Trademarking questions ... for those of you who have done it !

thought I'd ask in this group:

Or would you recommend going to a local, face-to-face attorney?

Go to an attorney.  That's what they're there for.


That's why you need to talk to an attorney.  There's an old saying
that you get what you pay for; in the case of free advice on the web,
it turns out you might get a whole lot less than you paid for:  not
only might it be worthless, it might get you sued and cost you a
fortune.

You're asking legal questions.  You need to ask them of a legal
expert, not of a bunch of geeks on usenet.  A competent attorney costs
you $100-$200 per hour, and is incredibly cheap at the price.
--
Joseph J. Pfeiffer, Jr., Ph.D.       Phone -- (505) 646-1605
Department of Computer Science       FAX   -- (505) 646-1002
New Mexico State University          http://www.cs.nmsu.edu/~pfeiffer

attorney?

Thanks for the advice. Kind of what I suspected !
JCD

FYI, for the folks who suggest self-patenting or self-trademarking, your
protection is only as good as your search (and for patents, the wording
of your patent). Often it's boils down to having a "feel good" piece of
paper that, when it comes time for litigation -- which is what a patent
or trademark is ultimately for -- is not even worth the paper it's
printed on. IOW, you could go into court with your pants down. Besides
embarrasing, it is extraordinarily expensive.

-- Gordon

thought I'd ask in this group:

Or would you recommend going to a local, face-to-face attorney?

trademark all spellings separately to be protected ? Such as OnlineWidgets,
OnLine Widgets, OnLine-Widgets, On-Line-Widgets, OnLineWidgets, etc ... ?

You need an attorney. You can do some of the legwork to save the costs
of the search, but an on-line only search would in itself not be deep
enough. What's not online can fill libraries of books, warehouses of
Yellow Pages, ... you get the idea.

Not legal advice but you don't trademark different spellings. You
register a mark for your product or service. If someone uses a different
spelling or typo to try to take advantage of your mark, this might be
trademark infringement and you have some extra ammunition to take the
person to court. Ford doesn't need to trademark "Frod" -- white letters
in a blue oval -- to protect itself.

Like patents, having a trademark simply gives you an advantage in court.
If you don't have the inclination or finances to sue someone, a
trademark is an expensive trinket.

Again, not legal advice.

-- Gordon

attorney?

OnlineWidgets, OnLine Widgets, OnLine-Widgets, On-Line-Widgets, =
OnLineWidgets, etc ... ?

Thanks for the advice, Gordon! Pretty much what I thought!
JCD

trademark all spellings separately to be protected ? Such as OnlineWidgets,
OnLine Widgets, OnLine-Widgets, On-Line-Widgets, OnLineWidgets, etc ... ?

It's quite tricky when you come to the online world... you may have a
trademark in one country but it may not apply else where. Certainly a UK
Trade Mark only applies in the UK and the advice from The Patent Office
for international recognition :-

"    * apply direct to the Trade Mark Office  in each country

or, using a single application:

     * apply for an International Trade Mark (for certain countries
throughout the world ).
     * apply for a Community Trade Mark . (for protection in Europe ) or

Both these single application systems cover many countries including the
United Kingdom and offer a number of other potential benefits, including:

     * less to pay;
     * less paperwork;
     * lower agents' costs;
     * faster results;
     * easy application "

check here http://www.patent.gov.uk/  under Trade Marks....

regards,
colin


--

www.minisumo.org.uk

(Remove the "No Spam" to reply by email!)

    Do it online.  The Nolo Press book. "Trademark: Legal Care for Your
Business & Product Name" is helpful.  I have two trademarks I filed myself,
with another one in process.  There's even a discount for filing online.
The USPTO's form system guides you through the mechanics of the process.

    This works well if you have a well-chosen trademark distant from
others.  If you're not capable of coming up with a word or symbol
that's clearly distinct, you may need a lawyer.


    Yeah, you definitely need to read the book.

                John Nagle

Let me second John's recommendation.  Do not go near a lawyer
until you have done some preliminary investigation.  The books
published by Nolo Press are an excellent place to start.

-Wayne

I'll just repeat this one last time and let it go, because I think it's
important: Trademarks (and patents) are not just for the owning unless
you merely want the certificate as a conversation piece, and intend
never to challenge an infringer. In that case file away.

They are for LITIGATION. In a court of law. Against seasoned IP
attorneys. If you expect to pursue litigation if the need ever arises,
it's a really bad business decision to do this without a lawyer.

I read James' post as filing for the trademark based on online resources
alone, not just the initial search. You can do to the uspto.gov site and
do a cursory search of trademarks.

-- Gordon

Gordon:

I basically agree with you -- trademarks and patents are only
useful if you have deep pockets to hire lawyers to litigate.
This is why you want to read up on the topic *before* even
thinking about seeing a lawyer.  Indeed, for most people,
after they do the research, will conclude that it is not
worth it.

Unfortunately, if you go to a lawyer that specializes in
intellectual property law as an occupation and ask them,
s/he may not be quite as honest about the topic.

-Wayne

Ah, well, this is a different subject. The rationalities of whether to
apply for trademarks or patents in the first place are one thing. But
John replied (to which you appeared to have agreed) regarding
self-filing. IMO, this unnecessarily adds risk to your success at
litigating the matter if/when the time comes. If you're going to file a
legal document aimed at protecting your investment, involve a lawyer
whose specialty it is. Self-filers tend to never have litigated their IP
portfolio, and if they do, swear to use lawyers in the future.

Again, if you never appear in court to argue your intellectual rights,
it doesn't really matter who files and searches the thing. Have grandma
do it.

IANAL, as you probably know!

