How to Register a Trademark

Ian Paget: When it comes to business naming and designing logos, not everyone will be aware of the potential legal risks involved when creating something new. As an opening question for you, why and when would someone need to contact a lawyer for legal services?

Marcella Dominguez: Well, that’s a great question and I think that if you’re definitely going to be visiting a graphic design agency or a graphic designer to help you with your branding, then that branding agency or logo designer should at the very least be recommending that you also seek the advice of a trademark attorney. Not so much because you’re going to jump on registering the trademark right away, but because you want to make sure that that design or that name or slogan that you guys have chosen is not in conflict with anything else out there that already exists. Because if they have no clue that there’s a conflict, then both you and them, mostly you as the client, are going to be in deep trouble or hot water as you continue to use this mark in commerce going forward.

Just to avoid any issues, it’s kind of like you know those apps that tell you what the traffic is like or it’s kind of like looking at a weather forecast just to see what you should wear for the day? It’s kind of the same thing. You want to make sure that the freeway is clear, that there’s not going to be any trouble moving forward and that your journey is going to be as smooth as possible.

Ian Paget: I actually just had a client that was close to going ahead and actually proceeding with the logo and they hadn’t yet had their name trademarked. Thankfully, just before I was about to kick off the project, they realised that they couldn’t register the name that they asked me to work with. They’ve had to step back, rethink the name, and looking at that registration process again because they would have wasted a lot of time and money because in that situation, if I had started a project, because the whole name and everything was changing, obviously it would mean I would have to start the whole process again.

There’s cost and time and stuff like that wasted if you haven’t gone ahead and just double checked that that name is available.

Marcella Dominguez: Yes, that’s precisely right. You’re going to waste time, you’re going to waste money, and really you could have avoided that waste of time and money and resources. If you can avoid it, why wouldn’t you?

Ian Paget: Yeah, exactly. I understand that, and please correct me if I’m wrong, but you would need to register both the company name and the logo separately. Is that correct?

Marcella Dominguez: Yes, so that would mean that there are two applications. Yes.

Ian Paget: Yeah. Okay. I think it’d be worth going through each of these separately. How would you go about registering that business name?

Marcella Dominguez: Registering a business name is just a matter of you choosing what the business name is going to be. What’s important to keep in mind is that this business name should not change. There should be no variation of it moving forward. The name that you choose that you write down on that application is the name that you need to use moving forward. I think that’s kind of the biggest take home point because I think that down the line some people want to add an S to it or an apostrophe S or they want to add, I don’t know, just some other… Sometimes they’ll add CO for company or LTD for limited and something that may be so insignificant to you actually is not insignificant.

It is significant in that it could be a material change that precludes you from receiving protection moving forward. Whatever you put down on the application, just use it like that moving forward.

Ian Paget: Sure. Okay. Does that include things such as limited? I quite frequently work with clients that have limited included in their registered business name. Does that mean from a legal perspective that you should include limited in the logo too?

Marcella Dominguez: Yes. If they have included limited, then I would definitely design the logo with the limited inside because that is what they’ve protected. Going back to what I just said a couple of minutes ago, what you choose and what you put on paper in that application is how you should continue to use it without removing or changing a single thing, even if it means adding or removing limited. If you included limited from the get-go, then use it with limited in the logo as well.

Ian Paget: Yeah. Okay. That clarifies what I thought. What you register as as a name, that should be exactly the same thing that’s within that logo, and you shouldn’t do it a different way from a legal perspective.

Marcella Dominguez: Yeah. Unless, unless you are planning on submitting a second application for a logo and you’ve protected your name with the limited and also protected it without the limited. Does that make sense?

Ian Paget: Got it. Yes it does. That makes total sense. Totally understand.

Onto the next part, so you’ve registered that logo. Something I wanted to ask because I registered a business name before, I’d gone through this process myself, there’s all these different classes and you register in different locations. For listeners that aren’t familiar with what that means, would you mind explaining what those classes are for and why you would have to register in each different location for that?

