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How to Trademark Your Business Name or Patent Your Product * Women's Wall Street
By Kimberly L. McCall
©2005
Melinda Lee, who claims the title "chief energy enhancer," runs Spoga International, a company offering 30-minute yoga programs intended to integrate mind, spirit and body. Now, you can't walk three steps in a major burg without stumbling across a yoga studio, so why did Lee feel compelled to trademark her unusual business name? "I base my entire business on the uniqueness of Spoga," explains Lee, who also markets DVDs of routines and plans to sell Spoga franchises. "I knew I'd have copycats almost immediately, and if I didn't protect the name, the brand would get ripped off and consumers wouldn't know when they were experiencing the real deal or an imitation." Based in Sarasota, Florida, Lee got her trademark in about 18 months, with filing fees and legal help running about $1,700.
If you have a business name that you think you should protect with a trademark, or a product that you think you should register with a patent, read on for advice from two attorneys who specialize in intellectual property. While you can go it alone, most entrepreneurs agree that hiring an attorney is well worth the expense. (Case in point: I registered the Marketing Angel trademark by my lonesome, and it ended up taking twice as long as it should have -- a sluggish three years.)
Can You Lay Claim? Your first step is to visit the very dense United States Patent and Trademark Office website at www.uspto.gov. You can search for trademarks and patents already in use or in the filing process. Once you've filed, you can check back for the status of your patent or trademark. For some additional due diligence, check search engines for your business name or patent idea.
Learn the difference between a patent and a trademark. Camille M. Miller, an attorney in the intellectual property group of Philadelphia law firm Cozen O'Connor, explains a trademark as "any word, name, symbol or device, any combination thereof, used by an entity to identify and distinguish its goods and services from those of others." Trademarks, if the mark is kept in use, last 10 years. Expect the trademark process to take 12 to 18 months.
Judith L. Grubner, a partner with Michael Best & Friedrich LLP in Chicago, defines a patent as protection of "an invention that is new, useful and not obvious." A patent enables the owner to prevent others from making, using, selling, offering to sell or importing the invention claimed in the patent. Patents last 14 to 20 years, and the process takes 18 to 24 months.
When to File? How do you know when you're ready to invest time and expense into filing for a patent or trademark? Camille Miller believes a small-businesswoman should launch the patent process when she has "invented a novel and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof, that's not obvious to one skilled in the art." She notes that if the patent owner has made public disclosure of the invention, or offered to sell the invention with a confidential non-disclosure agreement in place, the owner has just one year from the first disclosure to file the patent application in the U.S.
For a trademark, according to Grubner, a business owner can simply claim her common law trademark rights obtained through use. "The little TM symbol next to a mark is an indication that the owner is claiming common law rights in the mark, but even that is not required." A Federal registration provides nationwide rights and certain additional court remedies against infringers, so a small-business owner should consider registration as soon as the cost is justified by the volume of sales under the mark.
Costs. Grubner says that the cost to file a patent runs about $1,000 (depending on how complicated the technology is) and working with an attorney will cost $5,000-$20,000. "A patent for a simple mechanical device will usually be less costly than a patent for a complicated electrical device," adds Grubner.
Trademark fees, according to Grubner, depend on how the goods and services are described -- there are 45 different international classes. The fees are $325 per class, and attorneys often charge a fixed fee for preparing and filing an application, varying from about $400 to $1,000.
You don't need to work with an attorney in your town, or even your state. "Fees vary geographically," explains Grubner, "with attorneys' fees on the east and west coasts typically higher than fees in the Midwest and South."
The case against filing by yourself. Grubner says that patent claims are more difficult to write than trademark applications, but both benefit from tutelage from a professional. With a patent, for example, Grubner warns, "Failure to comply with the requirements for the application or satisfy the examiner during the prosecution of the patent can result in permanent loss of patent protection."
While trademark applications can be pretty easy to file online, Grubner says that the application requirements can be technical, the language of the form is confusing, and the Trademark Office may not allow some types of mistakes to be corrected. "If the application is filed with an uncorrectable mistake, the filing fee will be lost and the applicant will have to start over."
Finding the Right Attorney. Grubner points women to their local bar associations to view a registry of intellectual property attorneys. Check out www.martindale.com for attorneys practicing patent or trademark law. There are also professional associations, such as the International Trademark Association in New York, that maintain registries. You can ask your current attorney for a recommendation if she doesn't specialize in intellectual property.
