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applying for trademak


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Can anyone help me out with understanding the order you need to do things when applying for a trademark?

My business hasn't been officially created yet (I'm still struggling with the LLC vs Scorp path), Do I need to be concerned with the business name as far as the trademark goes? Have you guys trademarked your business name as well as your products name?

I have a name in mind for a brand I would like to use and want to claim it. I am confused about the part where the rules say it has to be in use. How can I do that if the spirit isn't being sold yet. Any suggestions on how to get around this? say coming soon on a web site? inclusion on a prospectus for investment?...

I obviously don't want to go to far if I am going to have a conflict with anyone so at what point to you come up with the picture part of it? Meaning, do I go head and have someone work with me on creating an image for it even though its not official. I was thinking about using designcrowd to come up with something.

I'm not sure if I will do this myself with something like legalzoom or go through an attorney yet. Since I plan on focusing on bourbon, does anyone see an issue with going through an attorney who handles a lot of the trademark work for a lot of the large bourbon distilleries here in KY. I am going to be small and don't want to have to deal with issues from the big distilleries. I am thinking any conflicts could be avoided this way.

Thanks,

Fred

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You can do a preliminary search for trademarks yourself on the USPTO website:

http://www.uspto.gov/

There may be trademarks in unrelated industries, but that should be okay so long as there's not a basis for confusion. Talk to a lawyer about whatever you intend to trademark when you're closer to getting underway. In order to actually apply for a trademark, you need to be selling something with that label (hence, "trade").

You should also be familiar with the TTB labeling guidelines before having anything designed for your bottles.

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No no no.

My goodness you are all mixed up, and the advice you just received is too.

You really need to educate yourself in regards to what a trademark is and how trademark registration works. The U.S. Patent and Trademark Office happens to be the first result in a google search for "trademark". Gee that's handy. After you read that, you might as well contact a trademark attorney, because it doesn't sound like you'll be able to do this yourself.

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Excuse me?

I asked a few questions because I DID look at the Patent and Trademark Office's website and that is why I have the questions. Not to mention , where do you come off telling me I can't do this myself, I asked a question?

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I'm just relaying what a trademark attorney has told me, but I should be explicit that I'm not an attorney and this is definitely guy-on-the-internet level advice. Anyway, you can't file for a trademark until you're actually selling something under that trade name, meaning that you need to have actual business interests to protect. The name of your business is only important if you're using as the trade name you're selling under. So if you company is called "Fred LLC" but your brand is called "Superawesome Whiskey", you only trademark the "Superawesome Whiskey" design. The trademark only applies to the text and design of the brand and logo not the whole label. Trademarks are industry-specific up to a point, but there can't be any basis for confusion (a small business that sells say, "Superawesome Shampoo", is not likely a problem, provided they're using a distinctly different font and style. Naming your product something like "Google Bourbon" is still a problem).

Searching on the website will give you an indication of what's already trademarked, but you should ultimately still speak to a trademark attorney about anything you're intending to do. They can do a thorough search for any other trademarks that may be an issue, can help you with the paperwork, and will be able to advise you better about how to protect that trademark if any issues arise. If your brand involves a well-known person's name, some sort of local history, or anything like that, you should definitely talk to an attorney before having anything designed.

Dave, if I'm wrong about any of that, can you be a bit more specific about what I've got wrong?

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All of the advice is mixed up here. First off, you can apply to register a trademark before it is used, if you have the intent to use within a year. It is a different form of registration, and requires a follow up when you do use the mark in trade. You can read about that on the USPTO.

You can do it yourself, and in fact it can now be done electronically on the USPTO web site for cheaper. But the process is GIGO: you can try to trademark anything not currently in the database, but any other prior competitive use could challenge your attempt to register your mark. Registering your mark does not guarantee anything, it is just one more way to protect your mark. You don't have to register your mark to protect it, just protect it. In fact, even if you register your mark, if you don't protect it, you can lose your rights to it. How to protect it? The first thing is to use it in public and indicate it is your intent to treat as a protected trademark by including "TM" with its use, or words indicating it is a protected trademark. You don't ever have to register to do that. If you register successfully, you replace the "TM" with the "circled R".

