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How the Turtle Got a Trademark (and you can too!)

Written by Eileen Parzek, © 2004

Last year, while working on branding my second business, I decided to get a registered trademark for the business name. Why would a micro business want or need a trademark? Well, this business operates virtually and at times, internationally - well outside the jurisdiction of a county DBA certificate. The long term plan is to grow the business into a team of independent professionals working in as-needed project clusters. So, my rationale was a combination of protection, branding, and admittedly, a desire to stomp on the world and say, "I'm still here!"

There are three types of intellectual property protection: patents, trademarks, and copyrights. A patent is what an inventor gets to protect their invention idea. A copyright protects a work of authorship, such as music or a book, for 70 years. And a trademark, or service mark, is what you would need to protect your business name and logo from being used by anyone else.

Traditionally, registering a trademark is time consuming process involving lawyers, money, tricky forms, and patience. By researching it and using the US Patent and Trademark Office's web site, I did it myself. This was a gamble - the $335 filing fee is non refundable if the application is incomplete, the research is not done properly, or the name unavailable. So while I can't advise another business to do it independently of a legal professional, understanding the process might save your small business money or headaches in the future. If this feels like TOO much of a gamble to you, then there are companies with the expertise, like TrademarkMyName.com, which will conduct the search and take care of the filing for you, for an additional fee.

The USPTO web site provides everything business needs to register a trademark, assuming you are willing to wade through all the information and take the gamble. In fact, the entire database of registered trademarks is online so you can research the availability of a name before you even begin branding. This is a good idea because the last thing you need is to build a business and find out someone else actually had registered that name and wants to sue you.

Before even deciding on a business name, I had done a search in Google to see if anyone else had that name. To do an exact search, you simply put the phrase inside quotes. I also tried some variations to be sure there was not anything close to it.

Then I went to the USPTO.gov web site and started digging through TESS (Trademark Electronic Search System), the free online database of all registered (and pending) trademarks. It was straightforward to research the name - the tricky part was the logo. I had to be sure that no one was using a logo with a turtle anything like mine, in an industry anywhere near mine. That required a simple search for the word "turtle" - and then visually verifying the resulting hundreds of logos which had a turtle somewhere in their descriptive entry. If your logo is unique in that no one else is using that mark, you can trademark. If it is similar to another logo, then you have to make sure it is not in use or pending within an industry near the one you work in.

Once I was certain that neither the name nor the service mark (logo) was in use by another business, I started preparing the online application. An application can be for words only, or words plus design. If you are trade marking a design, it must be included as a JPG image in black and white (one more reason to be sure your logo is designed properly!) The complete tutorial is online here.

After your application is sent, the USPTO conducts its own search, and rules on the availability of the name. This is why research is important - you could have your trademark application rejected at this phase, and lose the money, if your research was not sufficient. You will get a letter notifying you that it has moved on to the next step - publication. This means that your trademark will be published by the USPTO where people who are protecting the trademarks of their clients can challenge your application if it conflicts with registered trademark.

Be aware that there are "parasite" companies which get information from the USPTO publications throughout the process, and attempt to sell you things. One company sends out letters in very convincing "official" envelopes, offering to "protect" your trademark for an additional $350 per year. The second one actually shows up just days before the USPTO mail arrives telling you that the trademark is approved - offering to sell you a plaque with your trademarked name on it for a couple hundred dollars.

At any time, you can check online to see the status of your pending application. The entire process from filing until approval takes about a year, and when it is over, you will get a document from the United States government with a gold seal telling you that your business name is now protected for 10 years. Only then will you have earned the right to affix an ® to your business name!

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Eileen Parzek is an award winning graphic and web designer providing digital and print graphic design and web design services. Always found at the intersection of information, creativity and technology, her business, Business Design Studio (www.businessdesignstudio.com) helps small businesses make a big impression.

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