Comment by nroach | Hacker News Reader

Comment by nroach | Hacker News Reader

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In the US, "common law" trademarks are automatic when you begin using the name. However, it's a very limited scope of protection and often times can be geographically limited.

For example, if I started a service like AirBnB and all my initial customers were in Boston, then I could wind up being locked into only operating in Boston (under my chosen name) if another company later registered the name.

For consumer web-only startups, you might be able to get by with just a domain name, but it's a risk that in my mind isn't worth the cost savings. Yes, a domain name registration and accompanying web site can be used as proof of use in commerce, but it's not a guarantee and it doesn't help very much with geographical restriction.

You'd be surprised how often people wind up with conflicting names. For a few hundred dollars you can ensure that a huge headache down the road doesn't happen. It's cheaper to get the registration at the start than to litigate later or have to change your name.

Since you're an IP lawyer, would you recommend that people starting out file their own trademark applications? It seems daunting to me, and I would be concerned about going through the whole process and winding up with a trademark that didn't appropriately protect me. Is that a legitimate concern, or should I not worry about that and file for a trademark myself?

Edit: Any tips or resources for people who have never filed a trademark before?

Generally speaking, trademark applications aren't difficult. If you're a detail-oriented person and don't mind doing some reading, you can absolutely do it yourself.

The main advantage to hiring an attorney is that if you run into an opposition or if the examiner has an issue with your application, an attorney may be better able to persuade the office that the opposer is without grounds.

Start with a TESS search on the USPTO's site for live applications. Read up on the US and International Classes that you might want to use and decide which are applicable. If you run into similar names in your desired class, it might be worth talking to an attorney about whether your mark is likely to be allowable. Pay close attention to the specimen requirements if you're doing an in-use application as compared to an ITU. A defective specimen that doesn't establish the elements for use as an identifier of the goods or services can be problematic.

You might also see if your IP attorney is willing to walk you through the process the first time and then just answer questions on an as-needed basis. You could also work out the application on paper and just ask an attorney to look it over and use that form to fill in the information needed to file electronically.

Great! Thanks for the info. That's very useful.

If you do decide to go the self-filed route, make sure to read up on the categories of names in terms of whether your mark is protectable. (generic, descriptive =bad; arbitrary, fanciful =good)

There's' plenty of good information here:

http://www.bitlaw.com/trademark/degrees.html

We worked with Athol Foden at http://www.brighternaming.com/ (he has a lot of self-service resources on his site as well) to file the Bootstrappers Breakfast trademark. We paid about 1/4 of the rate that George is quoting (Athol is not an attorney) and had no trouble getting the trademark. If you have a complex situation you may benefit from an attorney, but I would take a look at the self-service resources on Athol's site as well.

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