Make Your Mark

By PlanetLaundry staff | Mar 21, 2012

Everyone is familiar with the most famous business trademarks: Google, Microsoft, Nike, McDonald’s…

But is trademark registration really something that coin laundry owners need to concern themselves with?

“Trademarking is very important,” says Gary Gray, who owns 14 self-service laundries that do business under the registered business name Fun Wash. “We have had several laundries try to use the Fun Wash name in Arkansas, and we have been able to stop the usage in every case.”

If, like Gray, you’re putting a lot of time and money into developing your brand, you should probably think about pursuing a trademark registration. After all, why build a valuable brand if someone else can easily steal it?

There are two levels of trademark protection. Simply creating a brand and using it in commerce creates a trademark. You can use the “TM” next to your brand and slogan. These are your creations that identify the source of your goods and services. But a trademark really gets teeth when it is registered as a federal trademark.

Registering a Trademark

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, including the following:

• 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.

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 United States Patent and Trademark Office. 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.

Most U.S. applicants base their application on their current use of the mark in commerce, or their intent to use their mark in commerce in the future. What is "use in commerce?" For the purpose of obtaining federal registration, "commerce" means all commerce that the U.S. Congress may lawfully regulate; for example, interstate commerce or commerce between the U.S. and another country. "Use in commerce" must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark.

For services, the mark must be used or displayed in the sale or advertising of the services and the services must be rendered in commerce.

If you have already started using the mark in commerce, you may file based on that use. A "use" based application must include a sworn statement (usually in the form of a declaration) that the mark is in use in commerce, listing the date of first use of the mark anywhere and the date of first use of the mark in commerce. A properly worded declaration is included in the USPTO standard application form. The applicant or a person authorized to sign on behalf of the applicant must sign the statement. The application should include a specimen showing use of the mark in commerce.

The next step is to search the USPTO database, before filing your application, to determine whether anyone is already claiming trademark rights in a particular mark. You may conduct a search online for free the TESS (Trademark Electronic Search System) database. If your mark includes a design element, you will need to search it by using a design code. To locate the proper design code(s), please consult the Design Search Code Manual.

You may file your trademark application online using TEAS – the Trademark Electronic Application System. TEAS allows you to fill out an application form and check it for completeness, and then submit the application directly to the USPTO over the Internet. You can pay by credit card, through an existing USPTO deposit account, or via electronic funds transfer.

You may also contact the Trademark Assistance Center for a hard copy of the “Basic Facts” brochure, or a paper form. However, paper forms are not processed as quickly as those submitted electronically.

“It took me 60 to 90 days to go through the entire registration process,” explained Michael Finkelstein, who operates a large chain of laundries in North Carolina and Virginia.

Trademark FAQ

What is a trademark or servicemark?

A trademark is a word, name, symbol or device that is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the USPTO.

How long does a trademark last?

Rights in a federally registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services in the registration and files all necessary documentation in the USPTO at the appropriate times. In general, the owner of a registration must periodically file Affidavits of Continued Use or Excusable Nonuse under 15 U.S.C. §1058 and Applications for Renewal under 15 U.S.C. §1059.

How different does one trademark have to be from another?

After an application is filed, the assigned examining attorney will search the USPTO records to determine if a conflict exists between the mark in the application and another mark that is registered or pending in the USPTO. The USPTO will not provide any preliminary search for conflicting marks before an applicant files an application. The principal factors considered by the examining attorney in determining whether there would be a likelihood of confusion are the similarity of the marks and the commercial relationship between the goods and/or services listed in the application.

To find a conflict, the marks do not have to be identical, and the goods and/or services do not have to be the same. It may be enough that the marks are similar and the goods and/or services related.

If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict. If the earlier-filed application registers, the examining attorney will refuse registration of your mark on the ground of likelihood of confusion.

“Trademarking is important, especially as you expand into multiple locations, because it will protect your intellectual property; however, it is probably not necessary unless you are planning to operate more than a handful of stores or have some other unique service or other intellectual property that you want to protect,” said Brian Brunckhorst, who owns four Advantage Laundries in northern California.

If you’re considering trademark registration, be sure to talk with a trademark attorney. There are online services that will fill out the application for you, but it’s no substitute for an attorney’s help. Registering a trademark is not a simple, fill-in-the-blank process. Consult a professional.