2by Stephan Elias & Kate McGrath 1999, Fourth Edition, 340 pages, $34.95, ISBN 0-87337-519-X. Published by Nolo Press
If you are involved in a business start-up or working toward that goal, this book is a must read for three good reasons.
Number one is that the selection of a good product or business name, logo, or slogan is vital, not only at the start, but it may contribute tremendously over the future years to your success.
Number two is that many start-ups are on a tight budget and the knowledge you will gain by reading this book may enable you to greatly reduce your legal costs with regard to establishing a trademark. Also, you will be more able to avoid the very expensive situation that can result from carelessly stepping on someone else's trademark.
Thirdly, we are now in the midst of a business opportunity explosion arising from the arrival of the Internet. This book, now in its fourth edition, explains simply and clearly the possibilities of using your distinctive name as a domain name on the World Wide Web to attract customers worldwide.
The authors start by answering 20 frequently asked trademark questions. For example: Can I do the application myself or should I hire an attorney"? The answer is "Most people can handle their own trademark applications without an attorney". However, the authors do note there are several situations where you should consult an attorney.
The first chapter points out that one of the fundamentals that guide the selection of trademarks is that trademark disputes that land in court are most often decided on the basis of whether customer confusion would result. This may not only involve appearance, but also sound and meaning.
Another consideration is whether the "dilution doctrine" is involved. For example, owners of a famous mark may sue you even though customer confusion is not the issue. You should not, for example, call your cupholder a "Kodak Kup Holder" to get attention. The film people will say you are diluting the strength of their mark by "blurring" and "tarnishing" their reputation.
Don't take the selection of a distinctive trademark lightly. The book notes that the current average cost of a trademark litigation is $110,000!
How can one predict if their mark can cause a "likelihood of confusion"? The writers suggest that art rather than science dominates in most court cases. They give seven questions you should ask yourself when selecting a mark.
Two whole chapters deal with preparing for and how to do a trademark search. Just as in patent searching, some may say why bother, won't the trademark office do it for me? One immediate answer is why blow away the time and cost of an application when a simple library search or Internet search may quickly kill a name.
The book describes in detail how to use Patent and Trademark Depository Library (PTDL) resources to do your search. The addresses of 80 libraries in the USA that have this resource available are given. Also, it details how to use the Internet to connect to the Patent and Trademark Office Web Trademark Database. The review of existing trade names may inspire you toward a new and truly distinctive name.
If you feel you would prefer to have a private company do your search, the book gives the current fee schedule of two firms. It also gives as a sample a report by a firm that they themselves used to do a trademark search.
A chapter covers the requirements for registering a trademark with the United States Patent and Trademark Office (PTO). It notes attorneys are seldom needed. A simple form, (about an hour to complete), a $245 fee (as of May 1999), and samples of how the mark is used, will do it. There are specific requirements that must be met, especially with regard to the "drawing". The chapter gives the details and gives the phone numbers for seeking help at the Trademark Office.
Another chapter covers how to use and maintain your registered mark. It advises you must "use it or risk losing it". Two years of non-use usually proves abandonment. Five years of continuous use, after registration, without it being challenged, usually makes it incontestable (well, harder to contest).
What if someone infringes on your mark? The authors give a sample of a letter you could send the infringer and they caution about setting deadlines and making threats. Five negotiation strategies are given. Due to the high cost of litigating in federal court (trademark lawyers $200 per hour, $40,000 a month; typical lawsuit $120,000!) you may want to try arbitration. But even here, one must be aware of the risks involved in binding arbitration.
The book is crammed full of real-life examples and case citations dealing with famous marks, weak marks, strong marks, etcetera, and with up-to-date information on domain name registration. The appendix contains full-size tear-out forms needed for registering your trademark.
The appendix provides lists of U.S. and International Classes for Goods and Services and state trademark agencies and statutes.
This book lives up to Nolo's reputation for providing easy to understand self-help legal aids. As their slogan states, "Don't feed the lawyers, just say Nolo".