Marcella Dominguez: Yeah. This is probably one of the most important take home points for the trademark application process generally speaking and that is you have to be very precise about what identification you are selecting because that is the category in which you are going to be protected.

Let’s say you are selling t-shirts. Let’s say you accidentally choose like restaurant services or something because you’re a restaurant that’s actually wanting to sell merchandise. Well, you’re not going to be protected in merchandise if you accidentally selected restaurant services, even though you are a restaurant selling merchandise because essentially what you are selling is clothing. You’re selling the t-shirt. You want to be protected in the t-shirt, in the clothing, not in restaurant services.

That’s a very easy mistake for people to make when they have many components or many layers to their business. That example I just gave with a restaurant that now wants to sell merchandise and maybe now they’re going to provide entertainment services, it can become very confusing for people like that, or there’s the DIY applicant who really doesn’t know much about the process and things, “Well, I’m just going to select whatever because it’s not going to matter.” Well, yes, it does matter. You need to be precise and clear about what it is that you want to protect and making sure that that category accurately reflects what you’re going to be selling or what you are already selling.

Ian Paget: I actually think it’s because of this that a lot of people would actually need to consult a trademark lawyer because I went through that process myself because you can go on these websites and you can register yourself, but it’s knowing which categories to go into and which countries that you want to protect. I mean, it just felt like an absolute minefield. There’s so many different numbers and so many different things in there. It’s a lot to go through. I’ve looked at trademarks and I have seen that.

I was looking at the Manchester Bee recently because I had a company that wanted to include that Bee within their logo. I looked into it and our local council has it registered under around 10 different classes. I had to look into what each one of those were. It’s like they pretty much covered everything from merchandise through to using it absolutely everywhere, which is understandable.

Marcella Dominguez: If you have a complicated industry, like let’s say you have software as a service, software as a service can also be identified as something very similar, which is… It slips my mind right now, but there’s something in a very different class that almost parallel software as a service exactly. Then you kind of ask yourself, well, which one should I choose? It’s like, well, you need somebody who has already been doing this and who has seen other applications, who has visited this issue before to… Like the second set of experienced eyes that’s going to be able to help you more precisely identify which one is for you.

Ian Paget: One big question I have is obviously once you have registered that name, what does that actually protect? I mean, does it just avoid people from using that exact same name or can you stop people using something remotely similar? What does that actually do once you’ve got that registration?

Marcella Dominguez: Yes, you touched on part of it, which is that you preclude people from using the exact same name. What’s going to happen is let’s just say me. Let’s say I try and go and register Manchester Bee, even though you’ve already registered Manchester Bee. Well, chances are that I am going to receive what’s called an office action from the USPTO and they’re going to say there’s a likelihood of confusion because someone else, that someone else being you, has already registered it. Unless you can give us a really good explanation as to why yours deserves to be registered, chances are I’m not going to be able to move forward with my application anymore.”

Then let’s say my name is not exactly Manchester Bee, but it’s something similar to Manchester Bee. Let’s see I’ve chosen, I don’t know, Manchester Bee Rocks or just like Manchester Rocks let’s just say. They might come back and issue the same type of response. A likelihood of confusion is exactly what I just said, it’s a likelihood of confusion. It’s not an actual confusion. If there’s a likelihood that a consumer might be confused about whether Manchester Rocks or Manchester Bee is associated with your Manchester B, then the trademark office can say, “You know what? I don’t like this, and so I’m issuing you a likelihood of confusion office action,” and then it’s going to be my job to basically explain why yours deserves to be registered.

That’s why it’s so important to choose something or to confer with an attorney from the get-go upon choosing your name about how confusing your name could potentially be in the marketplace. Like I said, it doesn’t have to mean that you’re automatically going to move forward with a registration, but it does mean that at least you are checking out the weather for the day and making sure that the roads are clear.

Ian Paget: I guess the other thing is that example that you gave then is in the event that both of those people register that or try to register that. I know that there’s businesses out there that might just start without bothering doing any trademark. In that case, if someone was to use that name that you registered or something remotely similar, they could cause confusion. What can you actually do about it to stop them from using it?

