Trademarks?

[Chrismass]

Disclaimer: I searched the word trademark, and NOTHING came up (I like to give this disclaimer because generally I use that function a lot!)

Heres another question about trademarking your name. I have a very unique name, took me half a year to come up with it. I am however very scared that someone else could take it, and or trademark it. My two fears are:

1 - Someone decides to make a vodka or something similar, even a non alcoholic drink or product with the same name.

2 - Someone trademarks it and I cannot use it.

I wanted to know what everyones thoughts on this are? What is the BEST way I can protect my vodka (I'll pay the 325 for the trademark in a heartbeat IF that's the best way) and make sure no one can steal it from me. Is there a method that anyone else used which I could follow? I know there are dirty opportunists out there such as those who buy websites and then basically ransome them off to the person who actually was using the name in practice way before. People ignorant of these trademark and legal theft occurances end up getting screwed like my father did. I will not allow that to happen to me, I need to figure out the most bulletproof way!

*Note: I am not close to production, I am in the planning phase about to obtain the loan.

Thanks in advance,

Chris.

[Scott @ Twenty2Vodka]

If you are seriously concerned about securing your TM rights to your brand, I suggest you do the following:

1.) Call your lawyer. Have him refer you to a Trademark Lawyer colleague who specializes in trademarks. My lawyer is part of a big firm who has a guy that handles this.

2.) Perform a Thompson and Thompson search for your mark. This will cost about $2000 (probably more today), and in return you get a 1 inch thick book of "results". This search will provide you (and your lawyer) with a comprehensive list of any other use of your mark or similar uses to your mark across all classes. Once you perform this search, and are confident that your mark is actually novel, then proceed with the application.

3.) Have your lawyer file the application. Don't waste your time filing the application yourself. Lawyers will do it right the first time, making sure your registration is unique enough to get approved, but also broad enough to prevent encroachment by similar-but-different brands. Trademarks are routine and will likely only cost a flat fee, especially if the Thompson and Thompson search was performed. Yes, filing for your own TM is rather simple, and it will save you the lawyer $$. But a TM is only valuable if you defend it every time, and you will want to be sure that your mark can stand up, perhaps in a court of law even.

4.) Sign up for Trademark monitoring. My lawyer's firm offer's this. It costs like $350 per year flat. They call me when they see someone applying for a new mark that is similar enough to mine to warrant a cease and desist letter.

The whole process will cost about $3500. But it will offer the peace of mind you are obviously interested in by the sound of your op.

Best of luck,

-Scott

[ChrisNYC]

Speak with a IP lawyer, but generally you'll want to have them do a search to make sure no one else is using your clever idea already. We thought we had come up with something unique only to find it was trademarked already, so it is best to do that search before investing time and money into developing and idea that you can't use. Assuming it is not already taken, you can have your IP lawyer file an "intent to use" trademark application which basically gives your dibs on the trademark for a period of a few years (again speak with an IP lawyer for the specifics), assuming you have a bona fide intent to use. You'll have to pay the trademark fee for each use class (liquor is a different use class than shirts, etc.). We cover 4 classes for each trademark we register so it is a lot more than $325 per trademark.

Our thinking is that branding and trademarks are fundamental to our business model, so we decided not to skimp on IP protection. Others may feel differently.

[Mike Fiore]

I would talk to my lawyer and let him advise me. I have very low opion of lawyers but sometimes you cannot live without them.

[Jedd Haas]

You can also conduct searches on the USPTO site. That will give you some preliminary indication of whether your mark has been trademarked already, and if so, in what classes.

At a minimum, you should immediately buy the domain name for your name, if you haven't done so already. You can file the trademark too, but as noted above, getting some attorney input will help you avoid some easily-made mistakes.

[Chrismass]

Thank you very much for your input, I figured that the forms would be very iffy for someone like me to fill out. After doing a little more research I came across the fact that you cannot trademark a name if the majority of the name includes your location? My area in New York is a major part of my name, which seems like anything with your areas name in it really can't be trademarked? If this is false, that would be great and I will be able to go forward to a lawyer with my inquiry and not look like a fool!

