Have You Trademarked Your Name?

Business By CakeMommie Updated 27 May 2008 , 1:45pm by WendyVA

CakeMommie Posted 23 May 2008 , 10:25pm
post #1 of 21

Does anyone have experience with trademarks? From what I've seen, it looks like it costs under $400 but I've talked with several people in the cake business and they tell me it really costs thousands of dollars to do. I want to trademark my name, but I don't want any unforeseen costs surfacing once I've started the process. Any advice is much appreciated!!

20 replies
tiptop57 Posted 23 May 2008 , 11:33pm
post #2 of 21

I just finished a seminar about copyright, trademark and registration with a reputable law firm.

Actually to trade mark your name all you have to do is add a TM after it. Similar to copyright which is a "C" inside a circle and the year and your name. It is the registration of the name that cost the big bucks.

CakeMommie Posted 24 May 2008 , 12:06am
post #3 of 21

Don't you have to register the name in order to be legally allowed to use the "TM" after the name?

indydebi Posted 24 May 2008 , 12:19am
post #4 of 21

THe "r" in a circle indicates it's a "registered" trademark.

See this excellent thread for some great info on this topic.
http://forum.cakecentral.com/cake-decorating-ftopict-583531-trademark.html

CakeMommie Posted 24 May 2008 , 12:42am
post #5 of 21

Thanks for the info... I'm sure I've stumbled across that thread before. Does anyone know about the actual price for a trademark? The website for the US trademark office says its about $325 to file and if you use legal zoom they tack on an extra $169 to simplify everything. Has anyone actually legally registered their name and had it trademarked?

costumeczar Posted 24 May 2008 , 1:50am
post #6 of 21

I might be wrong about this. but from what I've read it seems that a trademark on a business name is good for the area where you're doing business, but not other places. So if someone has a business with the same name as mine (which has happened) but they're not in my selling area, it's not a trademark violation. If that person is selling things on the internet and I can claim that they're doing business in my sales area, even though they're not physically located near me, then I guess I could go after them if I was so inclined.

My point is that depending on the laws where you register your business name, you might not need to register a trademark at all. My state makes you do a search before you can register a business name so that there aren't any duplicates, so as long as I'm a registered business nobody can do business under the same name. It negates the need to trademark as long as I'm only doing business in this state.

But I think I'll go put a TM next to the name on my website just for fun!

mcelromi1 Posted 24 May 2008 , 1:54am
post #7 of 21

Copyright © covers published & unpublished works. (books, novels, music, software, etc.)
Trademark ⢠protects words, phrases, symbols or designs.
If you want to claim the rights of a name or logo, use the TM (trademark) or SM (service mark) symbol to give notice to the public about your claim. The use of the TM or SM Trademark Symbol does not indicate a legally enforceable trademark.
The registered mark ® can only be used once the mark has been registered. It is improper to use the registration symbol at any point before the registration issues. Unauthorized use of the mark can result in stiff penalties.

The high cost comes into play with legal fees, maintenance fees and search reports. Extensive search reports have to be made beforehand to make sure you are not using a name that has already been registered with the PTO. You may need to file more than one if you have a logo. A trademark registration for the name, one for the logo and one for the name with the logo.
Registrations do expire, but itâs cheaper to renew than the original registration.

Hope this helps.

mcelromi1 Posted 24 May 2008 , 2:11am
post #8 of 21

Registration of a business name in your state covers you so that no one else will have the same business name as yours.
A trademark registration with the United States Patent & Trademark Office means that no one in the USA that has anything to do with the cake business can use your name.
If I'm in TX and I register a name that you've been using but haven't registered with the USPTO, I could legally make you stop using the name because I would then own it. And all the work you put into building a business under that name would be lost. But if you used the name for something other than the cake business, there would'nt be a problem becauce there would be no room for confusion because I sell cakes and you sale something totally different.

