Trademark Searching for the Small Business Owner

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(Usual upfront disclaimer, yes I am a lawyer, no I am not your lawyer.  All of this is extremely generalized and simplified legal concepts.  None of this is meant to be taken as legal advice, certainly not as gospel, so do NOT take my word for it, and if you’re unsure, hire a lawyer.)

When you’re going into business for yourself (like as an indie author) you have a name for your company, your products, ect…  Those names and (you’ve all heard this word) branding are where trademarks come in.

Trademarks are in the same family of law as Copyright, they’re both under Intellectual Property.  This does not mean they cover similar things.  If they did, we wouldn’t need two different types of law for them.  That’s not to say there isn’t overlap, because it’s law and we can’t do anything simple, there is overlap 🙂

For my general overview of trademark law, go here.

Once you have your name and logo, you know what you’re selling (if you’re an indie author you’re selling your books but also yourself, and that’s all in the marketing and branding side of things, which I’m still figuring out 🙂  But once you have that, you don’t want others to copy it and try to pass themselves off as you or try to divert your business.  You certainly don’t want to do that to someone else and get sued yourself.

The first step is to make sure no one else is using the trademarks you picked in a similar business.  I say similar because there’s a point where common sense actually does come into play in law (I know, who’d have thunk it) and the courts will say it’s not infringement because they have the same name in such different areas no customer would get them confused and they couldn’t possibly be taking work away from you because they don’t do the same work.

There’s an exception to this, and maybe more than one (isn’t there always) and that’s famous trademarks.  You can’t slap Starbucks on a computer because it is such a huge brand that people might assume Starbucks is endorsing that computer, or that it’s branching out and putting out decorations for computers, or something like that.  Famous marks get to cover a wider range of areas and you really don’t want to go into those murky waters.  For one, even if you were using it in a legal way (such as comparison or parody) you could still get sued, and the famous brands have the big bucks.

(Side note, doing your due diligence will NOT stop people from suing, and usually paying to defend a suit is the bad part.  There are shitty people out there looking to make a quick buck and will sue and then say they’ll go away for a few thousand dollars.  If you have the money and time to fight it, great, you should because someone’s got to stick it to the assholes that pull that.  Even just standing up to them and filing a dismissal and counter-suing for a frivolous lawsuit could make the smaller fish go away.  Could, maybe, if you’re lucky.)

So, you want to do a trademark search to make sure nobody has the trademark obviously filed in your area of industry and in your state.  (State is more for stores and stuff that are local.  If you’re publishing, you are going all over the US, and the world but I’m not getting into the can of worms that is international IP right now, and you’ll want to check for trademarks in the US.)

Go to the USPTO website for trademark searches and put in your terms under the word search.  http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4804:hxooa.1.1  It’s named TESS, isn’t that cute? 🙂

You can look up the words and look at what area the trademark is for, to make sure it’s not for your industry.  For me it’s publishing.

To look up the trademark search for your state, just google it.  They are really easy to find.  Tennessee trademark database is here: http://www.tn.gov/sos/bus_svc/TrademarkSearch.htm  Put it in to check the name.  Notice this state one’s doesn’t have a place to look for logos (pictures basically), while the USPTO does.

After that, google the name you want to use.  Trademarks are not like Patents.  They DO NOT have to be registered with the USPTO or the state’s version to be protected.  It helps when you sue to prove things and to get bigger damages, but you don’t have to be registered for your trademark to be protected.  It has to be used in commerce to identify the source of the product.

So you google it with terms for your industry to make sure nobody else is using that name in that context.  You’re going to want to do an image search too for logos in the industry to make sure you don’t have basically the same picture as someone else with a different name.

Once you have your business up and running (or when you’re kicking it off if you want to be on the ball) file for your trademarks.  You’re going to want the business name by itself, the picture of the business name (as in the specific typography and way it is shaped, like if it wraps in a circle), the picture you use for your logo, and the business name in conjunction with the picture to make up the whole logo.  And then you’re going to want to get the same all done again for any specific product names.  So you’ll have Starbucks, it’s name in the picture, the picture, the logo all together, and then the names of the specific Starbucks original drinks.  Yeah, those can be trademarked 🙂

Depending on what type of business it is, you could be more concerned with the Trademark for the product than with the Trademark for the business, because people will know the product without knowing who makes it.  Say for example in pharma.  Do you know the big business names behind them, or do you know the name of which stomach medicine you like.

So there’s definitely a lot of decisions to be made in where to focus the branding and especially what the branding should be!  But on the legal side of things, the most important thing is to make sure somebody else isn’t using the name or something close enough to confuse people, either in your industry or as a famous brand.

Good luck and (for the other writers reading this) happy writing 🙂

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