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Susan DeMatei
 
September 3, 2012 | Email Marketing, Photography, Print Design, Social Media Marketing, Website Design | Susan DeMatei

THINGS TO KNOW IN TRADEMARK REGISTRATION

What Doesn’t Kill You Makes You Stronger

Welcome to Wine Glass Marketing – same services, same experience and same snarky blog. Just a different name.

Why change my name after only three months of use? Well, three reasons. 

First, I didn’t have anything to do on Labor Day weekend, so why not rebrand everything.

Second, I wanted to give Maggy and Andrea at Napa Printing and Graphics a challenge.

And, third, last week I got a cease and desist from a fancy New York lawyer of a London Based cellar software program which has an admittedly extremely similar name to Vinalytic. Yes, I knew about them, but since they weren’t in the US, and were a different product, and when I searched I didn’t see them in the trademark database and the url was available, I thought I was in the clear.

I was wrong. And since I’m a big believer in learning from your mistakes, I researched how to be smarter the next time. So, dear reader, benefit from my stupidity and I’ll share what I’ve learned in the five business days I was given to re-brand myself.


Land of Acronyms

Even starting off is confusing. With a Google Search you’ll find many lawyers and services, but the office that organizes this is the United States Patent and Trademark Office, or USPTO

USPTO has a wealth of videos and manuals to help you. After a day reading a watching, I can boil it down to the following:

  • A trademark is for a physical item your company provides. A servicemark is a service you provide. This can be confusing. If you are a winery, customers go to you for wine, even if they might enjoy the service of your tasting room. If you are a custom crush facility, your customers pay you for the service of creating wine, even thought the end result is they walk away with a bottle of wine. You can add a TM or SM after filing but before approval, showing intent, but that doesn’t protect you from anything.
  • The first thing you need to do is search the Trademark Electronic Search System, or TESS. Let me tell you, this bitch is coy and she lies. This is where I got into trouble. You aren’t looking for exact matches…you are looking for anything which creates a “likelihood of confusion to a consumer”. And, even if you think you’re in the clear, your application goes under review with USPTO and they have the ultimate say. The implication here is two fold, you have to search many angles, spellings and uses, and, even though you’ve done your due diligence in searching, it can still be refused.
    • So, let’s say Bill Trayed and John Marque form a vineyard management company. “Trayed-Marque Vineyard Management” will probably be refused if there is already a “Trademark Wines”.
  • Which brings me to lawyers. You can hire a lawyer to do a comprehensive search. It is usually between $750-$1000, but even then it isn’t guaranteed that USPTO won’t find something or disagree. BEWARE on this front. In searching lawyers I found several right here in Napa who promise ~$250 filing, but when you read the fine print, you’re only paying them to file the form for you, not do a search.
  • Once you’ve gotten the guts to file, you get to fill out a Trademark Electronic Application System, or TEAS. There are two TEAS, Plus and regular. The Plus form assumes your product or service is already listed in their list of approved goods or services, you will pay with the application, and you agree to all communication over email. The fee for a TEAS Plus form is $275. The regular TEAS form assumes you need to add your good or service to the list, or talk to someone regarding your application. The fee for that is $325.
  • In the form, there are three major questions to be prepared for. The first is what are you trademarking, the words, stylized words (fonts) or graphic/picture/logo. Just the words provide you with the most flexibility to change your logo over the years. (Jeez, with some of these big wine brands that change their wine labels with every new right-out-of-MBA-school-marketing-manager, I can’t imagine the paperwork.)
    • The second question is what good or service you are attaching your name to. This is a very long list, and timed out on me three times, so grab a glass of wine and be prepared. The key according to the directions is to be encompassing, but specific. So, rather than “direct marketing”, say “direct marketing for the wine industry encompassing electronic and digital emails, website, social media and other customer acquisition programs.” Oh, and there are multiple categories with 10-100 sub categories. You have to pay a fee/fill in a form for each category. So, think hard about what you want to claim the core of your business is.
    • The last question is what they call “timelines”. This is if you are using your trademark/servicemark now, or will use it later, and where. If you are using it now, no problem,. If you intend to do it later, they basically hold your place in line, but later you need to submit more forms and more fees showing your usage.

Raise a Glass

So I did my searches, tried to be smarter, held my breath and hit submit. I guess they’ll let me know if it passes.

So for now, I want to toast everyone here in Napa and Sonoma (ok, and Canada) who has given me support in this first three months. Dealing with big-business foreign companies and NY lawyers that don’t give a crap about the wine industry or small businesses or Napa or Sonoma Valley this past week has really highlighted how special our little corner of the world is. Let’s keep protecting our own and working together. Love you guys.

And, a HUGE thank you to Maggy and Andrea at Napa Printing and Graphics who dropped everything to help me. If you need any printing or design done well with exceptional service, call Maggy at 707-251-2760.


PS – so what do you think of the new name? Here were other ones I liked, but for one reason or another, I rejected. (Just kidding, please don’t sue me).

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