Marcella Dominguez: There are a couple of things that you can do. If you’ve already become aware that they’re using it, then, of course, you can do things like amicably try to resolve it, like just saying, “Hey, I registered it before you. Let’s not make this complicated. Here’s my data first use.” That’s it. Sometimes that works, but there’s other people who might be resistant and think, well, I don’t really care. I’m just going to continue using it. I don’t care who else has registered it. Then that’s where you have the option to send a cease and desist letter. Then if they haven’t stopped using it, then that’s where you can sue them.

If you have obtained a registration from the USPTO, you can leverage the resources available to you, meaning you can sue them in federal court. If you have not registered, then you’ll have to resort to filing your lawsuit in state court where the damages are probably less.

Ian Paget: Am I right that’s only valid if they are also promoting their business in the same category that you’ve registered those for? If they register in a different category, would they be allowed to do that?

Marcella Dominguez: That’s a great question and everything falls back to this confusion test I was talking about earlier. It’s not a clear black and white, like I registered in this category and they used in this category, so therefore I can automatically sue them. Even if they didn’t register in the same class that I’m registered in, how potentially confusing is this for my target audience, for the people that I’m trying to market to? Are we traveling in the same channels and confusing these consumers? If the answer to that is yes, then you can have a claim.

Ian Paget: Those classes, as long as you covered the ones that you would use, it does kind of protect you for the other ones that you haven’t registered for? Kind of?

Marcella Dominguez: Kind of. I mean, right? That’s like a lawyer’s best answer all the time, “It depends. It’s situation based.” But yeah, kind of. I mean, if it overlaps in some other trade channel where your consumers are, then yes, it could be potentially confusing. It always goes back to that, is it potentially confusing for your customer and are we overlapping trade channels?

Ian Paget: Yeah. I guess the only way to really be able to answer that question is from a case to case basis because it would depend on the situation. Totally understand.

The last question I have for you on naming… As a graphic designer, when I have a client approaching me, I often make the assumption that they’ve registered their name and they’ve done all of that work. But is there any way, without asking them obviously, to double check that they have registered that name or they do have ownership with that name in some way? Is there like some database or something where I can check?

Marcella Dominguez: Yes. If you just do a Google search for USPTO… Well, that’s a little bit too general. If you want specific, I would type in USPTO TESS and that basically stands for the Trademark Electronic Search System. That allows you to type in any business name, any slogan that you’re thinking of using or that someone has told you that they’ve already registered, and it will populate a list of what’s already been entered into their database. You can narrow it and filter it by different criteria, but yes, that test is where you would go to do a search.

Ian Paget: Yeah, sure. I understand that… Well, I’m making an assumption here, but I assume that that covers just the United States?

Marcella Dominguez: Yes, that’s right.

Ian Paget: I assume that each country, would have the equivalent or something quite similar to that where people can go and search?

Marcella Dominguez: That is a great question. If you look up Madrid Protocol on Google and you go to their website, there’s got to be a universal way you can search or at least search by country, but your best bet would be to look under the Madrid Protocol.

Ian Paget: Yeah, sure. Okay. I’ll link to that in the show notes so that people can have a look into that if they want to learn more about it. I think we covered everything on the naming side of things. How would you then go about registering the logo?

Marcella Dominguez: You would just follow the exact same process as registering a business name. You want to make sure that the design you have is the one you’re going to definitely be using moving forward without any changes or alterations. You fill out the application as you normally would, except that instead of choosing standard character mark, you’re going to be choosing a stylised design for the logo.

Ian Paget: Right. You’re basically uploading an image and that’s what they’re using?

Marcella Dominguez: Yes, that’s right.

Ian Paget: Yeah. Sure. Okay. I guess from that, you mentioned that that one configuration is exactly what you should be using. That makes it sound complicated for me because when I design a logo, I do lots of configurations of it. I might do a different layouts or different configurations. Say for example, there might be scenarios where there’s like a symbol to the left of a word mark, or you might have a version with the symbol above, or you might have like an inverted version so it can go on a darker background or a white version, a black version and stuff like that. Do you need to register all of these different variations?

