A couple months ago, I was sitting in a rocker on the porch of a hundred year old haunted hotel. Up walks an attorney {let’s call him Dave because that is really his name}. Attorney Dave says to me, “Would you like to go up to my room with me and do that thing?” I respond with “What about your wife and my husband?” Slicker than a buttered biscuit, Attorney Dave says, “They can watch.”
Being the curious girl that I am and not one to turn down a first experience; I followed him up to his room. He made it quick, easy and absolutely painless. Right there and then...
Being the curious girl that I am and not one to turn down a first experience; I followed him up to his room. He made it quick, easy and absolutely painless. Right there and then...
Attorney Dave and I began the journey to register my business name with the US Patent and Trademark Office!
This is indeed a true story, with a few embellishments of my own. So let me begin filling in the flourishes with hard facts.
I met Attorney David C. Purdue at Essential Depot’s Winter Weekend retreat. He, as was I, there to educate to soap makers. Attorney Dave’s enlightening presentation was focused on US Trademarks, Copyrights and Patents. While this was my first time meeting Attorney Dave, he is no stranger to our niche soap making community. Dave Purdue is a two time presenter at The Handcrafted Soap and Cosmetic Guild’s annual conference. And if the HSCG invites you to speak at one of its events, you can be sure that you are among the best of the best in the industry.
One evening I was delighted to have the chance to speak with Attorney Dave one-on-one (yes, while we sat in rocking chairs on the porch of a hundred year old haunted hotel). I learned that he just likes to be called Dave, so I dropped the formalities. I also discovered that Dave has practiced law, specializing in intellectual property rights, for over thirty years. I can only imagine what great stories he has to tell! We started discussing Soaping101 and below is an insider’s look as to how the conversation transpired (feel free to consider yourself a fly on the wall)
Dave: So, you have a web site with SOAPING101.com. How long have you had this?
Me: About 5 years.
Dave: What do you have on your web site?
Me: I post video tutorials, recipes, tips and tricks about making soap making.
Dave: Have you thought about registering SOAPING101 as a trademark?
Me: I have but I am not sure if I really need to. Can you tell me why would I want to do that?
Dave: I’m glad that you asked. Did you know that you can acquire rights to a trademark just by using it in connection with your services?
Me: Really? How so?
Dave: The United States has a use based trademark system and someone who uses a trademark first acquires rights to that mark and can stop other people from using it. However, those rights are limited to the areas where you’re selling your products. If you are only selling at a farmer’s market near you, your rights will be quite limited.
Me: Do you think that I could be infringing someone else’s trademark?
Dave: Let’s start with trademarks that are registered in the US Patent and Trademark Office (PTO). I ran a search looking for a mark that is similar to yours that is registered in the PTO. I started by looking for an obvious conflict. I looked for a mark that had the letter string SOAP and the number 101 anywhere in the mark, and I found nothing. Then, I looked for marks that had the number 101 and found more than one hundred. I checked them to see if they were active and not abandoned.
Then, I checked to see what products/services were listed in those registrations and I formed the opinion that nothing registered in the PTO would conflict with your use or registration of SOAPING101. That does not mean that there is no conflict. We should check the Internet for people using similar marks, but you told me that you already did this.
In my experience, if I find no conflicting mark in the PTO trademark database, the PTO examiner finds a conflict less than 2% of the time (and sometimes I persuade them that there really is no conflict). Trademark attorneys offer full or comprehensive trademark clearance searches but they charge on the order of $1500. This is substantially more than the cost of hiring an attorney to prepare and file an application for federal trademark registration. Even if no conflict turns up in this kind of search, the lawyer will tell you that there’s no guarantee that there is no conflict.
Me: But you said that if I am already using my trademark, and I am not infringing someone else’s trademark, then I have the right to enforce my mark against an infringer, even if it’s not registered. Why would I want to go through the time and expense of registering my trademark?
Dave: Your trademark rights will be nationwide. Also, there are several advantages that flow from having a trademark registration. You get to use the cool registration symbol - ®. More importantly, the owner of a registration is presumed to be the owner of the mark and the mark is presumed to be valid and enforceable so you will be well positioned in case of infringement. A registration will also be helpful to you in case someone else might be planning to use or register your mark. Your registration will be entered in the PTO trademark database. If someone is thinking about adopting a mark like yours, and checks the trademark database like we did, she’ll find your registration and – we hope – decide to adopt a different mark. If she applies to register a mark like yours, her application will be examined by an examining attorney who will find your registration and refuse registration to her. There are more, but I hope that I am starting to convince you. What do you think?
Me: Let’s do this!
It was at this point that we went up to Dave’s suite and began the trademarking process.
