Trademarking a name

Ye' old general discussion board. Basically, for everything that isn't covered elsewhere. Come here to shoot the breeze, shoot your mouth off, or whatever suits your fancy.
This forum is not for asking programming related questions.

Moderator: General Moderators

Post Reply
alex.barylski
DevNet Evangelist
Posts: 6267
Joined: Tue Dec 21, 2004 5:00 pm
Location: Winnipeg

Trademarking a name

Post by alex.barylski »

I have heard that if I wanted to trademark a name I could do so by writting a letter to myself thus proving I was first to get there...

By writing a letter to myself, I mean sending it through the postal service so it's basically timestamped and legitimate in court...

Comments?
User avatar
Chris Corbyn
Breakbeat Nuttzer
Posts: 13098
Joined: Wed Mar 24, 2004 7:57 am
Location: Melbourne, Australia

Re: Trademarking a name

Post by Chris Corbyn »

Hockey wrote:I have heard that if I wanted to trademark a name I could do so by writting a letter to myself thus proving I was first to get there...

By writing a letter to myself, I mean sending it through the postal service so it's basically timestamped and legitimate in court...

Comments?
Yes, that's correct. Don't open the letter though.
alex.barylski
DevNet Evangelist
Posts: 6267
Joined: Tue Dec 21, 2004 5:00 pm
Location: Winnipeg

Post by alex.barylski »

I should also ask...

What exactly constitutes a trademark?

For example, I have a name...let say...

SPEED and it's an acronym which stands for:

Sexy Programming Expedite Engine Driver

I want to trademark SPEED...but obviously it's to common to trademark in a general sense...

So do I have to specify what it stands for and what industry it applies too???

Often when I do a google search I see many companies trademark similar names...but most if not all are in different industries with a slight twist on the trademark...

Smarty for instance was trademarked...but how...it's a common name which I am sure someone else has used before them...so is it only not allowed to start a PHP library with the name Smarty???

Comments?
Roja
Tutorials Group
Posts: 2692
Joined: Sun Jan 04, 2004 10:30 pm

Re: Trademarking a name

Post by Roja »

Hockey wrote:I have heard that if I wanted to trademark a name I could do so by writting a letter to myself thus proving I was first to get there...

By writing a letter to myself, I mean sending it through the postal service so it's basically timestamped and legitimate in court...
Wrong.

That action is called "The poor man's copyright", and is for copyright claims. Trademark claims do not work the same way. Notably, if someone else (Pepsi?) went through the trouble of registering their trademark through the trademark office, your "poor man's copyright" wouldn't hold any weight in a court claim - even if you did it 'first'.

Even more importantly, trademark has the concept of public use. So for example, even if you registered your trademark (but did not use it, nor defend it), the court could claim that the widespread public use of that mark by a competitor was the clear and recognized holder.

Its very messy, and thats not all. In addition, to register a trademark, you have to choose a category in which to do business. (You can in fact choose multiple, but that costs extra). If you chose electronics, and later went into music sales, you could be sued by another (arguably less well-known) trademark holder in the music business. Thats whats happening with Apple Computers v. Apple Music. (The full details would take whole books to explain, so I'm seriously not doing it justice. Regardless, the principle matters).

IF, and only if, you really want a trademark on your name, then the proper method is to do a trademark search (TESS will be a solid start). Then search through trade publications, news articles, and so forth. This is called "due dilligence", and you can and probably should hire someone to do it for you (a lawyer).

Then you have to file your trademark application with the Federal Government. That costs money, takes time, and is often rejected. The official "party line" is that well-researched applications are rarely rejected, but I've heard numbers as harsh as less than 10% of applications make it through. Your mileage may vary, and each new attempt costs you.

