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Patents, Trademarks, and Servicemarks

Q1: What are the costs and issues for filing Patents and Trademarks (TMs)?
[Peggy Miles, pmiles@intervox.com]

• Filing for a trademark is really just a two step process:
  1. Make sure no one else is using the mark
  2. Fill out the form and send it in (with a check of course).

  Of course, there's more involved in that you want to ensure your trademark has a good chance of being approved. You usually have to establish prior use of a trademark before filing for one (you may need three examples of prior use). You should look for some books on trademarks from your local library before filing and consider consulting with a lawyer if you feel it is necessary.
  [Daniel F. Savarese, dfs@oroinc.com]

• The biggest potential pitfalls are in initial selection of the mark and confirming that nobody else is already using it. After that, you need good advice on whether you should obtain federal or state registrations for the mark you select.

  The free patent searching on the Web is great. But as far as I know, nobody provides free trademark and service mark clearance searching. One of the problems is that it's almost impossible to prove a negative (that the mark isn't in use SOMEWHERE). A Federal or state registration of a mark is pretty good evidence that it's not available. However, rights in a mark can also be established through use in commerce. Thus, a mark may already be owned by another company even if it does not appear in a registration search. It's possible to do general searches (Internet, telephone books, industrial registers, etc.) in an attempt to identify these non-registered uses.
  [Evan Smith, Sixbey, Friedman, Leedom & Ferguson, P.C.]

• Make sure you do it right. You can do a lot of work yourself, but the way a patent is written up and the technology it covers can make a difference. Our patent filing fees were over $1000, when added up, without the attorney's assistance. Many patent attorneys will let you pay in monthly installments for their time and guide you in what you can do yourselves.
  [Ann Shack, MapSys Inc.]
• A recent Forbes article (http://www.forbes.com/forbes/97/1020/6009188a.htm) estimates the cost at $2,000-$3,000 for savvy do-it-yourselfers.
  [Paul Albert, paul@routelink.com]
• Just by placing the TM and the SM next to your product or service name you are providing yourself with a modicum of protection.
  [Robert Rose, rrose@mxdii.com]
• The best ways to ensure protection for the corporate name are: (1) to make sure it appears on product labels or brochures or promotional materials, like a trademark or service mark; and (2) to federally register the name, which will give you important presumptions such as that (a) you own the name and the name is a valid and protectable trademark or service mark; and (b) you have the nationwide right to exclusive use of the name, as opposed to the right to use it in areas where you are actually doing business.
  [Michael Adlin, madlin@manatt.com]

Q2: Which resources do you recommend for filing Patents, Trademarks (TMs) or Servicemarks (SMs)?

• You’ll find links to a number of patent search sites on the Netpreneur Exchange Intellectual Property links page: http://netpreneur.org/advisors/ip/iplinks.html
  
• The U.S. Patent and Trademark Office’s site (www.uspto.gov) is a good place to start. It is a great site that contains all the forms (pdf) that you'll need to register your ideas. Netpreneurs with more time than money on their hands can also go to the trademark office in Crystal City in person, and do a search of Federal registrations. There's really no way to do state registration or generalized searches without spending money.

  You should take your time to cover the subject, but it can be done by anyone. The filing, however, should be "not too broad, and not too narrow, but just right!"; in other words, check with an attorney for guidance.

  The U.S. Patent and Trademark Office also publishes a quarterly CD-ROM database that can be used to give an initial indication of whether a mark is claimed by another company. For completely up-to-date information, and more accurate search algorithms, we access commercial database providers (see http://www.thomson-thomson.com). These services provide search results, but no analysis; you still need a trademark specialist to advise you about whether it's safe to adopt the mark.
  [Evan Smith, Sixbey, Friedman, Leedom & Ferguson, P.C.; Robert Rose, rrose@mxdii.com]

• A great resource for conducting your own preliminary name searches is at http://www.micropatent.com/trademark/Webindex.html ($20/day unlimited searching!). This database of registered U.S. marks is not as complete as you need to be for a comprehensive search, but it is a great start. You should also search for names already in use by using resources such as BigBook, http://www.bigbook.com.

  When searching, build up from the "granules" of your mark. When researching "We Help America Run," I searched for "help* and run," "help* and america," and "america and run" for possible conflicts. For RouteLink, I searched for "*link" and "route*." You also need to look for mnemonic similarities (e.g.,"syperphunk" and "cyberfunk").
  [Paul Albert, paul@routelink.com]

• The LEXIS-NEXIS online databases, www.lexis-nexis.com are a good source for tracking patents and trademarks.
  [Shelton Jewette, jewette@classic.msn.com]
• You can do trademark searches at the Engineering and Physical Sciences Library (EPSL) at the University of Maryland College Park for free. This is extremely convenient as it saves you the cost and the time involved in paying a firm or lawyer to do the search for you before you apply for a trademark. I believe you can get the proper forms to file from there also, or you can always order them from the patent and trademark office.
  [Daniel F. Savarese, dfs@oroinc.com]
• The process of selecting and registering trademarks is laid out generally in the article "Trademarks and Business Goodwill" , http://netpreneur.org/advisors/ip/ipbasics.html.
• We have used a service called American Trademark & Data Research LLC. (http://www.trademarkresearch.com) in the past. They are very inexpensive: $100 for search and $100 for application preparation.

  They performed the work and everything seems to be in order (we are still waiting for the PTO response) although it took them a while to get everything done and they did not seem very organized. I am not sure we would use them again but they do appear to be the cheapest in town.
  [Miles Fawcett, miles@iapps.com]

Q3: How do the protections provided by incorporation and trademarking differ?
[Alex Sharpe, asharpe@digex.net]

• The two are worlds apart. The purpose of incorporation is to establish how the corporation and its assets, creditors and such are to be treated under the law, etc. Trademark is used to protect the corporation's intellectual property.
  [Ross Stapleton-Gray, director@embassy.org]
• Protection for the corporate name comes from using the corporate name in order to sell products or services. A corporate name is protected in virtually the same way as a trademark--if it is used to identify the source of products or services, no one else can use a name or mark which is likely to be confused with the corporate name, at least in geographic areas where the corporate name is being used.
  [Michael Adlin, madlin@manatt.com]

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