Trademarks...

[Northland]

... I'm interested to know what potential pitfalls or what guidance any board members can offer on the subject of Trademarks ??

[Colin]

Your own or someone elses?

[Northland]

To be more specific.... I have a couple two word phrases I'd like to trademark for future business use.  They don't appear in the USPTO search base (known as TESS), so they appear to be available. I've used the phrases in existing art/sales, so I have a small degree of copyright protection... but if it's affordable, I'd like to maximize their protection as a company name by trademarking them and creating a LOGO that could be trademarked also. We've all heard of similar ambitions... in regards to apparel start-ups.

What I'm wondering is:
1) Is it reasonable to think I could file for trademark without use of a PTO lawyer....has anyone on the board done that by themselves
2) Does TESS (trademark electronic search system) do a through enough search to catch all existing trademarks on file... or do I need a specialist to search deeper.

My typical resources for info like this (Goggle/YouTube/USPTO) have conflicting answers about the ease of application.... at $275 an application/class, I'd like to avoid making multiple mistakes. (Maybe I'll do a search for a trademark chat site ??)

[Wildcard]

I've looked into this myself and it seems to me that in general terms, this is one of those things where if it's worth doing at all, then it's worth doing properly (ie. get a pro to help).

[ZooCity]

Short answer:

Hire an IP firm, not a "jack of all trades" lawyer, dedicated IP counsel, and hire a good one.  Get over the sticker shock when you see a good IP firm's hourly, it's worth it and in the end they'll save you money.

You'll have to suck it up and file not only multiple classes but possibly multiple uses, i.e. prior use v. intent to use.  Although you have used the marks, you will be awarded intent to use in my experience even for fairly well established prior use.

Try to determine ongoing costs.  If you are awarded marks you are still responsible for enforcement, down to the penny, and you will not be getting your fees back.  Ensure the marks are practical to enforce for the classes.   

Last off marks are "use it or lose it".  You must be ready to establish branding, usage and defend it.  If you don't, and the marks are popular, they will roll over into public domain.

[bulldog]

I did mine through trademarkia.com

TESS is a good start but did not catch a potential problem that our lawyer did where we had to exclude "footwear." It only costs about $175 (there are different package prices, but this is the best value IMO and what we did) for them to do it as long as there are no additional hiccups. The $275 fee is non-refundable. If you are denied, you are just out of luck.

It will take close to 9 months or a year to get the trademark if everything goes well.

Everything Zoocity said seems about right. One class often covers quite a bit though. Here is our class: IC 025. US 022 039. G & S: Clothing, namely, tops, bottoms, sweatshirts, hats, Hooded sweatshirts; T-shirts, jackets, excluding footwear.

You should have a logo or proof of use ready before you file. It's a "specimen" you have to submit, don't try to fake this, you'll probably get called out.

[Northland]

Thanks Zoo & Wildcard & Bulldog... I believe this will be a goal in 2017 (establishing use and practicality of the trademark). I wasn't aware of the "prior use v. intent to use" concern.

For those interested in the topic, I would suggest a YouTube search using the name Erik Pelton. His firm (EMP&A) offers what appears to be very straight forward video educational advice.

[Homer]

I did mine through trademarkia.com

TESS is a good start but did not catch a potential problem that our lawyer did where we had to exclude "footwear." It only costs about $175 (there are different package prices, but this is the best value IMO and what we did) for them to do it as long as there are no additional hiccups. The $275 fee is non-refundable. If you are denied, you are just out of luck.

It will take close to 9 months or a year to get the trademark if everything goes well.

Everything Zoocity said seems about right. One class often covers quite a bit though. Here is our class: IC 025. US 022 039. G & S: Clothing, namely, tops, bottoms, sweatshirts, hats, Hooded sweatshirts; T-shirts, jackets, excluding footwear.

You should have a logo or proof of use ready before you file. It's a "specimen" you have to submit, don't try to fake this, you'll probably get called out.

I know this is 10 years old but has anyone else used Trademarkia before or have any insight on trademarking a phrase? Talk to me like I'm 3.....

[Rockers]

To be more specific.... I have a couple two word phrases I'd like to trademark for future business use.  They don't appear in the USPTO search base (known as TESS), so they appear to be available. I've used the phrases in existing art/sales, so I have a small degree of copyright protection... but if it's affordable, I'd like to maximize their protection as a company name by trademarking them and creating a LOGO that could be trademarked also. We've all heard of similar ambitions... in regards to apparel start-ups.

What I'm wondering is:
1) Is it reasonable to think I could file for trademark without use of a PTO lawyer....has anyone on the board done that by themselves
2) Does TESS (trademark electronic search system) do a through enough search to catch all existing trademarks on file... or do I need a specialist to search deeper.

My typical resources for info like this (Goggle/YouTube/USPTO) have conflicting answers about the ease of application.... at $275 an application/class, I'd like to avoid making multiple mistakes. (Maybe I'll do a search for a trademark chat site ??)

I think hiring a lawyer might be a good idea. Just because the phrases are still available does not mean they can be trademarked. A good lawyer specialised in this subject can probably tell you right away before you start spending too much of your time on it.