It is important to note that unlike copyright, in which you can grant specific use, and unlike patents, in which you can selectively enforce them, in trademarks, you have to be eternally vigilent. So if you have a competitor that starts doing business as YouCo, and you've been using that trademark, you can lose it if you do not enforce it.
Hockey wrote:Smarty for instance was trademarked...but how...it's a common name which I am sure someone else has used before them...so is it only not allowed to start a PHP library with the name Smarty???
Actually, they do not have a trademark on the term Smarty. They claim so, and hope by doing so, and consistently enforcing it, that it will obtain trademark status by default. ie, if I were to try to register that trademark, they could attempt to defend against my trademark by saying that they've been actively using it for years. Then the court will be forced to weigh not only my application (which clearly didnt do a solid tm search prior to submission), but also the general use in the industry, the timing of both, and the likely impression by the general public.

If you do a search on "Smarty" at TESS, you will see that they have not in fact received a trademark.

Trademarks are an incredibly difficult legal status to obtain, maintain, and enforce, and I highly recommend that you get a lawyer if you want to persue it. If you can't afford a lawyer, I virtually guarantee you cannot effectively keep and maintain your trademark.
User avatar
RobertGonzalez
Site Administrator
Posts: 14293
Joined: Tue Sep 09, 2003 6:04 pm
Location: Fremont, CA, USA

Post by RobertGonzalez »

Well said. I found all this out over the course of several weeks when I was researching copyrights, trademarks, sloganrights and patents. Each one is different, enforcement of each is different and the success rate of acquiring each one is different. Where was this post four years ago? :)

I have heard, when it comes to business plans, that you can use a "poor man's copyright" as a means to offer a slight layer of non-compete protection when seeking funding, although I would never rely on anything less than a full legal right to the material and it's use when it comes to something that you may be staking your entire business identity on.
alex.barylski
DevNet Evangelist
Posts: 6267
Joined: Tue Dec 21, 2004 5:00 pm
Location: Winnipeg

Re: Trademarking a name

Post by alex.barylski »

d11wtq wrote:
Hockey wrote:I have heard that if I wanted to trademark a name I could do so by writting a letter to myself thus proving I was first to get there...

By writing a letter to myself, I mean sending it through the postal service so it's basically timestamped and legitimate in court...

Comments?
Yes, that's correct. Don't open the letter though.
:lol: :lol: :lol:

I duno man...I don't hardly get mail as is...so in excitment I might open it by accident :P
alex.barylski
DevNet Evangelist
Posts: 6267
Joined: Tue Dec 21, 2004 5:00 pm
Location: Winnipeg

Re: Trademarking a name

Post by alex.barylski »

Roja wrote:
Hockey wrote:I have heard that if I wanted to trademark a name I could do so by writting a letter to myself thus proving I was first to get there...

By writing a letter to myself, I mean sending it through the postal service so it's basically timestamped and legitimate in court...
Wrong.

That action is called "The poor man's copyright", and is for copyright claims. Trademark claims do not work the same way. Notably, if someone else (Pepsi?) went through the trouble of registering their trademark through the trademark office, your "poor man's copyright" wouldn't hold any weight in a court claim - even if you did it 'first'.

Even more importantly, trademark has the concept of public use. So for example, even if you registered your trademark (but did not use it, nor defend it), the court could claim that the widespread public use of that mark by a competitor was the clear and recognized holder.

Its very messy, and thats not all. In addition, to register a trademark, you have to choose a category in which to do business. (You can in fact choose multiple, but that costs extra). If you chose electronics, and later went into music sales, you could be sued by another (arguably less well-known) trademark holder in the music business. Thats whats happening with Apple Computers v. Apple Music. (The full details would take whole books to explain, so I'm seriously not doing it justice. Regardless, the principle matters).

IF, and only if, you really want a trademark on your name, then the proper method is to do a trademark search (TESS will be a solid start). Then search through trade publications, news articles, and so forth. This is called "due dilligence", and you can and probably should hire someone to do it for you (a lawyer).

Then you have to file your trademark application with the Federal Government. That costs money, takes time, and is often rejected. The official "party line" is that well-researched applications are rarely rejected, but I've heard numbers as harsh as less than 10% of applications make it through. Your mileage may vary, and each new attempt costs you.

