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Help with trademark information

From: Kayla

Dear Jessica, I hope you will answer this because I need advice and don't know where to turn. My husband really wants to go into business for himself. He is a horse trainer (and a major fan of yours by the way) and has been teaching me to work with horses ever since we were married ten years ago. He has a good system of getting horses trained for places like summer camps and dude ranches and other group-ride sorts of places. His horses are calm and pretty much bombproof. His best buddy used to be a mounted patrol officer, and his system has a lot of that kind of work in it, the kind of horse-training they do with police horses, I mean. Anyway, my husband is getting ready to retire and wants to do this training full-time, with me as his partner. I really love the idea, and we have a name picked out and we want to get a trademark for it. I don't want to say what it is, because we don't have a trademark yet, well I guess that's obvious from my question!

So, would you mind telling me, or really us, about how you got your trademark and if it was hard to get, what you had to do, and if it was real expensive, and what you have to do to keep it? What is the difference between the little R with the circle around it, that you have, and the TM that I see everywhere? Is one of them cheaper than the other? Which one is better? I also want to know what to do if someone else tries to use our trademark, when we get it that is. Do we need a full-time lawyer? I hope not because we can't afford that! Or is the "trademark protection", I think it's called, something that Ed and I could do ourselves? And what would happen to us if it turned out that somebody else already registered "our" trademark first???? Since you have a trademark (we think that "Holistic Horsemanship" is just awesome), and we're sort of in the horse business too, I thought you would be able to help us better than anyone. We would both be so grateful for just any advice or suggestions you could give us, and even if you don't answer this question we will always be fans of yours. You're the best! Kayla and Ed


Hi Kayla (and Hi, Ed!)!

Thanks for the kind words, and I hope I can be of some help here.

As far as I know, the process of getting a trademark hasn't changed since I got mine, so I can at least tell you what I know from my own experience. We're talking about intellectual property rights, which can be tricky, but here's what I know. ;-)

First, you'll need to decide what combination of words, or words and logo, will best describe your product and/or service.

Then you'll need to do a search to find out whether anyone else has already registered that trademark (or service mark). This is really important, and so many people just don't do even the most basic "homework". You'll need a lawyer later on in the process, but at this point, don't waste a lawyer's time and your money. By searching the Internet using a variety of search engines, and by searching various print media, you'll be able to find out whether someone else already has "your" name. If so, you'll need to go back to the drawing board, so to speak. It's illegal to use someone else's registered trademark, so if you were thinking of using a clever, catchy trademarked name that you noticed on someone else's sign or letterhead, don't do it.

If your search comes up empty, that's good - it means that you're ready to go to the next step. Check your state registrations, then check federal registrations - you need to know whether that mark is registered anywhere, AND you need to know whether someone else has applied to register it! If your trademark search with the PTO (the US Patents and Trademarks Office) comes up "empty" - meaning that nobody else has already registered the name you want - then you're ready to bring a trademark lawyer into the picture. Your own lawyer will probably know someone - maybe even at his own firm - who specializes in trademark law.

Your lawyer will help you apply for tradmark registration. The process takes about a year from start to finish, and you can't be sure about the outcome until the process is complete, so don't run out and order signs and letterhead and bumper sticker and T-shirts until you are quite certain that YOU own the trademark. Oh yes, and there's money involved, roughly $350 I think, as well as whatever amount your lawyer bills you for his time. But if all goes well, you'll get your trademark - and it will be good for ten years.

Once it's yours, you'll have to meet certain requirements of the PTO. First, you'll have to file an affidavit of use sometime between the fifth and sixth year after the initial registration. Then, you'll need to file another affidavit of use before the end of the first ten years, and you'll also need to file a renewal application. Each renewal will have a ten-year term.

You'll also have to defend it, with or without (preferably with) the help of a lawyer. More about this later.

Once you've established your trademarked name, it will come to be identified with YOUR particular product or service. In your case, that would be a particular method of training and desensitizing horses.

Having a trademark means that you have the exclusive right to your "brand name" - whatever it is. Let's say that yours is "Easy Riders". You'll find that the better-known you become, and the more people want horses trained the "Easy Riders" way, the more often someone will try to copy your brand.

There will also be people who aren't consciously and deliberately copying you - they really did "think up" the name, "Easy Riders", on their own, and just started using it, without doing even a cursory search to find out whether that name belonged to anyone else. This is where trademark law comes in, and this is where your lawyer will come in.

If someone in your state or another state is using the name "Easy Riders", you can make them stop using it IF there is any possibility that the public could become confused. In other words, if someone else starts using "Easy Riders" to describe their horse-training system, or their riding instruction system, or their camp riding program, or anything else like that, you can make them stop. After all, they are - deliberately or not - taking advantage of you and the professional reputation and goodwill that YOU have built up for YOUR trademark. The longer you have had the mark, and the longer you have spent building your reputation, the more the trademark means and the more valuable it is. Trademarks are commercial source indicators.

