# newb trademark question



## oceanlids (Nov 12, 2012)

If i trademark my brand name will i be required to get a business license? Am I required to do anything if I trademark, license wise anything else?

Thanks!


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## GordonM (May 21, 2012)

You don't need a business license to file for a trademark. What you'll need is money. While you could try to save a buck by doing all the research, filing, and correspondence yourself, the odds are already stacked against you for getting a trademark without interference. If you want your trademark to actually be worth something, you need an IP attorney. I don't know many who will research, file, and prosecute a basic application for under $5K.


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## kimura-mma (Jul 26, 2008)

You are not required to have a business license to apply for a registered trademark. But part of the registration process is to submit proof of use in commerce. So if the way you are using the mark in commerce would normally require a business license, then it's a good idea to have one. Better to have all your ducks in a row rather than pay the application fee just to find out you can't complete the process or need to fraudulently submit your proof of use.


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## 20vK (Jul 9, 2011)

You don't need an attorney.

I filed mine online with the US patent office for under $300

As Tim points out, though, you have to have used it in commerce. 

Richie


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## oceanlids (Nov 12, 2012)

Can you explain what you mean by use in commerce? 

Thanks


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## 20vK (Jul 9, 2011)

you sold it


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## oceanlids (Nov 12, 2012)

But if I haven't sold anything yet what would my proof be?

Thanks


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## 20vK (Jul 9, 2011)

It wouldn't - you can't.

That's why it is called a "Trade" mark

I think you can register an intention to trade, and the date of intention. But if someone else uses the mark in trade before you, then they get it.

Either keep it secret, or find out a way to legally sell a shirt so you can register your first trade date

My own experiences, not professional advice
Richie


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## GordonM (May 21, 2012)

Simply selling it isn't enough. For a federally registered trademark your goods or services must be sold interstate. People who get a trademark and only use it locally are often surprised when they lose the federal registration when they can't prove interstate commerce.

And yes, you can always file for these things yourself. Patents, too. But like a patent, having a trademark means you plan to defend it if it's ever infringed or challenged. That's the idea. The vast bulk of trademarks obtained without the aid of an attorney are lost on re-examination or interference, because the filing contained inherent weaknesses in research and methods of prosecution. You end up with nothing. And to add salt to the wound, someone else could wind up owning the mark, and you're no longer able to use it on anything!


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## 20vK (Jul 9, 2011)

I'm sure it depends on the trademark.

Mine is a made up word. I registered it under T-shirts, for which there were no other registered marks.

I have a whole brand selling under this made up name

I would be very surprised if someone could argue their rights to the name, since it did not exist until I made it up and registered it.

Trademarks are also a deterrant - by the process of registering a mark, you are already deterring people from using it themselves. If someone still uses it after you have trademarked it, well then, yes - perhaps it is time for a cheap cease and desist letter. After that - you are looking at big bucks, but until then, I don't plan to spend any more than I have to.


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## kimura-mma (Jul 26, 2008)

oceanlids said:


> Can you explain what you mean by use in commerce?


If you are using your trademark as a brand name for a clothing line, an example of use in commerce would be selling a shirt that features the trademark on the hang tag or neck label.

EDIT: I agree with Gordon. Proving interstate commerce would be better than just proving local sales.


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## kimura-mma (Jul 26, 2008)

oceanlids said:


> But if I haven't sold anything yet what would my proof be?
> 
> Thanks


You can apply for a trademark as an "intent to use." But to complete the registration process, you need to be selling goods and submit proof.


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## oceanlids (Nov 12, 2012)

So should I wait make some sales then trademark it and use those sales for proof?

Thanks


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## kimura-mma (Jul 26, 2008)

You would actually use a sample of a hang tag or neck label as your actual proof. But yes, it would make sense to start selling and then apply for a trademark once you are up and running a bit.


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## oceanlids (Nov 12, 2012)

Do you think business cards could count as proof, I planned on using them starting out


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## GordonM (May 21, 2012)

oceanlids said:


> Do you think business cards could count as proof, I planned on using them starting out


You'd be wasting your time. Start using your trademarked name in commerce. Sell something on eBay under the trade name, hopefully to someone not in your state. Mission completed.

Made up words for trademarked names: Sometimes works, sometimes not. Many people try to trademark combination words that are merely descriptive (nearly always rejected), rather than distinctive. 

But wildly distinctive marks tends to have no impact in the buyer's mind -- WeepWopZingDiddly is unlikely to be previously used or challenged by anyone, but also adds little value to the business. The best marks are both distinctive and descriptive, such as Compaq or Aleve.


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## 20vK (Jul 9, 2011)

Anusol....... 

Although I'm off to put in my application for WeepWopZingDiddly now, before someone else gets it!


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## oceanlids (Nov 12, 2012)

But how should i keep record of what i've sold, separate bank account? I don't have anything to print out receipts


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## kimura-mma (Jul 26, 2008)

How and where do you intend to sell your shirts? If online, your web hosting, shopping cart or merchant account should have features where you can save and print your sales info. If offline, get a receipt book.

You won't need to submit receipts as part of your trademark application. You need to submit proof that your logo helps identify the source of the goods you are selling. Like a hang tag or neck label, for example.


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## oceanlids (Nov 12, 2012)

Just locally right now through a few of the surf shops in town, going to get on a website soon though, thanks for the info guys! In the trademark application, is there a place where i can upload the hang tag file or a picture of it how does that work?


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## kimura-mma (Jul 26, 2008)

Yes, you can upload a pic of the hang tag as part of your application (as long as you are using the mark in commerce at the time of the filing... otherwise you need to file a separate application called a "statement of use.")


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## oceanlids (Nov 12, 2012)

What is "state of use" like potentially selling the product?


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## kimura-mma (Jul 26, 2008)

The "statement of use" is when you submit the pic of the hang tag. It is a separate filing from the trademark application (when the trademark application is for "intent to use.")

If you are already selling shirts, you can submit the pic of the hang tag along with the trademark application.

So the "statement of use" is only necessary if you submit the trademark application before you start selling shirts.


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## oceanlids (Nov 12, 2012)

I see i see, thanks again!! super helpful.


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## 09hts (Oct 14, 2012)

Business cards are not usable as trademark proof of use. It has to be on things such as product, tags, packaging, etc.


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