Craig Morris is the managing attorney for the U.S. Patent and Trademark Office (USPTO) and a sort of evangelist who travels the country sharing information about the trademark application process with entrepreneurs, small business owners and students. As a part of this effort, Craig recently traveled to Dallas to give his presentation at The DEC.
Prior to his presentation, I spoke to him about the USPTO’s outreach program and some of the finer points of the trademark application process that might be especially important for entrepreneurs and startups to understand.
I left our discussion feeling more informed but also remiss in my diligence as a business owner for not applying for registered trademarks for my own brand. It became apparent from our talk, however, that many small business owners find themselves in exactly such a position.
Craig explained my situation was a common pitfall: “Some people think, ‘I have my business name registered, that’s all I need.’ Or they say, ‘I already have my domain name registered.’ Those do not give you trademark protection,” he said. “The standard for a business name registration or a domain name registration is basically, ‘Is there anyone who has something identical to me?’ The slightest variation, and multiple people can get those. Trademarks [focus] on similarity, so we look [to see if] the marks are confusingly similar and if they are used for related goods and services.”
He continued, “Just because you were able to get a business name registration doesn’t mean you’ll be able to get that registered for a trademark.”
Which lead me to ask if he recommended filing a trademark application as soon as a new business name has been registered and if the same consideration applied to branded images such as logos.
“A mark can consist of word elements alone, of design elements alone, and it can have both word and design elements,” he replied. “That all comes down to money, honestly. If you can only do one filing and all of that is important to you, then you’re going to do both the design and the words [as one trademark].
Someone like Coca-Cola has the money to file for every single variation. If you can only do one thing, then you’d want to do the one that protects both the design and the words. Then later on you can say ‘I’m not sure I’m always going to use this design,’ and you can follow up and do just the words alone.”
It turns out that Coca-Cola is Craig’s go-to example for why trademarking is important, which makes sense, because who has more brand power than Coca-Cola? He tells the same anecdote at every presentation, because it so clearly illustrates the message.
The story goes, “An executive of Coca-Cola was asked, ‘What do you consider your company’s most valuable asset to date?’ He said, ‘Without question, it’s our registered trademark. We could actually lose everything we have as a company and be able to build our brand again as long as we still had that registered mark.’ That’s one of the top brands in the world.”
He continued, “Now, will most businesses we’re dealing with here reach the level of Coca-Cola? Probably not. But they still have to be thinking in those terms. When someone thinks of an asset, they’re thinking of something more tangible; but a trademark is actually a very valuable business asset and people need to understand that to be successful.”
All of this made perfect sense; but to play devil’s advocate I asked, “What would happen if you don’t register your business name or other trademarks?” His answer shows why the topic of trademark infringement is such a gray area and, ultimately, why disputes are always resolved by the court system.
“One thing to understand,” Craig explained, “In the United States, there’s no [legal] requirement that you register a mark. Through use alone you can get what is known as common law rights. Common law rights can be very strong, but they will never give you the benefits of federal registration.
When you get that registration certificate, that gives you prima facie evidence that you are the owner of that trademark, in the entire United States. Common law is based just in the territory where you are using the mark, so you get something more valuable through a federal registration.”
Moreover, he emphasized, “It also gives you the right to go into court and present that registration, and a lot of judges will look on that very favorably. If you run into a situation where, for example, you know of counterfeit goods coming into the country, you can present that certificate to Borders and Customs Patrol and they can keep those goods out. But they need a reason to do so.”
“It also gets you into our database,” he said, which means that if someone is thinking of adopting a similar trademark, your trademark can be easily found in a search of the TESS (Trademark Electronic Search System) where your ownership is already established.
Confusion about trademarks and the registration process has lead many small business owners to make unfortunate mistakes, either in establishing their trademarks incorrectly or unintentionally infringing on another trademark. These mistakes can be costly and occasionally fatal to a business.
All too often, a small business owner will unknowingly tread on the trademark rights of another company and receive threatening cease-and-desist letters as a result. Those letters eventually become even more threatening notices from law firms representing the trademark owner and, if unaddressed, will ultimately drag the parties into expensive litigation. These situations have become common and many of those small business owners have resorted to contacting their representatives in Congress about “aggressive litigation tactics” and bullying. Congress responded by mandating the USPTO provide an outreach program to educate small business owners, entrepreneurs and future generations about how to operate within the law and to protect themselves and their brands.
