Do You Need A Trademark?

Many authors market their services under a trade name or use websites to display, market and sell their work. Some novelists use pen names or pseudonyms. What all these writers have in common is the need to protect the goodwill and value of their most valuable asset: their business name. To accomplish this, writers must understand an admittedly lackluster part of intellectual-property law: trademark.

What’s a trademark?

A trademark (TM) is essentially a brand name: a word, phrase, symbol or design that identifies and distinguishes the source of the goods of one party from all others. A service mark (SM) is the same as a trademark, except it identifies and distinguishes the source of a service, such as editorial consulting, rather than a product. (In this article, the terms trademark and mark refer to both trademarks and service marks.)

Trade name versus trademark

Let’s say Melissa Q. Freelancer writes promotional press releases and annual reports for corporations under the name Corporate Words at Work. This is a trade name, and Melissa has registered it under her state’s trade-name registration laws.

Yet Corporate Words at Work is not automatically considered a trademark or entitled to protection under trademark laws. If, however, Melissa uses Corporate Words at Work to identify a specific product or service produced by her business, the name (or logo) will then be considered a trademark and entitled to protection, provided it meets legal requirements for distinctiveness. For example, Apple Computer Inc. uses its trade name, Apple, as a trademark on its products. At a minimum, Melissa should use TM or SM next to her business name.

How do I acquire a trademark?

You acquire trade and service marks through consistent use of a mark. As with copyrights, there is no requirement that you register the mark. There are significant advantages, though, to registering your mark with the U.S. Patent and Trademark Office in Washington, D.C. (http://wwwuspto.gov).

The first advantage to registration is confirmation that your mark is not being used by someone else, potentially subjecting you to a trademark-infringement claim. Once your mark is officially registered, the registration acts as constructive notice to others who might use the mark. It also gives you the exclusive right to use the mark in connection with your particular goods or services. This is especially important with regard to Internet domain-name disputes, because registered trademarks generally will give you priority over anyone seeking to register a domain name using your registered mark. In addition, having a registered mark entitles you to certain legal remedies not otherwise available. Even if a mark is not registered, however, a trademark owner can sue an infringer under a federal law that forbids use of “false designation of origin,” but these cases are difficult, and damages are hard to prove.

When may I use the trademark symbols TM, SM and ®?

The use of these symbols is frequently misunderstood. Any time you claim rights in a mark, you may use the TM or SM designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. But you may use the federal registration symbol ® only after the USPTO actually registers a mark, and not while an application is pending. Plus, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

How do I register my trademark?

The USPTO website contains extensive help and FAQs on registration, and you can file online.  The process is inexpensive relative to the protection it affords-the initial filing fee is $325. You can even file for registration before you actually use your mark if you have a bona fide intention of using the mark within the near future.

Your proposed trademark may not be the same or similar to an existing mark in use for similar or related goods or services; may not be on the list of prohibited or reserved names; may not be generic (describe the product itself rather than its source; for instance, “Computer Store” could not be a trademark for a store selling computers); and must meet the USPTO standards for being distinctive. The issue of distinctiveness is a major one, and beyond the scope of this article. Check the USPTO and Internet legal sites, such as nolo.com, for additional information about this.

Bear in mind that the USPTO can’t grant a trademark registration unless you use the mark across state lines, in interstate commerce. Some ways to satisfy this requirement include running an advertisement in a national magazine, working for an out-of-state client or having a web page that customers in another state can access. If you’re using your mark only within your own state, you can file a state trademark application, at least until your business expands.

Sounds simple, right? Before you file, though, you must make sure no one else has previously developed and used the mark. If this has happened, your application will be rejected by the USPTO, and you will have wasted a considerable amount of time (trademark approval or rejection often takes more than a year) and money.

You can do your own search using free web databases and public Trademark Office libraries, or you can hire a search firm or a lawyer to do the job. Two search services are Thomson & Thomson (www.thomson-thomson.com) and MicroPatent (www.micropat.com), but there are many other reputable search firms. Be certain you or your search firm or lawyer searches not only previous registrations but also current applications and trade publications.

If you want the security of having a lawyer handling your trademark registration, legal fees for a search and an opinion letter are generally $500 to $1,000; additional legal fees for preparing and filing an application will be in the same range.

Can a pen name be a trademark?

Yes. If a pseudonym becomes identified with the person using the name and/or the books and other products authored under the name, it may be entitled to protection under trademark law. If the pen name is also the name of a living individual, however, then you must either obtain that person’s consent or file a disclaimer stating that the name is not that of any real person. Pen names may also be entitled to protection under state laws governing unfair competition and under the federal Lanham Act, which prohibits “false designations of origin, false descriptions, and dilution.”

Is an Internet domain name the same as a trademark?

No.  Registration of your domain name by the Internet Corporation for Assigned Names and Numbers (ICANN) is separate from trademark registration. Yet you may be able to register your domain name as a trademark, provided the name is being used in connection with a site that is offering goods (such as books) or services. For information on domain-name registration, see below, “How to Register an Internet Domain Name.”

What if my domain name is similar to an existing trademark?
This is a complex issue. In general, legitimate use of a domain name may nevertheless be an infringement of an existing trademark. In 2000, domain-name registrars (registration companies) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP), setting forth certain priorities in the event of conflict between domain-name users. In addition, Congress adopted the Anticybersquatting Consumer Protection Act (ACPA). Under the UDRP and ACPA, trademark owners may be able to block the use of an infringing domain name.

How to Register an Internet Domain Name

Registering your domain name (.com, .edu, .net, .org, .biz, etc.) is as easy as entering “domain registration” in any Internet search engine-stand back and watch the hits. Registration costs between $5 and $35 annually, depending on the company with whom you register and the length of the contract, and not necessarily on the service provided.

Formerly a monopoly held by one company (Network Solutions Inc.), domain-name registration is governed by the Internet Corporation for Assigned Names and Numbers (ICANN), which has now accredited dozens of registrars, the most popular being Network Solutions, Register.com, NTT/Verio, Yahoo! and VeriSign. A registrar must check for availability of the proposed name from a central database, then can enter the new name into the database so it will be recognized on the web.

You can get an official list of these registrars at www.icann.org/registrars/accredited-list.html. Be aware that some of these companies will give you the impression they also must host your website; this is not true. Once you have your domain registration, you are free to have your site hosted by any Internet service provider (ISP). If you have an existing business name that isn’t trademarked, it’s often wise to register all permutations of the name; for example, if your business name is Pet Writers, you might register petwriters.com, petwriters.net and petwriters.biz. It will cost you more per year, but you will prevent another party from grabbing your business name.