What
can be trademarked?
Trademark
is a brand name. You can register your software name, business name, logo, and
your product names. Trademark/service mark may include words, names, symbols
used, or intended to be used, in commerce to distinguish your goods or services
from goods or services of others. The terms “trademark” and “service marks” are
often used interchangeably, and both offer the same protections.
Benefits
Federal
trademark registration offers your business the following benefits:
- Your exclusive rights to use the mark
nationwide and to sue others for infringement;
- Easier to register your mark
internationally with U.S. registration as a basis;
- Ability to record your registered mark with
the U.S. Customs and Border Protection Service to prevent importation of
infringing foreign goods;
- Public notice of your claim of ownership of
the mark;
- Listing in the United States Patent and
Trademark Office’s databases.
How
to register?
It’s
not necessary to be a US citizen or resident to register a trademark. You don’t
have to be physically present in the US either. The preferred method of filing
is to use the online Trademark Electronic Application System (TEAS) located at
the www.uspto.gov. You’ll need $225-325 and a unique name that has not yet been
taken by someone else. Trademark registration process usually takes about 8
months to complete if you file everything correctly. The trademark registration
will stay valid as long as you timely file maintenance documents. You must file
a Declaration of Use under Section 8 between the fifth and sixth year after
registration. You must also file a
Declaration of Use and Application for Renewal under Sections 8 and 9 between
the ninth and tenth year after registration, and every 10 years thereafter. If
you fail to timely submit these documents, your registration will be cancelled
and cannot be revived.
What
to enter into the forms?
Identification
of the Class of Goods or Services
Software
is normally classified as International Class 009: Electrical and Scientific Apparatus.
Description
of the Goods or Services
Enter
something like “computer program,” “computer software” in the search field and
you will be given options such as:
009 Computer
programs for using the internet and the world wide web
009 Computer
programs for {specify the function of the programs, e.g., use in database
management, use as a spread sheet, word processing, etc. and, if program is
content- or field-specific, the content or field of use}
009 Computer software development tools
009 Computer
software for administration of computer networks
Choose
option(s) that best describe your goods.
Basis
for Filing
If
you have already been selling your software under the name that you want
trademarked, click Section 1(a) (“Actually using mark in commerce now”). Even if you haven’t actually sold anything
yet, you can still file under Section 1(a) if the software is listed for sale
anywhere.
If
you have not yet been selling under the mark but intend to do so, click Section
1(b) (“No use of mark yet, intending to use”).
Note that if you file under Section 1(b), you will have to do the
following before the mark can register: (1) begin using the mark in commerce;
and (2) file an Allegation of Use that includes a specimen and an additional
fee.
Specimen
Submit
a JPG that shows how is this trademark being used in commerce. For
your software, it normally is easiest to submit a screenshot of the page where
your software is listed for sale. The screenshot shall contain the trademark
itself, price, and the URL as shown in the browser. The USPTO has stated that
acceptable specimens for computer programs would be a photograph of a display
screen projecting the identifying trademark of a computer program, or a
photograph of a frame(s) of a movie or video tape bearing the mark.
Identification
of the Mark
If
you are only registering a word or a phrase (not a logo), then just type the
word/phrase into a box. However, it does not cost anything extra to also
trademark a logo as well.
Disclaimers
A
disclaimer is a statement that you include in your application to indicate that
you do not claim exclusive rights to an unregistrable portion of your mark
(generic words, geographic locations, well known symbols, etc). The disclaimers can be treacherous because if
you agree to disclaim certain terms, this may render your trademark more or
less useless. Why? Because disclaimer of terms means you re not claiming any
exclusive rights to use those terms. So, if your mark has disclaimed terms and
you later see another vendor selling a similar product under your trademark,
you may have difficulty stopping them.
