Back in July, I filed an application with the United States Patent & Trademark Office (USPTO) to register DOG JAUNT as a trademark. I just checked its status (“not yet assigned to an examining attorney,” and not a lot of hope that it’ll be assigned any time soon), and thought I’d write a quick post on why I made the effort and paid the money. Disclaimer: In a previous life, I was a trademark attorney, but I retired years ago and I do not provide legal advice. Please note that legal information is not the same as legal advice, which is the application of law to an individual’s specific circumstances. If you feel that you need advice, I urge you to consult a practicing lawyer.
What is a trademark?
A trademark is any word, phrase or symbol that uniquely identifies the goods or services of a seller. (The list of things that can function as a trademark is actually longer than that, but let’s not kill ourselves with details.) The point of trademark protection is to ensure that consumers can rapidly and confidently distinguish one company’s goods or services from those of another. When I gallop down the toothpaste aisle and grab my favorite brand, I want to show up at the cash register with CREST, not CRUST.
Can a blog name be a trademark?
Yes. You may think you’re just sharing pictures of the latest stop on your RTW trip, but from a trademark perspective you, as a blogger, are providing educational or entertainment services uniquely identified by your blog name.
Some bloggers also sell goods (one that comes to mind is Chris Guillebeau, who writes a blog called The Art of Non-Conformity and sells an electronic shelfful of guides and books). In fact, Dog Jaunt now sells goods — feel free to buy a fab Dog Jaunt-branded tee shirt, water bottle, or doggy tee.
What kind of trademark problems can you have with your blog name?
The very first thing you did as a blogger, I’ll bet, is buy a domain name (or choose one, if you started with Blogger or WordPress). The options are so limited for English words, particularly in the .com domain, that finding a domain name you like is a grim business. When you finally find one, you’re tempted to pour yourself a strong one and call it a day. It’s not safe, though, just to find a domain name that’s available. You need to check and see whether that domain name is someone else’s trademark, or confusingly similar to someone else’s trademark, before you can kick back. (For example, the term “dogjaunt” was still available on Blogger until about ten minutes ago, even though I’ve been posting at www.dogjaunt.com for a year and a half.) This post doesn’t address those issues. Take a look at this video (“Trademark Law and Your Domain Name”) for some more information about choosing a domain name for your blog.
Instead, this post touches on problems that may arise once you’ve been using your blog name. Here are the kinds of scenarios that drove me to seek federal registration: What if someone else in the U.S. starts a dog travel blog called Dog Jaunt? What if they call it Jaunty Dog? What if someone starts selling a line of pet carriers, or doggy water bottles, under the mark DOG JAUNT? What if they sell them under the mark JAUNTY DOG? What if someone offers related services, like, say, a pet travel planning and reservations site, under the mark DOG JAUNT, or a confusingly similar mark? And what if any of those things happens abroad?
How do I keep someone else from using my trademark?
Assuming that your use of your blog name doesn’t step on someone’s else’s toes, you start accruing what are called “common law rights” in your blog name when you start using it, and you can sue in court to enforce those rights. Another option, at the state level, is filing a state trademark application for your mark. The protection you get from these two sources is limited, however. A state trademark registration protects your mark only within that particular state. Common law rights in a trademark are limited to the geographic area in which a mark is used.
What you’ve got is a blog, which is available to anyone with a connection to the internet. Trademark protection that’s limited to a particular state isn’t going to be sufficient.
How about your rights under common law? Will it be assumed that because your blog can be accessed nationwide, your mark is being used nationwide? I’m not sure. I began writing Dog Jaunt in April 2009, and the Google Analytics report I just looked at tells me that since then, only 25 North Dakotans and only 28 South Dakotans have read any of my posts. Is that enough to prove use in those states, or could a North Dakotan start writing a blog called Dog Jaunt, covering dog travel in the Dakotas — and argue, when challenged, that the Dakotas are not part of the geographic area in which I use my mark? I don’t know the answer, and it’s my impression that the issue hasn’t yet been decided.
The most important benefits of federal trademark registration, from a blogger’s point of view, are (1) that a federally registered mark is protected nationwide, even if the owner’s actual use of the mark is more limited, (2) that federal registration allows a trademark owner to object to the use of her mark, or a confusingly similar mark, not only on the same goods or services she’s selling, but also on related goods or services, and (3) the ability to use your U.S. trademark registration as the basis for an international trademark application.
I thought about this last benefit in July, when a “leading internet solutions organization in Asia” sent me an e-mail telling me that a client had asked them to register the mark DOG JAUNT and several related domain names, and invited me to purchase those domain names instead. Sure enough, it was a scam, but it reminded me that I might well want to claim ownership of DOG JAUNT abroad.
Under a treaty signed by the U.S. and 78 other countries, you can use your U.S. trademark application as the basis for an “international registration” that gives you access to trademark protection in all of the member countries (PDF). The cost? If your application is only in one class, you’ll pay $100 to the USPTO and CHF 653 to WIPO. Is your focus more European? A Community trademark (CTM) registration will protect your mark in all 27 member states, but the filing fee will take your breath away (€900 online, €1050 paper). If you really only want coverage in a couple of countries, you might prefer to file trademark applications just in those countries; keep in mind, too, that some countries you may be interested in (e.g., Canada) are not included in either grouping.
What do I have to do to file a federal trademark application?
Start by reading, and watching, the materials provided by the USPTO. Take a look at Nolo Press’s trademark guide — the most recent edition was published this past August. Consider talking to an attorney. You can file your own application, and the USPTO’s site helps you through the process, but federal trademark applications are pricey and it would be a shame to waste that money on an application that ends up being rejected by the USPTO for avoidable reasons, or that yields a registration that gives you less protection than you deserve.
How pricey are federal trademark applications? Depending on which kind you file, they cost either $275 or $325 per class. Federally-registered trademarks are categorized into classes of goods and services, forty-five of them altogether, and blogs are regarded as a Class 41 “Education and entertainment” service. If you also sell goods, you may choose to file your application in one or more goods classes as well (if I had been selling Dog Jaunt-branded tees back in July, I might have included Class 25 clothing goods in my application).
Attorneys are also expensive, no doubt about it, but the more homework you do ahead of time, the shorter and more affordable your conversations with your lawyer will be. When you’re talking to candidate lawyers, don’t be shy about saying you have a limited budget. Good lawyers value their smaller clients, and will do what they can to reduce expenses for you — perhaps by offering you a streamlined packet of services, or by assigning your work to a senior associate rather than a partner.