brand trademark registration

[bradocaster]

Can anybody give advice on registering for a trademark without legal assistance? is it a bad idea?

Thanks for any input.

Brad.

[scohar]

Can anybody give advice on registering for a trademark without legal assistance? is it a bad idea?

Thanks for any input.

Brad.

Bad idea. I recommend counsel.

[Scott @ Twenty2Vodka]

From my experience, the registration paper work is not complicated. It is tedious, and must be exact, but does not require a law degree to complete. However, the lawyers can help you in doing the research for what else is out there similar to the mark you want to register. There are "qualifications" a new mark must pass through ensuring it doesn't in fringe in any way with any existing mark. In researching the field using their resources as a law firm, they can tell you exactly if your mark will pass in the first place, or if someone else has already claimed rights to it.

I know this because:

The initial brand name of my vodka was going to be Jewell Vodka. We filed the TM paperwork ourselves, and about 3 months later received a cease and desist order from a supermarket chain in Idaho who owned the rights to "Jewel" on a beverage (not spirits), but was telling us to abandon our TM claim on Jewell for vodka immediately. It was a sock in the gut to say the least. We THEN got our lawyers involved, they looked into the situation, and discovered that there were an additional 2 other brands currently claiming the rights to Jewel on a beverage (the Jewel of Russia vodka and a Wine with the "Jewel Collection" on the front label). Had we moved forward naming our brand Jewell, ignoring the fact that other bigger corporations own the legal rights to that specific word, I'd be setting myself up for disaster if i ever wanted to expand into markets outside my immediate bubble.

Branding is important to us as a company. For that reason, we spent the $$ to have the lawyers do a Thompson and Thompson search on Twenty 2 before we proceeded with TM paperwork for the new brand. The result was a 2 inch thick spiral bound report on the history of the use of Twenty 2 for anything anywhere in recent history. It was neat and very heavy, but only really useful to make us 99% sure that we were the first to use Twenty 2 in this way on this type of consumable. And I can be sure that the equity I build into my brand is the property of my company. Accountants call it "good will"...

Lawyers and accountants are a necessary evil of starting any small business. In this instance, the lawyers will do this right the first time, while you are out growing the company.

Good Luck, update us on what you end up choosing to do!

-Scott

[phillip]

I have done it both ways. The first time, I hired a lawyer. Thought everything was fine; they told me the name was researched, etc. Then, whamo, I received a letter from the Chanel corp demanding I abandon the name. This is after I paid the lawyer to do the work.

The second time, I did it myself. Yes, it took a little time. But, each and every name goes through a trial period when companies can object. However, once you have the trademark, it is yours. I have received two trademarks this way with success.

[Joe Pawelski]

I have a couple Trademarks and Patents. I used an attorney on my first mark, legal zoom on one, and saved a boatload of money doing the last one myself. It depends how much time you have to do your research and check your work and how much confidence you have in your own work.

Trademarks are super easy to do- if you have done one before. The USPTO has step by step online instructions and you certainly don't need to be a lawyer to follow them. You can also use Legal zoom or some service like that if you want a little more insurance that you are doing things properly.

My experience is that most people tend to believe that some legal things are a lot more complicated than they really are. If you have a college degree- and certainly if you are capable of going through all the hurdles of starting your own distillery business- chances are you are smart enough and capable of doing your own Trademark.

Also be aware, even if you pay a lawyer top dollar and he does your mark perfectly - there is still a chance someone could dispute it. If you do find yourself in a dispute that can't be settled out of court, and you are just getting started with your business, chances are you would be better off finding a new mark than wasting your start up capital on a legal battle you may not win. Patents and Trademarks are designed to help protect intellectual property, and they have come a long way since Samuel Morse, but they must be treated as a deterrent not a guarantee. For most of us the deterrent aspect is the only part that really matters. Point being, just having the mark registered is going to deter most from trying to copy it. Perhaps a lawyer could add a little more to the mark to make it easier to defend- but that assumes someone wants to copy it bad enough they weren't deterred by the fact you had a mark in the first place- and in that circumstance chances are they have a lot more money and a much better lawyer than you do anyway.

[Joe Pawelski]

I should mention I waited for all my marks were through being published in the Gazette before moving forward with labels and branding. You take a risk if you start branding and printing labels before your mark is official- even if a lawyer did the search and applied for the mark for you.

[Joe Pawelski]

I have done it both ways. The first time, I hired a lawyer. Thought everything was fine; they told me the name was researched, etc. Then, whamo, I received a letter from the Chanel corp demanding I abandon the name. This is after I paid the lawyer to do the work.

The second time, I did it myself. Yes, it took a little time. But, each and every name goes through a trial period when companies can object. However, once you have the trademark, it is yours. I have received two trademarks this way with success.

My point exactly-

Just because a lawyer did it doesn't mean you will be any better off, you will almost certainly have less money though. FYI- the last mark I did took all of 30 minutes- after its published, assuming no-one objects, I will have to spend 5 more minutes uploading an image of the product with the trademark on it. Its really that easy.

[Tirador]

I've done this several times on my own ... it's a pretty simple and streight forward process. Like others have said, take the time to do the research, file for the mark ... and after trail period if no one has filed objections the mark is yours. You will get junk mail for all sorts of trade-mark lawyers, etc. when you do this though.

Remember that, prior to the USPTO issuing the final trademark you must have "entered your mark into commerce". That means that you have to be using it commercially in some way (though not necessarily full blown distribution and sales), to qualify for them to issue you the final trademark.

Next, the USPTO's web-site is pretty user friendly. You can search through their TESS system at (http://tess2.uspto.gov/) and you can file for your own trademarks electronically at their TEAS site (http://www.uspto.gov/teas/e-TEAS/index.html). Just remember to do the research before you file ... or your simply wasting the filing fees.

Also, make sure you know a solid lawyer to call if there are issues. Do as much research as possible before you call the lawyer, and then specify exactly what questions you want the lawyer to assist you with. That will both increase your knowledge and minimize the amount of billible time the lawyer will charge you for.

Bottom line is that for most, but not all trademark issues, if you take the time and do the research you can get this done. When you need to rely on a lawyer, use one, but make sure that you've taken the time to do as much of the research as possible prior to calling one ...

Lastly, most states have Small Business Development Centers affiliated with the SBA. In many cases they have legal counselors that can also provide assistance with these matters. Again, do the research before you call and ask for help.

My two cents.

S.

[cowdery]

... once you have the trademark, it is yours.

Not really true. While it's not that difficult to file the paperwork to obtain a trademark, the real work begins once you have it, because you have to use it the right way and be prepared to defend it. If you don't adequately defend your mark you can lose it very easily. Whether you get a lawyer involved or not, it's a good idea to learn the basic ins and outs of trademark law, as it's a lot more than just filing some paperwork.

[bradocaster]

Once again thanks for your input. This is a great forum.

Brad.

[cowdery]

For an interesting story about what happens when people fail to defend their trademarks, click here.