1 for a design mark.

That way, you’re protecting both the words AND the design.

That said if you aren’t in a place where you can afford to file 2 applications, prioritize the word mark first.

You can always file a design mark application in the future, and you aren’t tied to one specific design yet.

What will you protect?

Word marks are meant to protect text.

Design marks protect your stylized elements/artwork.

But trademarks can get confusing fast, so it’s always a good idea to reach out to a trademark attorney if you find yourself wondering which option is right for you.

Whatever you decide, protect your brand assets.

Apply to work with me and get your trademark application filed with the USPTO.

________________________________________

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

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