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SMART ANSWERS
By Karen E. Klein
MARCH 23, 2000


Trademarks: To the Speedy Go the Spoils

You also have to be thorough to protect yourself from suits and infringement

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Q:  I have come up with a concept in the health/fitness area and want to set up a Web site based on it. How do I protect the name I've come up with? Do I need to trademark it? I want to use it for a workshop before I've got the Web site running.
--G.B.C., Burbank, Calif.

A:  You really have two objectives here: No. 1 is to protect your name, and No. 2 is to minimize the chance that another company will sue you for damages and obtain an injunction based upon trademark infringement, unfair competition, and dilution. (A trademark protects words, phrases, symbols, logos, and other marks that identify a company's good or services, including your proposed health and fitness workshop.)

As a general rule, it's not necessary to register a trademark to have protectible, exclusive rights to it. Simply using the mark in connection with the sale of goods and services automatically establishes trademark rights in the geographic area of use. If you want to use the trademark in interstate or international commerce (in other words, most normal business needs), you should register it with the U.S. Patent & Trademark Office. The principal benefit of a federal trademark application is that it gives you nationwide priority to the mark while you wait for the USPTO to register it.

So once you've filed your application -- even if a competing company uses the mark before your business is actually running -- you have the right to prevent that company from using it. File as early as possible. The trademarking process is lengthy. But in the event of a dispute over the rights to a mark, the first to file an application generally prevails.

GET A LAWYER. The first step is an online screening to make sure the name is clear. At the Patent Office's Web site, you can search the federal and state trademark registrations and federal trademark applications to confirm that your proposed trademark is not so similar to registered marks or those under application as to cause confusion. You might also check various search engines. For example, if you wanted to use "Balle" for your health/fitness concept, an online screening would uncover a federal registration for "Bally's" for the same services, so Balle probably wouldn't be available for your proposed use, says Rod Berman, an attorney who specializes in intellectual property law at Jeffer, Mangels, Butler & Marmaro in Century City, Calif.

The next step is to hire a reputable trademark-law expert to conduct a full search for you. You can do the search yourself to save money. However, few attorneys advise that because of the complexities of trademark clearance. If you make a mistake in selecting a name, you could be subject to significant damages and injunctive relief, Berman says. Not all companies register their trademarks, but someone could still contest your proposed use based on common-law rights. A full search would check for common-law use. If you're planning to do business internationally, you should expand the search to countries where you plan on doing business as well.

Once you determine that the name you've chosen is available and that you can reasonably expect it to be free from challenges, you should file a federal trademark application as soon as possible. The registration process has several phases, any which could become delayed. At each phase, the USPTO may raise objections or request additional information. If no objections arise along the way, the process can easily take 8 to 12 months from initial filing to publication in the USPTO's Official Gazette to issuance of a certificate of registration, according to Berman.

ANTE UP. For filing details and other information such as fees, consult the trademark information section of the USPTO's site. The basic fee is $325 for a trademark that's already being used on one class of goods or services, such as a logo on clothing. (If you want to put the logo on bicycles, say, you pay an additional $325.) If your application is for a mark you intend to use (but aren't yet using), you'll pay an additional $100 after the USPTO approves your application. That's because to register the mark, you have to file a statement of use.

Once you've applied for a trademark, Berman says, you should employ a ™ notice adjacent to your mark. In fact, anyone who claims a right to a mark can use the symbol. Once the mark is registered at the USPTO, you employ the registered mark notice (®). You should also monitor the marketplace for companies that infringe on your trademark and take steps to stop them. If you don't, a court could find that you abandoned your mark, Berman says.

Another source of information on trademarks, service marks, corporate names, and trade names is www.lawoffice.com.



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