[Scott @ Twenty2Vodka]

Words that comprise your mark that are in "the Public Domain" won't be included in the protection the mark offers the owner. While they can be included in your mark as a whole, they are expressly called out as belonging to the public as part of the registration. Take "The Jewel of Russia Vodka" as a great example. The words "The" and "of Russia Vodka" are in the public domain, nobody can claim ownership to those words. But the word "Jewel" is not in the public domain, so "The Jewel of Russia Vodka" really only owns the rights to the word "Jewel" for class 33 which covers spirits. However, they can register the whole thing together as a design, I think, but that only protects direct copycats from using the words "The Jewel of Russia" on a spirit.

I learned about this nuance of the law when trying to apply for the TM of "Jewell Vodka" way-back-when. I got a very nicely written cease and desist letter from Jewell-Osco who owns the rights to the word "Jewel" on fruit juice. The way copyright law works, if there is any chance of confusion between an existing mark and a new mark, the existing mark wins. Even though we were applying for the rights to use the word "Jewell" in a different class, and with a technically different spelling, the fruit juice beat us to the punch. Turns out they were currently suing a wine called the "Jewel Collection", and with a little more digging, we discovered that "The Jewel of Russia" beat everyone to the game by quite a bit. Point being, this is where we got the lawyers involved, and after their examination of the field, we decided to re-brand altogether.

If your brand is as special to you as you make it sound, get onto protecting the rights to it immediately. But if you discover that someone else beat you to the punch, don't be afraid to re-brand either....

Best of Luck,

-Scott

[rumfarmer]

I am a strong believer in trademarking all elements of your brand on all the classes that might be important to you. It usually ends up being at least $1000-$1500 per mark if you handle it yourself (assuming the mark is for at least spirits and apparel and branded merchandise). My current project has 4 different trademarks coving all my branding elements. By the time it is all done, this could end up a $10K investment since a few required outside help to deal with the USPTO submissions that did not go smoothly. It is good to take care of this so you don't launch your brand and end up with a cease and desist letter from someone who already owns your name. That is especially bad if you have already printed bottle/labels, etc.

[Jedd Haas]

We cover 4 classes for each trademark we register so it is a lot more than $325 per trademark.

hi Chris, in addition to spirits, what are the other 3 classes you are registering in?

[cowdery]

All of the advice above is solid. I would streamline it. (1) Find a lawyer with intellectual property experience. (2) Make sure the lawyer understands exactly what you want and need. (3) Do what the lawyer tells you.

To which I would add, you can fire a lawyer just as you can anyone else who works for you and if something doesn't feel right, fire that lawyer and find another one. Referrals from people you already know and trust are the best way to find a good lawyer, but the local bar association probably has a service to recommend lawyers in particular areas of practice, such as intellectual property.

The biggest problem people have with lawyers is attention and communication. If the first lawyer you hire isn't responsive enough and doesn't give you the attention you feel is necessary, consider that a firing offense. Also, everything is negotiable. The lawyer will probably expect a retainer, and that's reasonable, but the amount should be negotiable.

It also never hurts, whenever you are dealing with legal matters, to educate yourself about that area of the law. The biggest problem had by people who try to do this sort of thing themselves is that they don't fundamentally understand what trademarking is nor how it works. The website of the U.S. Patent and Trademark Office is a good place to start.

[ChrisNYC]

hi Chris, in addition to spirits, what are the other 3 classes you are registering in?

Hi Jedd, "tchotchkes" (key chains, etc.), glassware and apparel. The stuff we hope to sell in the tasting room...some day.

[cphillips]

Hi Chris,

Have you been to the site uspto.gov? This is the U.S. Patent and Trademark office that you can search to see if anyone has your name or is trying to trademark it.

You will definitely want a trademark attorney if its not registered. We are printers and we can't trademark names, but we use this as an initial tool if someone gives us a name that we think may be registered.

Let me know if I can help you further.

Carol Phillips

Wright Labels

VP Sales

800-678-9019 ext. 3214

336-906-9097 mobile

[Scott @ Twenty2Vodka]

USTPO web search only return results that are currently, or have at one time been, registered with the USPTO. Unfortunately, this is not enough detail now-a-days to be sure your idea is novel (patent and trademark speak for actually new). A professionally conducted search will also spot any other entity who has been operating but did not bother with the USPTO, which is very very common. We ran a search like this on our brand "Twenty2" before proceeding with the TM application. The search cost about $2000 and is about 1.25" thick with results from around the world uses of "Twenty2" on anything. It's not just some letterhead with a "you're good to go" on it.

Before proceeding with an application to register a trademark, you must be certain that you can claim first rights to it. Don't skimp on your due diligence.