A former community discussing the business of software, from the smallest shareware operation to Microsoft. A part of Joel on Software.
We're closed, folks!
Doug Nebeker ("Doug")
I'm planning on getting a trademark registered for a software. I have the following questions, I know it's better to talk to a lawyer, but I want members here who have knowledge about trademarking to share their experience and what they think about the following:
Has anyone here successfully registered a trademark without using the service of an attorney?
What do you think of using the service of Trademarkia?
What is the best screenshot to submit for a software, is it the software screenshot with the software name in the title bar or the website screenshot with the image of the software?
Should I do the trademark registration myself directly on the USPTO website?
Thank you all.
Can you afford the time and miney to defend an infringement of your trademark? If not, is it worth going to the time and trouble to register it?
Thursday, May 15, 2014
>Is having the trademark not going to help us in this situation?
It might make a legal threat a bit more credible, but probably only if they are in the same country as you. Good luck if they are China or India.
Your product is your trademark, even if you don't go through the process to get a registered trademark. So you might be able to send them a 'cease and desist' letter without a registered trademark. Ask a lawyer.
Note also that you can't get a registered trademark for your product name if it is generic/descriptive.
Alternatively (depending on how egregiously they are deceiving customers) just concentrate your energy on making your website and product better. I can't think of a single case where a copycat has made real inroads into the market of a successful product.
IANAL, usual disclaimers apply etc.
It's not very expensive actually. I have used Erik Pelton several times: http://www.tm4smallbiz.com/
>We also have situations where users have contacted us on support issues relating to the competing product instead of contacting the competitor.
That also happens when your competitors aren't using the same name. Customers get confused (bless).
You can ask Google not to let people show your trademark in their Adwords ads. Whether they pay any attention to small companies, I don't know. But you can't stop them bidding to appear in the results for your trademark.
>Also will getting the trademark and sending a cease and desist letter help in removing search listings using our name from Google, Yahoo, Bing and Apple?
Hard to know without a lot more detail.
> Has anyone here successfully registered a trademark without using the service of an attorney?
> What do you think of using the service of Trademarkia?
Filing a trademark is so easy it seems pointless to me to use a lawyer, it would probably take more time using one and I doubt they add any value.
Trademarks are not patents. Patents are totally different.
With trademarks you make sure you used it in interstate commerce if you're doing a US one, then prepare the artwork, pick your category, fill out a form. Just follow the directions. It's like filing for a LLC but easier, it's not complicated.
> What is the best screenshot to submit for a software, is it the software screenshot with the software name in the title bar or the website screenshot with the image of the software?
I dunno. Follow the directions for artwork they have. They have stuff there that tells you what to do.
> Should I do the trademark registration myself directly on the USPTO website?
As opposed to mailing it in, or as opposed to using a lawyer? I can't tell you that. Last time I filed them I mailed it in, it was probably before they allowed web submissions.
"Can you afford the time and miney to defend an infringement of your trademark? If not, is it worth going to the time and trouble to register it?"
The thing about this is that if you have some really unique name and you haven't trademarked it, and your competitor does, he's going to get it and then you have a problem that will cost you a lot to fix. People pull stunts like that because some of them are jerks. So if you file for it then it's registered and they can't mess with it.
You can also put TM on stuff that's not registered. That is done a lot and at least indicates you intend it to be your private mark. I have some TMs that I've never registered. There is a significant cost to registering, that's true, around $400 and you gotta pay it again every decade to renew. Get a bunch of trademarks and it starts to add up. Just listing TM on stuff feels good and is easy and free though, I recommend it.
I'm following this thread with interest. We recently applied to register a trade mark for my software because we found another company selling software using our old name. I looked and their trademark application was one week past the point where you could contest it and say you had already been using that name. My fear was that even though I've been using that name for over 10 years, once their trade mark was registered, they'd send me a cease and desist letter and I'd be screwed. (IANAL but I also can't afford something like that.)
I am curious if that was a legitimate concern on my part. From Scott's post above it sounds like it was.
We decided to just pick a new name and applied for a Trademark.
We went through myllc.com because we used them for our LLC, and they gave us all the paperwork and charged us money. In hindsight we think we could have just filled out the forms ourself. Now that we know, next time we'll apply directly to the USPTO.
Denise, I forgot to say - in our case, after we applied for the trademark, an attorney from the USPTO contacted us with questions and was actually quite helpful in telling us a couple things we needed to do differently to have our registration be successful. It may have been the luck of the draw, but it was actually like having a free trademark attorney helping us out.
Theoretically it can, if you in trade consistently identified it as a trademark with tm for example, making it a common law trademark. You may still have to go to court to battle it out.
Here's an article discussing this.
Consider on the other hand various cases of people with family businesses named McDonalds, sometimes which predated the founding of the fast food franchise. These people get to change their name, or stand down McDonalds attorneys who have been known to fight them for years.
I have a business associate/friend who had to change his company name because someone started a business with the same name then trademarked it. I don't know which business started first, but they had the trademark.
The other company was on the opposite coast and there was no real threat of people mixing them up. He had the impression an attorney just went looking for situations like this, then approached the complaining company to drum up his own business.
My friend spent thousands of dollars over the situation - changing logos, moving website, informing clients - he'd built a brand here in town so who knows how much business he may have lost due to the change. (Luckily he was able to preserve part of the name.)
Yes. I think a reasonable rule of thumb is that if you really have a viable business with a unique trademark that is at risk of being taken, you should trademark it. This has modest costs associated with it so you probably don't want to trademark all sorts of things.
I think some tech people and people raised in western cultures with a history of intolerant absolutist religions that try to see things in black and white see things they way their culture does - as black and white. So they like to imagine that they are "right" because they were either using a mark before someone else did without registering it, or trademarked it first, even after others used it they didn't know about. They imagine they are "right" and the courts will agree with them since the courts find "truth" in accordance with the fundamentalist culture they are immersed in, whether or not they think they believe in that system.
In reality, you can spend decades in court, spend millions of dollars, and not get the results you daydreamed about while watching Law and Order or Judge Judy on TV.
If you have a registered trademark that predates other people's use you are in a better situation.
Yes, some people can argue endlessly about how they think they don't need it, or they can beat a registered trademark and don't need to register. If no one ever challenges them they are right. If someone does challenge them though, they can spend millions in court. If they have an actual trademark their situation is better. The judge doesn't care and won't listen to your tale of how you were done wrong. He is going to look at actual provable dates, preferring dates backed up with government registration.
This topic is archived. No further replies will be accepted.Other recent topics
Powered by FogBugz