It is up to you to do searches to see if there are competitive uses. The USPTO will do this as part of the registration review, but if they find a competitive use before you do, then you are out your registration fee when they refuse you. So, do your homework. These searches are in part what you pay an IP service for.

If you want some help at not too much cost above the registration cost, check out trademarkia.com for registration service. They act as your filing agent and legal representative. They also search their own reasonably large database of marks for possible competitors.

I did my first one through trademarkia, and once I felt comfortable understanding what they did for me, I did the next on my own. I did word marks for names of my spirits. I plan on doing design marks in the future.

In the end, though, if you plan to have trademarks, you do need to be ready to consult with an attorney, because protecting a trademark really means that you are willing to legally defend your use from others. Unless you plan to defend yourself without a lawyer.

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There is nothing wrong with any of the advice provided already, even to the extent it seems contradictory. Whether you try to do it yourself or through an attorney, either way you need a fundamental understanding of trademarks and how they work, and that said, most of what most laypeople think they know is wrong. The Trademark office's website does a good job explaining the basics and a lawyer should be able to answer most of your questions. This is a subject about which a lot of people worry unnecessarily. Especially if you're not even in business yet, it shouldn't be among your top priorities.

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Brother Vilgalys and Bluestar, Thanks for replying to my questions and the helpful information.

I realize talking to an attorney may be required but finding out as much as I can prior will make the time I do use more productive.

Because I am planning on doing a bourbon and it will obviously take a while for to be aged to the point where it can be sold, I was hoping to get the trademark for the name and build interest in it prior to its release. From what I have read, this does not seem possible because I'm not ready to sell it. I'm sure I'm not the only one who has thought about this, I thought there might be a creative way to get around this requirement. Now I'm not saying you can do this but I had the idea of creating the brand and selling tshirts with the bourbons name on it. This way I could trademark the design because I would be selling shirts with the logo on it. I'm just trying to be creative in how I work around this. This may not be a wise idea though. I have do do some more research but it seems someone has trademarked "Bourbon" in a logo for clothing, hats...

Bluestar, I took a quick look at trademarkia, I have also looked at legal zoom to do the same thing. Any drawbacks to either one that you found?

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Yes, yes, yes.

You can apply for a trademark as intend to use, then file an extension request every time the statement of use is due until your product is available. http://www.uspto.gov/trademarks/basics/Basis.jsp

You can apply for a trademark for your name or logo in a clothing category, which is separate from the spirits category your bourbon will be under. But that won't necessarily prevent someone else registering the same thing in another category. http://tess2.uspto.gov/netahtml/tidm.html

Want to file on your own? Do a search then find a recent trademark for a similar product and copy it. Imitation is the sincerest form of flattery. That's why I only eat leftovers. http://en.wikipedia.org/wiki/Leftovers

spoonfed for your enjoyment.

*This is wholly intended as unsolicited legal advice by an overwhelmingly underqualified past participant of a quasilegal closed door session of the Royal Order of Forums.

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  • 2 weeks later...

As said, the Intent To Use filing is what you want. And even if you don't get up and running as quickly as you think you will, you can also file for an extension of the time to keep the mark.

Also as suggested, you can (should) do your own search for potentially competing marks before you file, but here's just one thing to look out for (there are many pitfalls, but here's one):

Even though you may not find a similar mark in the same class of goods (spirits), you need to look for similar marks in classes that may be related to spirits. For example, if there is a brewery or winery using a sufficiently similar mark, you may run into a problem with the USPTO. Why? Because even though a brewery or winery is using their mark in a completely different class of goods (beer, or wine -- not spirits), there still may be confusion in the marketplace. For one, beer and wine -- and other beverages -- are commonly found side-by-side with spirits in commerce. So if a consumer sees "Brand X" beer, wine, or even Bloody Mary mix alongside your "Brand X" vodka, there will be a likelihood of confusion. (Anyway, you probably wouldn't want consumers to think your brand is related to those others out there.)