Hope I'm not confusing anyone.

indydebi Posted 24 May 2008 , 2:15am
post #9 of 21

I heard Gene Simmons say once that there were other bands before his named "Kiss", but HE was the first to trademark the name. So those other guys who actually used the name first, lost out.

iletmn0 Posted 24 May 2008 , 7:02am
post #10 of 21
Quote:
Originally Posted by costumeczar

I might be wrong about this. but from what I've read it seems that a trademark on a business name is good for the area where you're doing business, but not other places. So if someone has a business with the same name as mine (which has happened) but they're not in my selling area, it's not a trademark violation. If that person is selling things on the internet and I can claim that they're doing business in my sales area, even though they're not physically located near me, then I guess I could go after them if I was so inclined.

My point is that depending on the laws where you register your business name, you might not need to register a trademark at all. My state makes you do a search before you can register a business name so that there aren't any duplicates, so as long as I'm a registered business nobody can do business under the same name. It negates the need to trademark as long as I'm only doing business in this state.

But I think I'll go put a TM next to the name on my website just for fun!




You statement is UNTRUE and quite possibly misleading to others. Federal trademarking a mark (wordmark, service, or trademark) provides for wider protection than the state level for example. If XYZ Corp does business in Florida and only registers the trademark at the state level then the protection is limited to the state of jurisdiction (Florida) so if John doe comes along and opens XYZ Corp in NY in the the same or similar industry there is no protection since the mark wasn't federally registered.

Federal trademarks offer the broadest protection; if XYZ Bakery in California trademarks it name or product and someone in Kansas unknowingly registers (apply for biz license, incorporate, or form LLC) in Kansas using the trademark (business name or product name) of XYZ Bakery in California then the trademark owner has every right to sue and have the Kansas entity shut down and liable for an unknow amount of damages.

Just because you file an application for trademark registration doesn't mean the trademark application will be approved. What is the name you're wanting to trademark? Also, simply adding TM after the name doesn't mean it's trademarked. After submitting the trademark application the company is then permitted to use TM.

CakeMommie Posted 24 May 2008 , 1:32pm
post #11 of 21

I understand all the state/federal issues with trademarking. All I want to know is HOW MUCH DOES IT COST in REALITY?

indydebi Posted 24 May 2008 , 1:53pm
post #12 of 21

It seems I recall another thread on this topic in which someone said it was in the $1500 range to get something trademarked. Not positive.....

iletmn0 Posted 24 May 2008 , 3:38pm
post #13 of 21
Quote:
Originally Posted by CakeMommie

I understand all the state/federal issues with trademarking. All I want to know is HOW MUCH DOES IT COST in REALITY?




It cost 325 to file for one goods and service classification that you want protection. For example if you want to register the "Nemisis Bakery" the words only as a wordmark under the good and service "baked goods" or "bakery goods" then the cost will be 325 to file the application. This will protect against bakery from using the wordmark "Nemisis Bakery".

Now, if you have a logo for Nemisis Bakery with the same goods and service classification that you would like to trademark then you will have to pay an additional fee of $325 before the design mark will require a seperate application than the words only trademark.

Also, if you would like protection under "bakery goods" as well as "custom cake baking and decorating service" then you will have to pay $325 for each goods/service classification so a total of $650 to file a trademark for the words only and another $650 to trademark the design plus words. Note those fees are just to file the application. Then there are fees to search national databases at the county, state, and federal level to see if the name is being used anywhere. The searches can be very tricky.

I have reviewed many trademark applications that were denied due to the name being descriptive or likelihood of confusion exist. Alot of the names that people on Cake Central are using are not trademarkable. Hence, my reason for asking the name you want trademarked.