Trademark Yourself: One Soaper’s Journey is a multipart series on my personal experience. Please subscribe so that you will be able to follow the complete story in its entirety. Next post I will explain at how exactly we filed my trademark application. And how easy it may be for some of you to do it as well.
Attorney David Purdue has been gracious enough to answer any questions you may have. You can leave your questions in the comment section below this post or contact him directly at Purdue Law Offices, LLC.
Useful Additional resources:
US Patent and Trademark Educational Videos
This is indeed a true story, with a few embellishments of my own. So let me begin filling in the flourishes with hard facts.
I met Attorney David C. Purdue at Essential Depot’s Winter Weekend retreat. He, as was I, there to educate to soap makers. Attorney Dave’s enlightening presentation was focused on US Trademarks, Copyrights and Patents. While this was my first time meeting Attorney Dave, he is no stranger to our niche soap making community. Dave Purdue is a two time presenter at The Handcrafted Soap and Cosmetic Guild’s annual conference. And if the HSCG invites you to speak at one of its events, you can be sure that you are among the best of the best in the industry.
One evening I was delighted to have the chance to speak with Attorney Dave one-on-one (yes, while we sat in rocking chairs on the porch of a hundred year old haunted hotel). I learned that he just likes to be called Dave, so I dropped the formalities. I also discovered that Dave has practiced law, specializing in intellectual property rights, for over thirty years. I can only imagine what great stories he has to tell! We started discussing Soaping101 and below is an insider’s look as to how the conversation transpired (feel free to consider yourself a fly on the wall)
Dave: So, you have a web site with SOAPING101.com. How long have you had this?
Me: About 5 years.
Dave: What do you have on your web site?
Me: I post video tutorials, recipes, tips and tricks about making soap making.
Dave: Have you thought about registering SOAPING101 as a trademark?
Me: I have but I am not sure if I really need to. Can you tell me why would I want to do that?
Dave: I’m glad that you asked. Did you know that you can acquire rights to a trademark just by using it in connection with your services?
Me: Really? How so?
Dave: The United States has a use based trademark system and someone who uses a trademark first acquires rights to that mark and can stop other people from using it. However, those rights are limited to the areas where you’re selling your products. If you are only selling at a farmer’s market near you, your rights will be quite limited.
Me: Do you think that I could be infringing someone else’s trademark?
Dave: Let’s start with trademarks that are registered in the US Patent and Trademark Office (PTO). I ran a search looking for a mark that is similar to yours that is registered in the PTO. I started by looking for an obvious conflict. I looked for a mark that had the letter string SOAP and the number 101 anywhere in the mark, and I found nothing. Then, I looked for marks that had the number 101 and found more than one hundred. I checked them to see if they were active and not abandoned.
Then, I checked to see what products/services were listed in those registrations and I formed the opinion that nothing registered in the PTO would conflict with your use or registration of SOAPING101. That does not mean that there is no conflict. We should check the Internet for people using similar marks, but you told me that you already did this.
In my experience, if I find no conflicting mark in the PTO trademark database, the PTO examiner finds a conflict less than 2% of the time (and sometimes I persuade them that there really is no conflict). Trademark attorneys offer full or comprehensive trademark clearance searches but they charge on the order of $1500. This is substantially more than the cost of hiring an attorney to prepare and file an application for federal trademark registration. Even if no conflict turns up in this kind of search, the lawyer will tell you that there’s no guarantee that there is no conflict.
Me: But you said that if I am already using my trademark, and I am not infringing someone else’s trademark, then I have the right to enforce my mark against an infringer, even if it’s not registered. Why would I want to go through the time and expense of registering my trademark?
Dave: Your trademark rights will be nationwide. Also, there are several advantages that flow from having a trademark registration. You get to use the cool registration symbol - ®. More importantly, the owner of a registration is presumed to be the owner of the mark and the mark is presumed to be valid and enforceable so you will be well positioned in case of infringement. A registration will also be helpful to you in case someone else might be planning to use or register your mark. Your registration will be entered in the PTO trademark database. If someone is thinking about adopting a mark like yours, and checks the trademark database like we did, she’ll find your registration and – we hope – decide to adopt a different mark. If she applies to register a mark like yours, her application will be examined by an examining attorney who will find your registration and refuse registration to her. There are more, but I hope that I am starting to convince you. What do you think?
Me: Let’s do this!
It was at this point that we went up to Dave’s suite and began the trademarking process.
Trademark Yourself: One Soaper’s Journey is a multipart series on my personal experience. Please subscribe so that you will be able to follow the complete story in its entirety. Next post I will explain at how exactly we filed my trademark application. And how easy it may be for some of you to do it as well.
Attorney David Purdue has been gracious enough to answer any questions you may have. You can leave your questions in the comment section below this post or contact him directly at Purdue Law Offices, LLC.
Useful Additional resources:
US Patent and Trademark Educational Videos
