Navigating the Trademark Process

by Emily Ley of Emily Ley Paper

Hello! I’m so excited to be joining the Oh My! Handmade Goodness columnists to share business tips and inspiration. I started my business, Emily Ley Paper, in late 2008 and have learned so much along the way.

My biggest learning experience (a.k.a. failure – I tend to learn by trial and error) began when I started to struggle with my business name. I was uncomfortable naming my company after myself (besides, who is Emily Ley anyway?) and fell in love with the name “Goodpaper”. I knew that because the name was not my own legal name, I’d need to apply for a trademark. But what would that entail? How much would it cost? I knew it was necessary but was a little overwhelmed with all of the information out there.

TIP: If you’re using a name that does not include your NAME in it (i.e. Emily Ley Paper), you must MUST file a trademark application. If you do not, you are basically telling any one who’d like to use your business name that they can have it. Trademarking protects you and your business name.

First, let’s take a look at the different types of intellectual property protections :: a Copyright, Trademark, and Patent. Read this article written by the US Patent and Trademark Office.

Copyright ($35)

This protects music, literature, articles, etc. from being re-used without permission from the creator. (i.e. The Beatles songs are all copyrighted).

Trademark ($275)

This protects your business name, tag-line, product name, etc. from being used by another company (and thereby causing marketplace confusion with the names). Note: It isn’t necessary to Trademark your OWN name (i.e. Emily Ley Paper) – you innately own the rights to that name because it includes your own personal name.

Patent ($500 – $1,500, sometimes more)

This protects items and products themselves. For instance, you might patent a fancy toothbrush, so no one else can create that toothbrush.

. . . .

Now, for most of you reading this, you’re going to be most concerned with the Trademark process. I can’t tell you how important it is to spend that $275. In fact, I made the process easier for myself by contacting a representative from the USPTO to manage my applications. His name is Jack Briggs and he can be reached at 888-250-8786 x86 or by email.

The process is a long and sometimes crazy one, but it’s worth it. The USPTO representatives charge $250 plus the $275 filing fee to manage your application throughout the lengthy process. Jack was fantastic and extremely helpful/knowledgeable about the whole process and how to get through the hurdles that might stand in your way. Your application will likely cost you anywhere from $275 – $600 total.

. . . .

Quick Flowchart ::

1. Research your name.
2. Search the TESS System for similar marks.
3. Hire a Trademark Manager (optional) and file your Trademark Application.
4. Use the TM symbol.
5. Wait . . .
6. Publication for contesting in the Official Trademark Gazette.
7. Conquer any roadblocks.
8. REGISTRATION!

Step 1 :: Research your name ($10)

Do a search through GoDaddy (if you don’t already own your domain) and see if your-business- name.com is available. If it’s not available, and a similar one isn’t available, revisit the naming process. If you find your domain is available, purchase it and any misspelled versions of your domain as well (this will continue to drive traffic to your site even if someone spells your name wrong). Remember to have GoDaddy help you point your “other domains” to your main one.

Step 2 :: Search the TESS System for similar trademarks or pending apps ($0)

Do a basic search through Google and through the USPTO’s TESS system to see if your name is available. You’ll be provided with a list of names that are similar or exactly like your name. What’s most important is that you’re not operating in the same industry as these applications. For instance, Sunshine Studios can operate in the photography industry while Sunshine Studios can also operate in the music video business. Don’t be discouraged during this step. Just keep going and do your research.

Step 3a :: Optional – Hire a trademark manager ($525)

If you would like to hire a Trademark Manager (and this isn’t a necessity – but nice to have someone in your corner), contact Jack or his USPTO office. He’ll help you file your application.

Step 3b :: File your trademark application ($275)

If you’ve chosen to skip Step 3a, begin filling out your Trademark Application. There are TWO types of trademark applications – a “mark” and a “stylized mark”. If you have a logo that uses special fonts and/or colors, you’ll want to file a stylized mark. A regular “mark” is one that consists of only letters and numbers – with no specific font or color attached to it.

Also remember industry classification is key – so pay special attention to your application. When you finished and have paid, submit the application. Visit this site frequently to monitor the progression of your application – have your serial number – from your application confirmation handy.

Step 4 :: Use the “TM” symbol now ($0)

Now that you have a pending trademark application, you are entitled to use the “TM” next to your name. The R with a circle around it is reserved for registered trademarks.

Step 5 :: The waiting game ($0)

This part is not fun. The entire Trademark process can take anywhere (if running smoothly) from 6 – 12 months. Once your application is received by the USPTO, they will mark it pending and tell you to wait 90 days. You can use the serial number they provide you to monitor the progression of your mark, any approvals or any questions/denials. On the 90th day, your application will be assigned to an examining attorney. If they have any questions, they will contact you or your TM manager for clarification or extra information.

Step 6 :: Official Trademark Gazette ($0)

If you make it through this part, you’ll be given a date for publication in the Official Trademark Gazette.This gazette is published every Tuesday and allows other TM owners to contest your application (if they feel it is too similar to their own). I was told that 1 out of every 2,000 or so is contested at this point. (My experience = case and point. I was contested here and had to hire an Intellectual Property attorney to handle my roadblock.) Your mark will be published here for 60 days. If it is not contested, you will be approved and assigned a date of registration.

Step 7 :: Any roadblocks here? ($0+)

If you encounter roadblocks and can afford to hire someone to help you, don’t hesitate to work with an Intellectual Property attorney. The cost is between $250-$400 per hour – so they can be pricey. But if you are contested and cannot defend your mark yourself, you will likely lose.

Step 8 :: REGISTERED! ($0)

Once your mark is published for 60 days in the Official Trademark Gazette, you will receive notification of final approval and a date of registration. When your mark is officially registered, you will be able to use the R/circle with your logo. A trademark registration is valid for 10 years. If you chose to work with a manager, that person will monitor your mark for you and let you know if A) anyone tries to use it and B) help file your update paperwork throughout the 10 years of registration.

BEST of luck to all who will go down this road. It is WORTH it to protect yourself and your name in the future. If anyone has any questions – please leave a comment below, and I’ll answer them for everyone to see. I’m no expert, but I’ve definitely educated myself quite a bit about Trademarks in the past year.

After Step 8 comes the fun part – order new business cards, update your website, etc. with your new R/circle next to your logo!

One last tip for anyone struggling with naming their business (or with the current name of their business), consider your own name. Nothing is more personal than the name you use every day. Remember, your brand is an extension of yourself. The best decision I made for Emily Ley Paper, after a long and unfortunately unsuccessful trademark battle, was to OWN my name and run with a brand that was simple, fresh and very Southern – just like me.

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Emily Ley is owner and designer of Emily Ley Paper – an online stationery boutique specializing in letterpress paper goods for all occasions with sweet, Southern charm.