“Initially it sounds bad,” Craig explained regarding the David and Goliath situation of small business owners and trademark infringement.
“But when you look at it, it’s the right and responsibility of any owner of a trademark to take what steps are necessary [to protect their trademark]. And yeah, sometimes it’s a big guy going after a little guy. We realized that sometimes the little guy will adopt a trademark that is simply too close to another mark, not out of any ill intent, but because he doesn’t know anything about trademarks.
Historically, my office simply sat back and waited for an application to come in. We realized that we should be proactive. We should help these people understand what a good trademark is and educate them up front, so when they file, they’re more likely to be able to register the mark. So our eyes were kind of opened. In turn, we wanted to open the eyes of other people. That’s why we launched this.”
When I asked how he felt about the results of the outreach program, Craig shared that it was difficult to gauge results on a national level, but that the individual feedback he receives gives him the sense they’re having a positive overall effect.
“On a one-on-one basis…I know I’ve been successful because I get positive feedback. It’s been a little different, for the bigger program, to gauge the success because I’ve not necessarily had the opportunity to hear back from everyone. So we’re kind of still grappling with how to measure the metrics of success.”
He went on to say that most people look at the trademark application process with trepidation because of its complexity. However, Craig stresses that beyond their outreach program, the USPTO has also provided a wealth of information and a variety of ways to get educated on its website.
“We have print materials [for] download, we have instructional videos… I think when people see that we really are trying to be helpful. They say ‘You know, I think I may actually be able to do this.’
With that said, we actually do recommend that a trademark attorney be used, as it is the beginning of a legal proceeding. But there is no requirement that an attorney be used, and I think that if someone is willing to take the time to study and make some thoughtful decisions, he or she can be successful on their own.”
Feeling a little overwhelmed, I asked, “Any you aware of any services that might help someone go through the application process if they don’t have the money for legal services?”
Craig smiled and said, “Start right here. Not only with this event, but it is my understanding that monthly, [The DEC] invites IP attorneys from the Dallas community to come in and offer their time and offer their services free of charge, just to give information.“
“There is also the Patent and Trademark Resource Center [and the] Trademark Assistance Center, where you can call for information.”
Just know that as government-sponsored agencies, these offices are not permitted to give legal advice but can provide enough background information for you to make more informed choices.
“What we find is,” he says, “a lot of people, because the process is deceptively simple, they’ll start the process on their own, get into trouble and then realize that they need to hire an attorney. It becomes more expensive because at that point, if you had used the attorney at the beginning, they would have filed a better application. Also there are some mistakes that cannot be fixed. And a lot of people think they are buying a trademark, but no, you’re applying for registration. You’re not guaranteed actually getting anything.”
I asked if in his experience people trying to apply for registration without an attorney were likely to face an uphill battle and if he recommended always filing through a lawyer.
“Yes. It’s not insurmountable, but it is more likely that there will be mistakes when you do it on your own. And again, the bigger aspect is that some mistakes are fatal.” He explained that some mistakes would require starting over with a new application and paying the fees again.
I thanked Craig for sharing his wealth of knowledge and experience, and asked what he felt were the appropriate first steps for startups and small business owners to take when applying for a registered trademark.
“You want to do some preliminary research and maybe a preliminary search [of TESS]. To [be able to] say ‘Okay, this is what I know, now can you connect the dots and fill in the gaps for me?’ when you speak with an attorney. This will help reduce legal fees and still provide the opportunity for the attorney to help you build a stronger trademark application that is more likely to be approved.
Nathan Binford, the author of this post, has spent the last 16 years working closely with startups and small businesses as a writer, developer and marketer. Nathan contributes to a variety of blogs, including this one. His views are his own, but resources for this post were provided by The DEC and Speakeasy (a partner of The Dallas Morning News).
The post What Startups Need To Know About Trademarks: An Interview with Craig Morris at The DEC appeared first on The Dallas Entrepreneur Center.
