Question: I have a great name for my new T-shirt business. I need to trademark it but don't have much money for lawyers. Can I file without an attorney? I don't want to be stupid about this just to save money. It's a really cool name.
Answer: Every once in a while, it's nice to see our government take meaningful steps to help young entrepreneurial companies establish a presence in the marketplace in a budget-friendly way.
A few years ago, the Patent and Trademark Office introduced a Web-based tool (www.uspto.gov/teas/index html) that makes it easy for cost-conscience entrepreneurs to file federal trademark applications without legal assistance. All you need is to pay a filing fee of $275 to $375 per classification filing.
Sounds easy, doesn't it? Well, it is. According to Craig Morris, Trademark Electronic Application System project manager with the patent office, the Web site was specifically designed to help individuals and non-corporate entities file successfully -- the first time.
"Our Web site provides detailed guidance on how to file and issues that influence registration approvals. Today, approximately 30 percent of all trademark applications by classification are filed by non-corporate entities and individuals without legal representation," Morris says.
Morris notes that the key to successful filing is reading the instructions before starting an application. Another way to improve your chances of receiving a trademark is to make sure no other company has already filed a similar mark in your specific trademark classification.
To research the trademark landscape, visit the patent office's free online trademark search service called Trademark Electronic Search System, or TESS (tess2.uspto. gov/bin/gate.exe?f= tess&state=jkenlc.1.1).
I encourage all entrepreneurs to use TESS before selecting new product or service names. In the long run, it will be cheaper to pick another mark than do battle with a well-funded trademark owner. Venture funds also shy away from funding companies that have trademark litigation vulnerability.
The patent office is also likely to deny an application if the word is "descriptive" or is too commonly used to describe your type of product. For example, if you selected the mark "Best T-shirts," your application would be rejected because it would give an unfair advantage to you over other industry competitors.
If you can't afford the PTO's filing fees, you still may be able to establish "common-law rights" if you are the first to use the mark in commerce. Generally, the first to use a mark in commerce or file an "intent-to-use" application with the PTO gains the rights to the mark. As such, it's important to save all first-sale records.
Here are some other tips:
"First use" means real commercial activity. Simply putting your mark on a business card is not enough to establish rights.
The patent office has 45 different product and service classifications. If you think you might apply your mark to products in other trademark classes, file an intent-to-use application sooner rather than later. The patent office allows multiple renewals of intent-to-use applications.
You may use the "(TM)" (trademark) symbol even if you don't file for a federal trademark. The federal registration symbol "®" can be applied only after official trademark registration.
Unlike registering a domain name, securing a trademark takes time. You'll be able to monitor your application's progress online, but so can everyone else. Hiring an attorney is a way to keep your contact info from being published.
I remind entrepreneurs that "attorneys advise, but owners decide." The more you know about intellectual-property issues, the better your business decisions.
The patent office's Web site (www.uspto.gov) is a marvelous resource for learning the basics about trademarks, service marks and patent issues.