Marcella Dominguez: My best suggestion is that if you know that you’re going to want to be changing the colours, that you should definitely just register your logo in black and white because then that allows you to change colours moving forward and still remain protected in the design. But when I was talking about materially altering it, I meant like changing the design and the look. That you should not do. But if everything else is going to remain the same except for the colours, then my suggestion is to register in black and white from the get go.

Ian Paget: Sure. That makes sense. I think it would be worth also discussing the symbols that you can add to the logo. When would you use the TM symbol?

Marcella Dominguez: The TM is basically a placeholder for when you do not have a registration yet. It could mean that you’re just using it because you’re testing it out, but nonetheless, you’re claiming ownership over that design or name or whatever it is that you’ve put the TM on. It kind of puts people on notice, “Hey, I’m using this and it’s not registered yet.” Chances are if they put a TM on it, it’s because of one of those reasons.

Ian Paget: When would you use the R symbol? Could you use it on the logo if you registered the company name, or do you need to have also registered the logo itself? Because I’ve seen designers in online communities include the R symbol in logos that haven’t yet been presented to clients, let alone been through that registration process.

Marcella Dominguez: That’s a really great question because I agree with you, I have seen it in many places even where it is not merited. You can only use the circle R, the registration symbol, on something that has been registered. If you have not registered the logo, then you cannot put a circle R on the logo. If you have not registered the name, you can not put a circle R on the name. If you’ve registered the name, let’s be specific, then go ahead and use it on the name. If you have not registered the logo and only the name, then you cannot put the circle R on the logo. It can only be attached to something that’s been registered.

Ian Paget: Yeah, sure. If you’ve registered the name and you’re writing a document and you’re writing the name of the company within that and that name has been registered in a document, can use the R?

Marcella Dominguez: Yeah. I’m glad you asked because that is a good question. I mean, you don’t always have to use the circle R, but if you’re able to use it, then you should use it. You should be using it more often than you’re not using it because you need to put people on notice that this has been registered and there’s a legal claim to it. Not using it kind of… If you ever got to the situation where, God forbid, you’re being sued or you’re having to sue somebody, they can always make the argument, well, they kind of didn’t care for it. It’s kind of like taking your dog out for a walk in a populated area and then not taking it on its leash. What if it likes somebody, or what if your dog gets harmed by somebody else’s dog?

Well, why was your dog loose to begin with? You know what I mean? Like put that thing on a leash. You probably paid good money for it. You’re invested in the dog. It’s yours. You love it. It’s kind of the same thing with a trademark. The way to keep it on its leash tight, letting the world beyond notice that it is owned by somebody is to put that circle R there.

Ian Paget: Well, I wanted to really put emphasis on that because I do see a lot of graphic designers. It’s generally those with lesser experience that do this, but I have seen designers put the R symbol on their logo when it hasn’t yet been registered. Yeah, as you say, you shouldn’t be doing that. I just wanted to make that differentiation clear. But if you do have the name registered and you are writing about it, you can use the R, but the logo, in order to use the R on the logo, you have to register that logo separately in order to show that that has been registered.

Marcella Dominguez: That’s right.

Ian Paget: You mentioned it already, but the TM, pretty much anyone can use that TM. That’s correct, right?

Marcella Dominguez: Yeah. Anyone can use it. Like I said, it’s like a placeholder to let people know that, hey, I’m going to continue to use this. I am using it, but they don’t necessarily have the leverage that somebody who might’ve registered it would have.

Ian Paget: Sure. We’ve gone through these two different things. We’ve gone through registering a name and also registering a logo. How long do these things usually take to go through?

Marcella Dominguez: Yeah, so it’s kind of a lengthy process. It takes anywhere between 11 to 14 months. I’ve heard other people say, “Well, so and so or I read or on YouTube I saw it’s six months.” This is what I do like every single day. Trademark work is my scope of work like every day. There is no way that it takes six months. It’s not taking six months. It’s taking between 11 to 14 months.

