# Is Your Company Name Trademarked?



## Kalne (Oct 25, 2007)

Just wondering how many of you think this is a necessary step.


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## tmfinley (Feb 21, 2008)

Hey! I was just going to ask this question. My grandma asked me last night if I was going to trademark. I did some research last night and found I probably can't tm my name. There is a company with the same words in it but in a different order and in a different language but they sell soap and b&b in Florida. When I picked my new name I did a search with the English words and didn't even think of searching for foreign name equivalents but it seems that is enough to stop me from getting TM - ed.


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## Kalne (Oct 25, 2007)

I found my name too.....with 'Farm' instead of 'Acres'. They also have dairy goats and honeybees, thus the name. But it does not look like they sell soap or anything related to it. I'm wondering if they aren't trademarked can that still stop me from getting it. I don't even want to think of changing our name now.


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## tmfinley (Feb 21, 2008)

From everything I've read, The above example would not stop you from getting Trademarked. Now if you got trademarked first and then they wanted to they would not win the Trademark. Check out the US trademarking site. I have it on my other computer so can't tell you what it is for sure - something like USTMP for united states trademark and patent. You can search for the name you want on the site and see what is taken and by what industry.


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## jdranch (Jan 31, 2010)

Good question. I read (cannot remember the source, so am not sure if it is really true) if you trademark your name, and someone comes along and says they were using it before you were (with proof) that your trademark will not stand. Anyone heard this?

I love my to-be name. Filed the dba and bought the domain and am considering tm'ing it. But if the above is true, then there isn't a need to because if someone's using it now, I am outta luck, and if someone uses after me, I can take it.


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## jdranch (Jan 31, 2010)

jdranch said:


> Good question. I read (cannot remember the source, so am not sure if it is really true) if you trademark your name, and someone comes along and says they were using it before you were (with proof) that your trademark will not stand. Anyone heard this?
> 
> I love my to-be name. Filed the dba and bought the domain and am considering tm'ing it. But if the above is true, then there isn't a need to because if someone's using it now, I am outta luck, and if someone uses after me, I can take it.


I need to go to law school to really understand all of this. This is from http://www.uspto.gov/faq/trademarks.jsp#Search005

What are common law rights?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark. Generally, the first to either use a mark in commerce or file an intent to use application with the Patent and Trademark Office has the ultimate right to use and registration. However, there are many benefits of federal trademark registration.

What are the benefits of federal trademark registration?

1. Constructive notice nationwide of the trademark owner's claim.
2. Evidence of ownership of the trademark.
3. Jurisdiction of federal courts may be invoked.
4. Registration can be used as a basis for obtaining registration in foreign countries.
5. Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Fees- http://www.uspto.gov/web/offices/ac/qs/ope/fee2009september15.htm#tm


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## tmfinley (Feb 21, 2008)

Ok, so I've only been researching this for 1 night but tomy understanding there are a couple steps in trademarking. fFrst you apply for the trademark and if you prove your ccase and it is yours you can later Register the trademark. So just a trademark and a Registered trademark are two different things (guess that is why some things have a tm after them and some things have an R with a circle around them). The difference between them? Well, I haven't gotten that far yet.


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## tmfinley (Feb 21, 2008)

Also there is a difference between a State Trademark and a Federal Trademark - again I don't know what that difference may be yet though.


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## Kalne (Oct 25, 2007)

I did search on the US website and did not find the name except in one case that was listed as abandoned. It was for computer parts, so unrelated. But then I entered it with a different spelling a there were quite a few! But none had anything to do with B&B. And I'm certain the other I found with my spelling did not sell soap. 

Interesting about how you can actually get trademarked and someone else can show up and prove they've sold with that name before you so you lose it. Makes it hard to cough up the money if it's not really good for anything.

I did read a blurb about state but I figured Fed. would trump state? If we sell on-line it will be intrastate commerce so what good would state really do?


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## hsmomof4 (Oct 31, 2008)

Kathy, there was a conversation on the dish a while back...kind of interesting. There was somebody on there who had a particular name for their soap company and TMd it...they found out afterwards that there were two other soap companies (one was definitely in business longer than them) using the name. The general advice there was what I found interesting: "If they wanted the name, they should have TM'd it, they didn't, so too bad for them." She was sending cease and desist letters to get them to stop using the name, everybody said (not that that makes it true) that she could legally do that, regardless of who'd had the name longer.


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## Kalne (Oct 25, 2007)

Hmmm, interesting. The trademark website does state that the mark belongs to whomever used it first either in commerce or by filing. I think I read that anyway. Hmmmm. Maybe I'll just change our name to Long Soap Co. and it can't really be contested since it is our legal name. LOL


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## MF-Alpines (Mar 29, 2010)

Kalne said:


> If we sell on-line it will be intrastate commerce so what good would state really do?