If, on the other hand, their product is surfboards or skateboards, or air shocks for motor vehicles, then you can't make them stop using the name, and you shouldn't even try, because nobody is going to be confused by it.

Now, about YOUR trademark... It's best to do a comprehensive search and then think of another mark if the one you want is identical to or even very similar to another person's or firm's mark.

The R in the circle means that the mark is registered with the PTO. It's illegal to use this symbol unless the mark really IS registered. If you've applied for registration but your mark is not yet registered, you can use "TM" or "SM" (for service mark), but this doesn't really mean much, as many people slap a "TM" onto a name without having any intention of going through the registration process.

That's silly behaviour, really. It's better to go to the expense and trouble of registering your mark. It will keep some people from copying you - when they do a search before trying to use a particular name, they will find that your name is trademarked. It will make it possible for you to make other people - ones who want to use the name anyway, and try to coast on your professional reputation - stop using a mark to which they have no right. And, if needed, you'll also have legal recourse - according to my understanding of the law, trademark registrants (that would be YOU) can bring suit in federal court - and can recover not just damages, but TRIPLE damages under some circumstances.

You can also use the fact that you are the registrant of the trademark to establish your right to domain names - so that someone else in the horse world would not be able to keep "EasyRiders.com" even if they had registered it somewhere (on the other hand, if they are selling shoes or motorcycles or surfboards, they could keep the domain name!).

Defending your trademark will be part of your life from now on, for as long as you want to keep the trademark and your business. Whenever someone else in the horse industry uses your trademark without your endorsement or permission, you will have to act.

Defending a trademark isn't fun - it means that you, or your lawyer, will be sending strongly-worded "cease and desist" letters to those who infringe on your mark. But here's the thing: YOU HAVE TO DEFEND YOUR TRADEMARK IF YOU WANT TO KEEP IT. You HAVE to defend it. You can't afford not to defend it.

The letters may be all that's needed - many people who didn't really understand what they were doing will back off, change their own advertising, and stop infringing without any more action required. Some may persist. In that case, you can obtain an order requiring the infringer to stop using the mark they are using, whether it's identical to yours or just confusingly similar. Under certain circumstances, a court may even order the infringer to issue corrective advertising! As long as your trademark is registered, you'll be able to stop the "copycat" practice, and you may also recover profits, damages (possibly even triple damages) and costs from the infringer - and, for that matter, you may also recover your lawyer's fees!

You'll need to police your trademark - keep doing searches, at least on the Internet, for as long as you hold that trademark. I believe that there are also some services that will do regular searches on your behalf, and report to you whenever they find that your trademark is being infringed.

If you're lucky, other people will help you even without being asked. One good thing about having a strong, widely-recognized trademark is that people WILL get in toucdh with you when they see it being infringed. I have a file of letters and e-mail notes from people who write to me to say "I thought you ought to know that so-and-so is using "Holistic Horsemanship" in his/her advertising". I also have a few letters from people saying "Person X says that s/he is a Holistic Horsemanship practitioner, did you actually train this person, did the person study with you, does this person have your permission/endorsement? And by the way, the answer is NO - I have not yet certified ANYONE as a "Holistic Horsemanship" teacher or trainer. If and when I do, those people will have permission to use the term - but as of now, nobody has such permission - and I VERY much appreciate the letters and notes and calls from people who notice infringements of my trademark.

Infringement can, in some cases, have an unexpected benefit - in my case, it has allowed me to "meet" people with similar interests! So far, almost all of the people who have infringed on "Holistic Horsemanship" have responded quickly and politely. Most of them have proved to be very nice, honest, well-meaning people with whom I have interests in common, and who simply had no idea how trademarks worked and what the legal implications were. I'm still in touch with most of them, in fact. In the last year or so, though, time constraints and a growing number of infringement incidents have made it impossible for me to follow up on most reports in person. I've just been passing the information on to my lawyer and letting him deal with it, and you may get to this point, too. The important thing to remember is that legally speaking, it makes no difference whether someone is deliberately trying to benefit from your registered trademark, or whether someone is a lovely person who had no idea that your trademark existed, but just loved the sound of the words and didn't bother to do any searching at all, anywhere, before putting the trademark all over his or her advertising, website, etc. There may be a difference to YOU - emotionally - but you are equally required to defend your trademark in both situations. It's a legal matter, not a personal one.

If all this is making you want to get onto the 'Net and do a search, after you've searched your mark with the usual search engines, try the US PTO - there's a special database just for Trademark Applications and Registrations Retrieval (TARR) at http://tarr.uspto.gov. You'll be able to find out whether anyone else has registered or is in the process of applying to register the mark that you want to be "yours".

Good luck - hope this helps! Do consult a trademark lawyer, though - I can't promise that I remembered all of this perfectly or even had it exactly right in the first place. I'm not a lawyer, much less a specialist in trademark law, I'm just a trademark holder. ;-)

Jessica

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