-- Gordon

Hmmmmm ... Reading through your replies to this post (and many thanks to =
ALL, by the way!) it occurs to me that I can state that my reason for =
trademarking was primarly to *discourage* someone else from closely =
copying the designs I have come up with *and* calling them by similar =
names and logos for marketing purposes. And thanks to Gordon for =
pointing out the uselessness of having a patent or trademark if you =
don't have the funds to enforce it.

My other reason for posting on this newsgroup was to get a good sampling =
of how, where & why I should start the process from those that I figured =
had been down the same road. I would especially  be interested in any =
first-hand success and/or horror stories.

After some consideration, I may just have my cat do the trademark search =
... unless he starts demanding fresh tuna in return for his =
professionally fuzzy advice.

But seriously folks, this thread has really helped me to reconsider and =
redefine what I want to do with regards to this issue. Many thanks as =
always! I definitely feel more enlightened about the subject!
JCD

     Trademarks and patents are completely different.  Patents require
complex drafting.  But trademark applications are just forms to fill out.
Online forms, even.  The only real choices you make are the trademark
itself and in what areas you want to claim trademark coverage.  The application
is reviewed (the USPTO likes to check Nexis, incidentally), but
you don't typically interact with the examiner.

     Trademarks have a number of uses.  For one thing, they're useful
if you have a domain name, because ICANN's dispute resolution procedure
defers to trademarks.

     I use lawyers when filing patents (I have three issued and one in
process), but trademarks (I have two registered and one in process)
are so easy now that I do them online.

                    John Nagle

Good info, as always John, since the trademark I have in mind is closely =
related to the online branding I have in mind.
Thanks!

[snippage]


 > thanks to ALL, by the way!) it occurs to me that I can state that
 > my reason for trademarking was primarly to *discourage* someone
 > else from closely copying the designs I have come up with *and*
 > calling them by similar names and logos for marketing purposes.
 > And thanks to Gordon for pointing out the uselessness of having
 > a patent or trademark if you don't have the funds to enforce it.

I am not a lawyer, but...

To *discourage* people, do the following;

   1) For trademarks:
      A) Put the symbol tm with a circle around it next to the
         word or mark you care about.  Your best bet is to have
         a word that is not in the dictionary; indeed, if it is
         a concatonation of two "words", it is best if neither
         word is in the dictionary.  Example -- "RoboBrix".
      B) If you notice somebody using your "trademark" in a way
         that you do not like, i) read a book on trademarks,
         and ii) write a letter asking them to stop.  Do not
    skip step i), because there are legal and legitmate
    situations where a competitor can use your trademark
    (e.g. "the {competitors product} is compatible with
    {your trademarked product}(tm)".)
      C) Consider asking the USPTO (United States Patent and
         Trademark Office) to register your trademark since
         it is neither expensive nor difficult to do so.
   2) For copyrights:
      A) Place the phrase "Copyright (c) by {your name}.
         All rights reserved."  on every document.  Whenever
         possible use the c with a circle around it instead
    of the three character "(", "c", ")".
   3) For patents:
      A) Place the term "patent pending" in your documentation
    and web site.  Actually, applying for a patent is not
         necessary to *discourage* people.

The above recommendations are only for *discouraging* people.
In many cases you have to do much more to succesfully
*litigate*.


 > sampling of how, where & why I should start the process from
 > those that I figured had been down the same road. I would
 > especially  be interested in any first-hand success and/or
 > horror stories.

The process starts by obtaining a book on the topic of intellectual
property and reading up on.  Nuf said.

There are plenty of horror stories out there.  The recent Blackberry
patent squabble comes to mind.

[snippage]

-Wayne

     That's a criminal offense under federal law.
35 USC 292:

"(a) Whoever marks upon, or affixes to, or uses in advertising in connection
with any article, the words “patent applied for,” “patent pending,” or any word
importing that an application for patent has been made, when no application for
patent has been made, or if made, is not pending, for the purpose of deceiving
the public—Shall be fined not more than $500 for every such offense."

(b) Any person may sue for the penalty, in which event one-half shall go to the
person suing and the other to the use of the United States."

Worst case, each instance of the product is a separate offense.

                John Nagle

John:

I was unaware of that important little factoid.  So I will now
officially recommend to people that they not put the pharse
"patent pending" in their documentation unless they have
actually submitted a patent application.

Having said that, I'm sure plenty of people put the phrase
"patent pending" in their documentation when in fact they
have no such patent application in process.  Alos, I'm sure
lots of patents get rejected and people do not take the time or
effort to go back through their existing documentation and
remove the offending phrase.

Given that the maximum exposure is $500 per offense (i.e
no jail time, just a fine), someone could rightly conclude
that putting one or two such references into their documentation
may be worth the risk.  (Please note, I am not suggesting that
anybody do so, I am just pointing out the
possibility.)

Anyhow, I have spent more than enough time on this general
thread.  I'm going back to work on robotics.

-Wayne

John is correct that it's not legit to claim a mark, patent, or patent
pending unless it's actually so. I am also sure a lot of people use
these ruses and risk the penalties, as they are a pittance compared to
the potenbtial benefit.

While I certainly advise reading up on the subject, doing your own
research, etc., I also recommend using an attorney to file patents AND
trademarks. The trademark search lists the attorney of record. Frankly,
if I saw WidgetsRUs (or whatever) was self-filed, I would pretty much
guess the person has neither the resources nor the inclination to
litigate an infringement. When it has a lawyer's name there it lends
credence that the claimant means business.

-- Gordon

I *was* aware of  that little tidbit, but good to point out, =
none-the-less.
 

Now *that* is a really good point! Thanks yet again.

Well, time to let some of the words from this thread sink in, gel for a =
while, and see what happens.

Thanks again to everyone.
JCD