It is important to note that unlike copyright, in which you can grant specific use, and unlike patents, in which you can selectively enforce them, in trademarks, you have to be eternally vigilent. So if you have a competitor that starts doing business as YouCo, and you've been using that trademark, you can lose it if you do not enforce it.
Hockey wrote:Smarty for instance was trademarked...but how...it's a common name which I am sure someone else has used before them...so is it only not allowed to start a PHP library with the name Smarty???
Actually, they do not have a trademark on the term Smarty. They claim so, and hope by doing so, and consistently enforcing it, that it will obtain trademark status by default. ie, if I were to try to register that trademark, they could attempt to defend against my trademark by saying that they've been actively using it for years. Then the court will be forced to weigh not only my application (which clearly didnt do a solid tm search prior to submission), but also the general use in the industry, the timing of both, and the likely impression by the general public.

If you do a search on "Smarty" at TESS, you will see that they have not in fact received a trademark.

Trademarks are an incredibly difficult legal status to obtain, maintain, and enforce, and I highly recommend that you get a lawyer if you want to persue it. If you can't afford a lawyer, I virtually guarantee you cannot effectively keep and maintain your trademark.
If you do a search on "Smarty" at TESS, you will see that they have not in fact received a trademark.
Good enough...according to a document I just read, in Canada a trademark is legally yours after one year in business...

I'm golden...sorta :P
User avatar
Maugrim_The_Reaper
DevNet Master
Posts: 2704
Joined: Tue Nov 02, 2004 5:43 am
Location: Ireland

Post by Maugrim_The_Reaper »

Good to note national laws differ (often significantly) from US law. ;)
User avatar
feyd
Neighborhood Spidermoddy
Posts: 31559
Joined: Mon Mar 29, 2004 3:24 pm
Location: Bothell, Washington, USA

Post by feyd »

It should be noted that trademarks in a country are usually not recognized by other countries.
Roja
Tutorials Group
Posts: 2692
Joined: Sun Jan 04, 2004 10:30 pm

Re: Trademarking a name

Post by Roja »

Hockey wrote: Good enough...according to a document I just read, in Canada a trademark is legally yours after one year in business...

I'm golden...sorta :P
Actually, thats not entirely accurate. Much like in the US, the burden of proof is on you. If someone else registers it, they have the presumptive claim, and you have to prove that you were using it before they were, and more widely than they were. Worse, even if you can prove your claim, its only valid for the specific geographic territory where you can prove you've used it - which usually is extremely limited.

Going through the process of trademark registration is substantial protection. Not doing so is the equivalent of "hoping for the best". Perhaps it will work out, but its certainly not the safest choice.
User avatar
R4000
Forum Contributor
Posts: 168
Joined: Wed Mar 08, 2006 12:50 pm
Location: Cambridge, United Kingdom

Post by R4000 »

poor mans copyright is valid and can be used, but not for trademarks, as its called poor mans copyright.

You dont even need to post it to yourself :D

Just take it down to ur local post office (in the uk anyway) and ask em to stamp it.

They'll proberly say no, but if u pay for a 1st class stamp then they cant really refuse (ive done it a few times)
User avatar
Jade
Forum Regular
Posts: 908
Joined: Sun Dec 29, 2002 5:40 pm
Location: VA

Post by Jade »

R4000 wrote: They'll proberly say no, but if u pay for a 1st class stamp then they cant really refuse (ive done it a few times)
Best 39 cents you ever paid for!
Roja
Tutorials Group
Posts: 2692
Joined: Sun Jan 04, 2004 10:30 pm

Post by Roja »

R4000 wrote:poor mans copyright is valid and can be used, but not for trademarks, as its called poor mans copyright
Thats not quite true. It can be used for trademarks. The method is commonly used for copyright, but the concept is simple: Verifiable proof that you had an idea first.

It simply doesn't carry much weight when it comes to trademarks. Copyright and Patents, on the other hand, it helps tremendously with. Doesn't mean you can't use it in a trademark defense.. its just not much ammo.
Post Reply