Patent It Yourself - PDF Archive

20 | Patent it YOURSELF
contest and you may be liable for damages as well. Even
if your proposed mark isn’t identical to the already-used
mark, the other mark’s owner can prevent you from using
it if, in the eyes of the law, there is a likelihood of customer
confusion. Even if there’s no such likelihood, the owner of
a famous mark can block a mark that is likely to tarnish the
reputation of the famous mark. To determine if your mark
is already in use, you’ll have to make a trademark search or
hire someone to do it for you.
A complete trademark search should cover registered
and unregistered (common law) marks. You can search
all pending and registered trademarks for free at the
PTO’s website (www.uspto.gov) and you can search all
marks (registered and not) on a good search engine, such
as Google or Bing. You can also make free searches in
The Thomas Register in any library or online at www.
thomasregister.com, and in Gale’s Trade Name Directory
and McRae’s Blue Book (most libraries). Further, most
libraries have specific trade directories, such as The Toy
Manufacturer’s Directory. For those interested in adopting a
World Wide Web site or domain name, Network Solutions,
Inc. (InterNIC), has an online search site at www.internic.
net. Complete searches of registered and unregistered
marks can be ordered through the following companies:
• Thomson & Thomson, (www.thomson-thomson.com),
500 Victory Road, North Quincy, MA 02171-1545,
800-692-8833, and
• The Trademark Company, (www.thetrademarkcompany.
com), 344 Maple Avenue, West, #151, Vienna, VA
22180-5612, 800-906-8626.
However, you can search all pending and registered
trademarks for free at the PTO’s website (www.uspto.gov),
which contains a searchable database of all pending and
registered U.S. trademarks.
d. Use or Apply to Register Your Trademark
The first to actually use or file an intent-to-use (ITU)
application to register the trademark owns it—that is,
acquires offensive rights against infringers. Actual use
means shipping goods or advertising services that bear
the trademark (not just use in advertising). If an ITU
application is filed, the trademark owner must actually use
the mark before it can be registered. As a trademark owner,
you can validly sue a person who later uses a similar mark
for similar goods in a context that is likely to mislead the
public. Contrary to popular belief, trademarks do not have
to be registered for offensive rights to be acquired: Any
entity that uses a mark has common law (judge-made law)
rights and has superior rights over infringers of the mark,
provided the entity is the first to use the mark and it’s a valid
mark. However, as explained in Subsection e, just below,
registration can substantially add to these offensive rights.
e. Use and Register Your Trademark
If you apply to register your mark federally on the basis of
your intent to use it, you will, as stated, eventually have to
actually use it on your goods to get it registered. You must
thus follow through by actually using it and proving such
use as part of your registration application. To federally
register a trademark, use the online registration procedures
at the PTO website (www.uspto.gov).
If you do adopt and use a trademark on your goods before
applying for registration, you should register it in your state
trademark office if it’s used exclusively in your state, and/
or the PTO if it’s used across a territorial or international
border. Once your mark is federally registered, it will be much
easier to sue infringers. The federal registration will cause the
court to presume that you have exclusive ownership of the
mark and the exclusive right to use it. If you don’t register
your trademark and it’s infringed, you’ll have much more
difficulty when you go to court.
To register a trademark in your state, call or write to your
Secretary of State in your state’s capital for a trademark
application form and instructions; the cost will be from
about $50 to $120.
Trade Group Registration of Trademarks
Instead of (or in addition to) registering your trademark
with one or more state trademark offices and the U.S.
Patent and Trademark Office (PTO), you can register
it with an appropriate specific trade organization. For
example, suppose you’re an automobile manufacturer and
you intend to come out with a new car, the Zenith, in a few
years. Instead of applying to register it with the PTO, whose
requirements are relatively complex, whose procedures
are slow, and that will keep an intent-to-use application
alive for only three years (at a relatively great expense),
you can register your mark with the Automobile Manufacturer’s
Association under a relatively simple, economical
procedure. The AMA-registered mark will be published
for all other members of the AMA to see, so that they will
know not to use the Zenith mark while your registration is
alive. Similarly, movie titles can be registered with a movie
industry association and websites and domain names for
email addresses can be registered with Internet services.
So if you intend to use a trademark in a given industry,
check with the industry’s main association to see if you
can register your mark with them as an alternative or in
addition to a PTO or state registration.