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BusinessColumnistsJamie Herzlich

How to get a trademark for your small business

It is difficult to get a registered trademark,

It is difficult to get a registered trademark, but it can be done, experts say, advising businesses to do a comprehensive trademark search. The smiley face is trademarked, but has a long and complex legal history.

Many local businesses aspire to get their trademarks registered, but most won't succeed.

Only one in four of the federal trademark applications filed in New York State in fiscal 2013 was granted, according to stats from the United States Patent & Trademark Office. A trademark is generally defined as a word, phrase, symbol or design that identifies the source or origin of a good or service.

To increase the odds of getting registered, it pays to avoid some of the more common pitfalls, including failing to do a comprehensive trademark search.

"Entrepreneurs don't take the time to understand what can be trademarked," explains Steve Cook, a trademark attorney at Cook & Cook in Mesa, Arizona. Cook's firm, along with design firm Column Five, produced an infographic that included trademark filing tips; find it at cook law.co/trademark.

A trademark registered with the U.S. patent office earns the right to be identified by an ® symbol, explains Garden City attorney Barry Krivisky, who specializes in trademarks and copyrights.

This generally offers greater protection than using "TM" next to your name or symbol. TM merely indicates a claim of trademark use, but the designation is informal, he explains.

DO A SEARCH
Before applying for a trademark make sure no one has applied for or registered a "confusingly similar" mark, Krivisky advises.

You can use the patent office search tool (uspto.gov/trade marks), but you may also want to have a comprehensive search done by a private vendor such as Thomson or Corporation Service Co. A broader search will provide results from common-law usage, federal registrations and other claims to rights, he says.

Keep in mind the search doesn't provide an opinion, just hundreds of citations of other marks, Krivisky notes, adding applicants may need assistance interpreting the results. He said he charges $1,000 to $1,200 to conduct a search and analyze the results.

When deciding whether new marks are "confusingly similar" to a registered mark, the patent office analyzes several factors, including a comparison of the marks themselves, as well as a comparison of the goods and services covered by the marks, explains Michael Cannata, an associate in Uniondale-based Rivkin Radler's intellectual property practice group.

Marks that are generic or descriptive (marks that merely describe the goods or services that the mark is used in connection with) will have a difficult time securing federal registration, says Cannata. Conversely, marks that are arbitrary or fanciful (words specifically coined for the purpose of serving as a trademark, such as Kodak or Exxon) have the best chance of securing federal trademark registration, he notes.

In general, avoid marks with names/surnames and those whose primary significance is geography, adds Cook, noting that in order to get a federally registered trademark, the mark must be used in interstate commerce (selling your goods on the Internet would qualify).

A COMPLICATED PROCESS
If there's a problem with your application, the patent office sends a written "office action" detailing why, and it's important to respond to that, notes Krivisky. Leaving out any pertinent application information will delay the process, adds Cannata.

Since the application process can be confusing, you may want to consider seeking legal help. That's what Roberta Perry, owner of Scrubz? Natural Skin Care Products in Bethpage, is doing.

She has carried a TM next to her Scrubz name for eight years but has now enlisted an attorney to file for federal trademark protection.

"There's a lot of pieces in the filing puzzle," explains Perry, noting that a federally registered trademark will offer her greater protection.

"It's top priority," she says.

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