Registering a trademark: 8 tips for doing it yourself

By Susan Schreter

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One of the reasons many entrepreneurs want to start their own company is to test their leadership skills and creativity. At last, they get to be "the boss," with the freedom and authority to make all the big decisions.

One of the key decisions that entrepreneurs enjoy the most is selecting the name of a much-dreamed-about new product or service. Such business founders as Charles Schwab, Martha Stewart, and Oscar Meyer made their brand-name selection process easy. They simply gave their own name to their products and companies.

Other companies pick brand names that have special meaning to the founders. Apple Computer, for example, was reportedly named in tribute to The Beatles and their Apple record label. Still other entrepreneurs, who want to express their independence and sense of fun, favor upbeat, invented names such as Fandango, Zango, or Yahoo!

Sometimes I find that the most productive brand names for cash-strapped startups are those that provide hints to the product or service’s purpose. Lean Cuisine, KitchenAid, and Baby Einstein are wonderful examples of brand names that create a memorable and instant impression of product features and benefits. Compare the HouseValues.com and Zillow.com Web sites. Both companies offer information on the ups and downs of home valuations. Which site do you think has to spend more money to build brand awareness and generate traffic? Clearly, Zillow faces the tougher advertising challenge, though it has succeeded in building significant brand awareness nationally through its “Zestimates” home-valuation service.

Is the trademark you're seeking available?

Perhaps the most common mistake first-time entrepreneurs make when selecting brand names is the failure to determine a trademark’s availability before securing domain names, designing product packaging, and launching Web sites. Entrepreneurs often assume that simply obtaining a domain name is the same thing as obtaining trademark rights. It's not.

Also, entrepreneurs assume that researching trademarks is expensive and has to involve lawyers. But isn’t necessarily the case.

To help clear up the confusion, and to help you make better branding decisions from the start, here are eight tips for registering a trademark in the United States.

1. Start by researching the availability of the trademark(s) you seek to use.   The United States Patent and Trademark Office's (USPTO) Web site has a free online tool to help you research the viability of various “marks.” All you have to do is follow the links to the Trademark Electronic Search System or "TESS." Simply, type in your brand-name candidates and look through the database of similar registered marks, abandoned marks, and applications in progress. TESS searches are easy, fast, and educational. It's important to note that TESS does not report all trademarks and service marks, only those that have secured a federal registration. Federal registration provides evidence of ownership of your trademark, plus nationwide notice of your claim, and also some benefits for doing business in other countries.
2. Know that similar names can be trademarked for different products.   Two separate companies can use the same name or "mark" if they compete in entirely different product or service categories. This is why the name "Lexus" is an upscale car, a brand of pesticide, and also an alcoholic beverage.
3. Choose the appropriate product classification(s).   There are 34 different product classifications and 10 different service classifications that guide federal registration awards. Your job is to pick which classification best matches your product or service. You can file applications in multiple product or service classifications.
4. Run from signs of trademark conflicts.   If your chosen product or service classification seems "crowded" with a high potential for conflicts, then I would select a different name. Entrepreneurs rarely have extra time and cash to respond to competitive challenges. Also, experienced investors avoid companies that don't have federal trademark protections in place or that may face trademark litigation in the future.
5. Go ahead and trademark a domain name.   Yes, domain names can become trademarks, provided of course that there are no conflicts with established marks.
6. Be diligent in your record-keeping.   Keeping accurate records is important to securing and maintaining registration rights. The federal trademark application asks companies to provide a specific date in which a mark was first used in the marketplace. The best way to document "date of first use" is to keep copies of first customer invoices and payments, and to take out low-cost classified advertisements in print newspapers, both of which create a paper trail that will hold up in court. The more documentation entrepreneurs have in their intellectual-property war chest, the better.
7. Yes, you can file a trademark application early.   You can file a trademark application on a brand that you intend to use, but is not yet ready for commercial sale. The trick here is to make sure you keep track of future filing obligations.
8. No, you don’t need a lawyer for the initial filing.   Once you have settled on a brand name and product classifications, you don't necessarily need an attorney to file a trademark application with the USPTO. You can file the application yourself through the USPTO's Web site. If I can follow the online instructions and ultimately receive two trademark registrations without the help of an intellectual-property attorney, so can you. The filing cost runs from approximately $275 to $375 per application.

Some further thoughts

While I am an advocate of bootstrap entrepreneurship, there always is a time to consult professionals. Use the do-it-yourself approach to business building when you can save money. However, don't hesitate to call an intellectual-property attorney for application filing if your own uncertainties are likely to cost your company more money down the road.

Also, involving an attorney is almost a must if you pursue a trademark that is similar to and or potentially in conflict with one being used or sought by another party. Reread tip No. 4.

Lastly, trademark rights and benefits vary from country to country. If your company is based outside the United States, you will want to seek local counsel and/or investigate the trademark rights for that country.

About the author   Susan Schreter is a Seattle-area investment banker and venture-funding expert serving startup entrepreneurs and fast-growth company executives. She also teaches business financing and entrepreneurship at business schools, angel forums, and microfinance organizations in the United States and internationally. Write to Susan at susan@takecommand.org.