Tuesday, June 8, 2010
Trademark Yourself Part II
Picking up where our May/June article left off, DPP delves into acquiring, registering and protecting your business trademark
At this point, you may be asking whether pursuing a federal trademark registration is worthwhile. To answer this question, you should consider whether:
1) you’re using a trademark to identify your studio or business;
2) you’re devoting money and resources to advertising and promoting the studio or business identified by the mark;
3) your services implicate interstate commerce (although this last question can be complex, if you’re advertising and/or working outside of your local area, or if your work is being published outside of your local area, odds are that your services implicate interstate commerce).
If you’ve answered “yes” to each of these questions, then you’re likely to find that the application and maintenance fees are insignificant compared to the ability to protect the investment you’ve made, and will continue to make, in advertising and promoting your studio or business. If you ever find yourself in a position where a competitor is trying to benefit from the advertising and marketing that you’ve done, you’ll be thankful that you made the investment of formalizing your trademark rights.
Contrary to the common misconception, you don’t have to be involved in franchising in order to make formal trademark protection worthwhile.
The Registration Process And Trademark Maintenance
Once you’ve made the decision to register your trademark, the process is fairly straightforward. As you may expect, in this day and age when just about everything is available online, the application can be completed and filed online, too.
Before working on your trademark application, you’ll need to prepare a JPEG or PDF file containing a specimen showing your use of the trademark. For the average photo studio or photographer’s business, this may be as simple as a flyer or advertising for the studio or business showing how the trademark is used. If the trademark you want to register incorporates any sort of design—anything beyond words comprised of basic letters—then you’ll also need to prepare a JPEG or PDF file containing the trademark by itself. You’ll need these files to complete various sections of the application.
When selecting the online form to file, you want to select the application for registration on the “Principal Register.” You should avoid the form for registration on the “Supplemental Register,” as that generally exists for trademarks that aren’t entitled to be registered on the “Principal Register.”
The application fees for trademarks are based upon the number of classes of goods or services included in the application. Various types of goods or services are divided into different classes. Classes 1 through 34 relate to goods, while classes 35 through 45 relate to services. The most likely classification for photo studios or a photographer’s business is services in class 41; in certain cases, the description of services can be as simple as “photography services.” The application fees for a trademark are $325 per class of goods or services ($375 per class if you file the paper application instead of using the online registration system). If you have all of the materials that you’ll need to file your trademark application and are comfortable functioning in the electronic (as opposed to paper) world, you can take advantage of the simplified TEAS Plus application, which costs $275 per class of goods or services. If you use the simplified TEAS Plus application, you’ll be required to select the description of goods or services from a preset list, which will include “photography services.”
At some point after the application is filed, the application will be assigned to a trademark examiner who will review the application to ensure that it’s complete and to determine whether it’s confusingly similar to any registered trademarks or pending trademark applications. If the examiner determines that there are problems with the application, the examiner will begin what’s referred to as an “Office Action,” in which the examiner will formally identify problems, and the applicant will have the opportunity to respond. In some cases, such as where the only impediment to registration are minor problems with the application, the examiner will conduct the proceeding informally (sometimes even over the telephone).
After filing her application for a trademark registration for “CARA MIA STUDIO®”, Diamond Bar, Calif., photographer Silvia Boozell received a call from a trademark examiner. Since the term “Studio” is descriptive, the examiner explained that Boozell couldn’t claim exclusive rights to the term. After Boozell agreed to amend the application, the trademark examiner entered an Examiner’s Amendment containing the necessary disclaimer for the term “Studio.”
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