In 1998, Robert Miller decided it was time he registered the name of his family’s then 4-year-old store with the U.S. Patent and Trademark Office.
The manager of Thinker Toys, an educational toy store located in Fairlawn’s West Market Plaza, envisioned at one point starting a mail-order Web site, and he knew the move would take the store name into areas far beyond its sole west Akron location — areas where other entrepreneurs might adopt the catchy moniker as their own.
As it turned out, someone already had.
Local intellectual property attorney Roger Emerson discovered the proprietors of a California toy store had beat his client to the punch by submitting an application to register the same name a mere two months earlier. Common law, he explained to Miller, entitled the family to use the name in the Akron area — and, if it was found they had used it on their Web site before the California counterpart, in the rest of the country as well.
“Trademark rights are based on who used the trademark first and, secondly, in which geographic location the trademark was used,” Emerson says.
There’s even a 5-year period between the time a registration is issued and the time it’s deemed incontestable, when anyone believing they have a claim to the name in question can petition to have the registration canceled.
In the end, the family contented itself with retaining the rights to the Thinker Toys name in the Akron area alone.
“We just decided it was easiest to leave it at that just because of the expense,” Miller, now 25, says. “Roger was very straightforward about it, that this was not going to be an inexpensive [thing] for us to do.”
The cost of going to court, he adds, could well have put the toy store out of business.
The problem is a growing one, thanks in part to the Internet explosion. Businesses with identical or similar names that once operated within different geographic areas, blissfully unaware of one another because of the miles that separated them, are now bumping into each other in cyberspace.
“Once you hang your page up on the World Wide Web, you no longer have little strip mall jurisdictions,” says John Garred, an intellectual property and patent lawyer at Arter & Hadden in Cleveland. “You have broadcast that trademark to virtually everybody in the world.”
Problem can often be avoided by researching and registering a trade name (the name by which a business is known), trademark (a word, symbol or slogan identifying a good or service), and/or domain name (commonly known as a Web site address) with the U.S. Patent and Trademark Office and securing rights to it, preferably before going into business.
“Most people think of a name they like for their store or for their product, and they just adopt it,” Emerson says. “They don’t do any checking at all to see if it’s available.”
Business owners can do the work themselves by logging onto the U.S. Patent and Trademark Office’s Web site at www.uspto.gov, where visitors can access the office’s database to see if the trade name, trademark or domain name in which they’re interested is available. It also allows them to fill out an application to register it online. (Registration packets can also be obtained by calling the Trademark Assistance Center at (703) 308-9200.)
Garred suggests amateur sleuths also check local trade directories, telephone books, Yellow Pages, and other resources to make sure the name they’re considering isn’t already being used by someone who hasn’t registered it.
According to Jessie Marshall, an attorney adviser in the Arlington, Va., office of the U.S. commissioner for trademarks, the federal government charges $325 to file an application. It takes four to five months for an examining attorney to review the application.
Emerson does the job for $850 — $250 to do the research and prepare an availability opinion and $600 to prepare and file an application — a price he regards as standard in the area. He allows that most people can conduct an adequate search of the trademark and patent office’s Web site database on their own; in fact, he highly recommends doing a self-search to those who cannot afford a professional’s services.
However, he points out that most people do not have access to all the databases, some of which require a membership or fee, that he and other attorneys use. And Marshall says private search firms peruse state records, corporate filings, “any kind of commercial listing they can.”
Emerson believes many people do not have the knowledge and experience to interpret their results — for example, whether the name chosen for a new business or product is too similar to an already-registered counterpart for legal comfort.
“That’s usually where the attorney is providing the value,” he says.
He refuses to interpret information submitted by clients, mainly because he fears it is incomplete.
For those who can only afford to register one item, Garred suggests registering the name of the main product or service in block letters with a thorough description of basic goods and services. He explains that logos and slogans come and go and, in many cases, consumers are infinitely more familiar with the name of a product or service than that of its manufacturer or provider.
Also at the top of the to-register list is the domain name, along with any common misspellings. It is far more expensive to obtain a domain name already registered by someone else, he points out, than simply registering it first. And the sooner a business starts a Web site with that domain name, the better.
Business owners with cash to spare may want to consider registering what Garred refers to as “pejorative alternates” to the domain name. Common examples include yourdomainnamesucks.com and yourdomainnameblows.com.
“It’s not unusual for someone to post a whole Web page as to why your product’s so horrible,” he says. “It happens all the time.”
Marshall stresses that the U.S. Patent and Trademark Office does not dispense legal advice or wield enforcement powers. It is up to the owner of the registration to police and take action against anyone who uses his/her property. But she calls the federal registration “a huge piece of ammunition” in the fight to defend one’s right to a name or mark.
“A cease-and-desist letter to a later user saying, ‘I have a federal registration for this mark, so back off,’ means a lot more than, ‘I used it before you,’” she says.
How to reach: Thinker Toys, (330) 665-3860; Roger Emerson, (330) 535-9999