Intrastate is within the state. Interstate includes any state.


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## jimandpj (Mar 11, 2008)

My recommendation, is to definitely go with a trademark lawyer. Yes, it costs money. But they're going to do things and know things that you aren't. We are currently in the process of trademarking two separate parts of our logo. We did not try to trademark our name as a stand alone name. We'll be using a third part of our logo more often and once we do that, then we will go after a trademark on that third part as a stand-alone as well. 

Yes, you can do it on your own, but odds are you're going to screw something up. A "good" trademark attorney, who knows what they're doing is going to be worth it if you're planning to really grow.

Same thing with forming an LLC. You can do it on your own. But a lawyer is going to have you do stuff you'd never think to do on your own. Our lawyer has a couple of clients who formed LLCs on their own, but didn't do the legal things to act like an LLC. They got sued, and the lawyers are going after their personal stuff because they're not acting like an LLC. They hired my attorney after they've gotten sued, and are in some big messes.

Especially because we handmake the soap and are intimately tied to it - we can still be sued even if we have formed an LLC. 

IMO (and people can disagree with me) - if you're going to trademark and incorporate - you need a lawyer who does those things for a living. 

PJ


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## Kalne (Oct 25, 2007)

PJ, without being nosey, can you explain why you'd want so many trademarks?


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## jimandpj (Mar 11, 2008)

Not being nosey - it's how we learn!  

It's what my lawyer recommended. Actually, it's what his wife (who is a much more expensive trademark/patent attorney) recommended. She did the searches for me and made the recommendation, but he's doing the legwork to save me some money. From what they said, the different pieces of your logo should be trademarked as you use them. We use our logo as a whole (see my website, the top left corner graphic) in a lot of places - website, business card. But we also use the 10 point sun on its own in lots of places - labels, website, invoice, correspondence. We did not use our tagline "Work hard. Get dirty. Use good soap." in enough individual places to get a trademark on it by itself. It is in our logo, but we're planning to use it in stand alone places more in 2011, so we can trademark it by itself.

The reason we would go to the extra expense is because (hypothetically speaking), since we don't have the tagline trademarked by itself, somebody could try to register "Working hard, getting dirty, using good soap" and may get that to go through. They could argue that it's not part of a logo, so it's different enough. If we didn't have our 10 point sun trademarked individually, somebody could try to trademark a 10 point orange and red sun and say, "See - it's different, it's not part of a bigger logo."

Just more protection.

I don't know if that's making sense at all - but that's how I understood it to work, and why you'd want to trademark individual pieces.

But basically, the bigger our business gets, the more I follow the motto, "surround yourself with excellent people and do what they recommend." LOL

Another thing - I've always been told that it's very difficult to protect your trademark and takes lots of money to defend it, so why bother getting it. My lawyer said that's not true, and it's very easy to defend.

Hope that helps!
PJ


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## Kalne (Oct 25, 2007)

Did you also trademark your name 'Goat Milk Stuff' (I think that's it?)

Our 'logo' is simply a cameo of one of our goats. I know I've seen goats in different poses as logos so wondering how difficult it would be to get something like that done. And would it be changeable once it's trademarked.....sort of like the pic of the Gerber baby keeping of with the times in its appearance. Would each change need to be re-trademarked?


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## jimandpj (Mar 11, 2008)

This is why you need a lawyer. 

Applying for a trademark is very specific down to specifying colors and fonts and everything. I don't know how you'd describe a goat head in detail to distinguish it from other goat heads or changes in goat heads.

We didn't try to trademark "Goat Milk Stuff" by itself. We trademarked it as part of our logo.

Even if you attempt to do the legwork yourself, it would be worth consulting with a good trademark attorney. Just call your local small business organization, and they should be able to recommend one. When we put in our initial applications, they came back with questions - our lawyer dealt with the response and I would have had a hard time knowing how to answer some of their questions in a way that was beneficial to getting our application approved.

BTW - my lawyer said it will take about 9 months to get the trademarks.

PJ


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## jimandpj (Mar 11, 2008)

I do want to add that all of the decisions on what to trademark was purely at the recommendation of the attorney. I would have attempted to do it very differently if I had tried on my own.

PJ


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## Kalne (Oct 25, 2007)

Thank you PJ for taking the time to answer. Just by reading through all this I can see that an attorney really is the best way to go. I hope to eventually be where I need to get this done. Right now it's just a thought in the back of my mind. But I'm getting there.


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## jimandpj (Mar 11, 2008)

We just got to it this year too! You're on the right track. 

PJ


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