Ian Paget: That’s a long time.

Marcella Dominguez: Yeah, it is a long time.

Ian Paget: We’ve covered registering the logo and everything, once you got that logo registered and I’m sure your answer with the name answered this, but how would you go about protecting that logo once you have registered it?

Marcella Dominguez: The same way you would use the circle R. If you notice that somebody else is using a similar design, then you want to place your mark. I understand that not… I mean, you shouldn’t go out and attack everybody that you think is maybe copying you. I mean, you kind of want to have a good faith assertion that you really believe somebody else is trying to rip your logo or your design off and try to put a stop to it. Because if these cases keep coming up where, oh, it looks like it’s similar to mine, it looks like they copied mine because I’m really popular and I’m doing good in my industry, and you just let these people like get away with what they’re doing, then eventually you might get to a point where your mark loses its protection basically.

All that work and all that money that you invested in to try and protect your mark is essentially gone. One very important thing to do is to protect it, police it, and do it diligently. I mean, there are people that are like, “I just need the registered trademark either because it’s for Amazon or just because I want to hold that piece of paper to tell me it’s registered.” But if you don’t do the policing afterward, I mean, you do run that chance that you might lose it if you don’t do the right thing to protect it.

Ian Paget: Right. It’s a case of I guess continuously monitoring what’s happening out there.

Marcella Dominguez: Yes.

Ian Paget: In the event that you do see someone that’s intentionally trying to rip you off, then obviously you need to take the appropriate action to protect that logo.

Marcella Dominguez: Right.

Ian Paget: Now, we’ve gone through all of the naming and logo stuff. Another legal thing that I want to cover within this conversation is contracts. I believe every designer or anyone that’s offering a service where there’s money exchanging hands, I believe that there should be a contract. Would you mind explaining a little bit for the people I guess that aren’t familiar with them or don’t currently use them why you would want to use a contract?

Marcella Dominguez: A contract is more so for the unexpected than it is for the expected. It’s expected that you’re going to get paid. It’s expected that the work or the service that you’re providing is going to be executed within a certain amount of time, but it’s really for the unexpected that you are preparing this document. Sure, we know you’re going to deliver my service or my product, but how long is it going to take? What if it’s longer than I expect? It becomes an unexpected circumstance. If I’m expecting something to be delivered in two weeks and now we’re on day 45, then what do we do? A contract should always cover those types of unexpected circumstances. You designate as many of the specifics as you can. How much am I getting paid? How long is this supposed to take?

If there’s a circumstance that you and I hadn’t foreseen that would interfere with the delivery of the product or service, how do we handle that? Right now is the perfect time, the coronavirus, I’m sure it’s interfering with a lot of contract. That’s kind of what you’re preparing for. What if you’re not satisfied when I deliver the services? Is the delivery of my product or service really based on personal satisfaction, or is it based on more objective circumstances? Like we don’t customise our product, it’s the same product all across the board. Do you have a return policy? Do you have a refund policy? Those terms and those conditions are what allow you to have a solution before you enter into the argument, if that makes sense.

Ian Paget: Yeah, it does.

Marcella Dominguez: It’s harder to find a solution to a problem once you’re in the problem already. Whereas if you prepare for the solution beforehand, it might be a little bit of a smoother ride trying to work through those hurdles.

Ian Paget: I think you pointed out something quite important. I spend a lot of time in design communities and you always see this designer that’s like, “I don’t know what to do in this situation. This has happened. This has happened this has happened,” and they want help. Most people go, “What’s in your contract?” And they’re like, “I don’t have a contract.” It’s in those cases where it’s like, well, there’s no clear way out of this. That person has absolutely zero leverage to kind of stand up and tell the client that it should be a specific way because I guess you’ve given away all of the bargaining chips. If the customer wants their money back, technically there’s not a lot that you can do really in that situation.

I think why I firmly believe that contracts are important is to protect you and also to protect your client. It’s a two way thing. You know what happens when. I guess a question for you would be, in those cases where the client doesn’t follow something that’s agreed within that contract, what can you do about it?