Cakepro Posted 24 May 2008 , 4:01pm
post #14 of 21

Thank you for your excellent input, iletmn0. icon_smile.gif

GeminiRJ Posted 24 May 2008 , 4:21pm
post #15 of 21

You can get a design patent, which is cheaper than a utility patent, and it's only for looks...not function. It's not exactly cheap, though. And I still have lots and lots of questions concerning what to patent and what to copyright as I go forward with my cookie cutter kit business. I plan to sit down with a lawyer next week to go over my options and find out what this is going to cost me. I'll be sure to post my findings!

iletmn0 Posted 24 May 2008 , 7:09pm
post #16 of 21

Patents are a whole different monster from trademarks. They are two different things. Just so y'all know you can't patent nor trademark a cake design.

costumeczar Posted 26 May 2008 , 1:24pm
post #17 of 21

Well, how do you determine if a name is trademarkable at all? There are so many cake businesses with the same names in different parts of the country...What if someone has been in business for 20 years, and then someone else in a different state trademarks the name. Can the person with the trademark sue the person who's been in business so long? Seems silly to me.

costumeczar Posted 26 May 2008 , 2:12pm
post #18 of 21

[quote]Patents are a whole different monster from trademarks. They are two different things. Just so y'all know you can't patent nor trademark a cake design.[quote]

Ahha! I thought not. but there was another thread about a cake guy who gets all nasty about suing people who copy his designs.

iletmn0, are you a copyright attorney? I just want to make sure that I'm quoting someone who knows what they're talking about when I repeat this somewhere later!

iletmn0 Posted 26 May 2008 , 8:51pm
post #19 of 21

No, I'm not an attorney. Just recalling from my own personal research and studies from back in the day. It is impossible for the average person to search name availability without access to databases that is available to attorneys and such. You can search the trademark's website database but you will also need to search for name variation (sound alikes, misspellings, etc...). The trademark name in question has to be able to stand on it's own.

I agree with so many similar named businesses around in the world of cake. Most of the are descriptive and a likelihood of confusion exist which would make the chances of being granted a trademark next to non. That's why it's important to come up with a business name that is unique. Everything I have stated can be found by reading through the trademark's website and rules as well as by consulting with an attorney.

costumeczar Posted 27 May 2008 , 12:54pm
post #20 of 21

This is from the US Trademark and Patent Office website:

Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,
constructive notice to the public of the registrant's claim of ownership of the mark;
a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
the ability to bring an action concerning the mark in federal court;
the use of the U.S registration as a basis to obtain registration in foreign countries; and
the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.


When can I use the trademark symbols TM, SM and ®?

Any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration



So you can use the TM after your company name even if you haven't applied for a trademark. The R in a circle can only be used after the trademark has been registered, and that's the one that you need if you want to take legal action against someone using the name.

I went to legalzoom .com and applied for a trademark on my company's name, just out of curiosity. I doubt that it will be approved, given that it's not tremendously unusual as cake business names go, but if the application is denied then at least I won't be wondering if someone else will try to trademark it and tell me to quit using it! And it cost around $765 for the registration and a comprehensive search for US companies.

Gotta love Gene Simmons and the KISS registration thing...I stopped watching the celebrity apprentice after he left the show. It just wasn't interesting anymore!

WendyVA Posted 27 May 2008 , 1:45pm
post #21 of 21

I did register my business name with with the United States office of patents and trademarks through Legalzoom. Very easy. I can't remember exactly, but I think it costs around $465.00. It took nearly 9 months to get approval, but it can take longer.

You don't have to register your name to use the TM, but just using the TM doesn't mean that you own the name. If someone else can prove that they used it in commerce before you then it's theirs even if you used the TM and they didn't. Just like you don't have to have the "c" on a picture to prove that it's copyrighted. Using the TM is a symbol of ownership, but you can't claim ownership of something that belongs to someone else. Once you establish a trademark it is your responsibility to enforce it. The reason there are so many businesses with the same name is that the original owner didn't enforce their trademark- and that's fine if they don't care if someone else uses it. Of course once you register your name it is a national issue and you have absolute ownership of it throughout the country.

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