Also -- and I have seen the USPTO bring this up! -- because some breweries, wineries and other beverage makers also produce/distribute spirits, the USPTO sees that as a logical possibility that a beer or wine brand may eventually extend into distilled spirits, so they may disallow you from registering a trademark that might inhibit that possibility -- even though you're filing your trademark in a completely different class of goods compared to a winery, brewery or other beverage maker. Obviously there is a big difference in class of goods between t-shirts and distilled spirits, but not such a big difference between spirits and other beverages.

And, don't just limit your search to the USPTO's search system or to Google. Even if a registered trademark has expired (inactive), that doesn't mean it isn't still being used in commerce (and thus grounds for the USPTO to turn down your registration application).

Anyway, you can file a trademark by yourself, but there are pitfalls a lawyer can help with. If you really really really think you have something totally distinctive, then you're probably ok. But search thoroughly!

My 2-cents of non-lawyerly advice. :)

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That's why I only eat leftovers. http://en.wikipedia.org/wiki/Leftovers

P.S. Wow. Clearly we're running out of things to wikipedia now that there are entire pages of erudition dedicated to topics like "leftovers" and "form takeout container" (http://en.wikipedia.org/wiki/Foam_takeout_container). :D

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  • 1 year later...

I did my first one through trademarkia, and once I felt comfortable understanding what they did for me, I did the next on my own. I did word marks for names of my spirits. I plan on doing design marks in the future..

Any idea why uspto (http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4804:ug6pjz.1.1) searches doesn't turn up any of the spirit names?

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Searching for "WATER TOWER WHITE LIGHTNING" doesn't turn anything up on the basic word search. Should it? PRAIRIE MOONSHINE returns a result, but not a spirit.

Uh, they are not registered yet, and they shouldn't be, because they are my trademark, I protect them, and I have not registered them. Are you still confusing trademark with registration? Again, when you see the "TM" next to a mark, it is a trademark someone is using and presumably will protect if challenged. If you see an ® it is registered and accepted with the USPTO, and presumably will protect if challenged.

The two registrations referred to in the earlier posts by me were for other marks. In the end, one was challenged by someone holding the same mark in a different field, and I abandoned it; the other was rejected on initial review by USPTO officer, and although I think I could have gotten it on appeal, I later found a similar enough use of the same name by an inferior producer, that I abandoned it because I wouldn't want to be confused with them. In both cases, the reason I registered was because I wanted to use the names and I was concerned that they might not be protectable. And, having time until the product was going to be out, I went through the registration process.

A very typical way to do things is to use and protect the mark BEFORE registering it. And then you are in a better position to register it after such use.

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Bluestar has given good advice.

I think you could probably register your marks on your own, if you spend a bit of time on the USPTO's "how to" videos.

To answer your question, yes, I trademarked our business name (Three Meadows Spirits). The name we are thinking of for our product was rejected as "descriptive". For example, "Vanilla Vodka" -- vanilla is describing the vodka and lots of people want to use it. When we have a logo/label design I will go back and register that.

I think the main pitfalls you want to avoid are being too descriptive (as I was!), being too broad (e.g. registering Three Meadows Spirits for clothing, or legal services or anything -- instead you want to limit your area as much as possible (to bourbon, or to the various kinds of spirits), or being too similar to someone else's mark.

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  • 2 months later...

Call Luke Brean in Portland, OR. 800-451-5815 I have had good luck with Him. I wish I would have thought of that a few years ago. Some P.O.C

started to use my name and it has been a problem. Robert Contreras. napavalleydistillery.com

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