Marcella Dominguez: Yeah, so here you could take it to small claims court. If they’re not abiding by a term in the contract, then yeah, I mean, you can sue them. It also depends on how large the contract is. For smaller contracts, it would be small claims court. For larger contracts, you could potentially litigate it in state court. At the very least, it’s proving your point that what you outlined in the contract was what was supposed to be abide by. But without those terms, it’s kind of like all up in the air.

Ian Paget: When you put something in writing in an email and it’s agreed, does that act as a contract as well, or do you actually need to have a proper formally written contract with all the terms and conditions and actually have it signed and dated, or can something like an email be used in a court setting?

Marcella Dominguez: Yeah. I mean, if you don’t have a contract and you have been exchanging emails and it’s clear that you both have agreed to something, then there has been a meeting of the minds which can be used in a court setting to say, “Hey, this is a term that we agreed to.” Although it’s not necessarily going to be the outlining the contract in its entirety, it is considered a term or a condition of the contract, which yes, certainly can be used.

Ian Paget: Yeah. Fantastic. I think that gives a little bit of comfort to the people that are in those awkward situations where they haven’t had a contract. That if they do have some exchange of emails where there’s been some kind of agreement as to what happens when, then technically that that does cover your back. I guess one other question with contracts, how would people go about creating them? Because in the graphic design space, there are templates out there. You can go on websites and purchase them. It’s that type of thing okay or would you advise to actually get something written up properly for your business?

Marcella Dominguez: The templates that are out there, they might work for you, but they might be leaving some things out. Kind of how we were talking about how it’s a case by case basis depending on what you sell, how you sell, everybody’s business is different. Even though you’re in the same industry, everybody’s business can still be different. If you have a template that is generally for your industry, I would say just make sure that it covers everything that you are looking to cover your bases on. If it doesn’t, then my suggestion is, if you go and you fill out that template by yourself, then at least have an attorney look over it for you. That way you’re still saving the money, which I’m assuming is the reason you do a DIY template to begin with.

That way you’re saving some money on legal fees, but at least you’ve still had an attorney review it. I definitely offer that as a service is to review contracts for graphic designers and for other freelancers. You can also send it over to me.

Ian Paget: Yeah, sure. That’s a perfect answer. Because I think one of the things that most people don’t think of is all scenarios, so all those scenarios that you mentioned, because a contract is only ever needed in the situation where something does go wrong. I guess because that’s the type of thing that you’re doing on a day to day basis, you would be aware of things that would happen. You’ve seen what happens when something hasn’t been put in there, and it’s just a case of including all eventualities. That’s something I would say with a lot of the contracts out there. For me, I’ve seen loads, but most of them are for America only. Being in the UK, we have different laws. There’s listeners to this from all over the world.

Just taking something from the States, I mean, it could cover everything and it probably will work for you, but just having someone double check over it just to make sure that everything is okay does make a lot of sense to do.

Marcella Dominguez: Mm-hmm (affirmative). Yup. It’ll save you some money, like I said, if that’s what your ultimate goal is as well.

Ian Paget: Yeah. Fantastic. Well, we covered everything that I wanted to speak about and we’ve pretty much gone through all of our time. Time seems to have flown by. Marcella, it’s been really great to speak with you. I really appreciate you coming on and answering all of my questions and hopefully offering a lot of value to the audience.

Marcella Dominguez: Well, thank you so much for having me. I really appreciate it. During these times, it’s also nice to be able to indulge in something that will help your business moving forward and try to carry you through these times. At the very least, if we can educate people about how to make their business stronger, then I’m always happy to do that.

Ian Paget: Yeah, fantastic. Well, it was pretty great, and I can imagine that there’s listeners that probably listened to too much news. I now I do and a lot of conversations that I have are all around this coronavirus and everything like that, which is totally understandable. Hopefully this interview was a nice escape from that for 45 minutes or so.

Marcella Dominguez: Yes. I hope so too.

Ian Paget: Thanks, Marcella.

Marcella Dominguez: Oh, thank you.