Trademarks and your Side Hustle - 10 Quick Ideas


Trademarks and Your Side Hustle

10 Quick Ideas

by Susan Basko, esq.

You may be planning a small business for your retirement or as a side hustle now.  Trademarks are a backbone of a solid small business.  Here are some basics to know:

1. A trademark is a word (or set of words) or an image or a word and image combination that lets the potential buyers know the source of goods or services.  A trademark is often the name of a company or the name of a product (goods) or service that is sold by a company.  

2. A trademark can be real personal. It can even be your own name or your pen name, DJ name, music name, or the name under which you make jewelry, bake cakes, babysit, or mow lawns.  

3. Marijuana-related services and goods cannot get U.S. registered trademark.  That's because, while the sale of marijuana is legal in many states, it is still illegal federally.  If you apply for a trademark for a marijuana-related service or goods, the US Trademark Office will make "inquiries" of you.  It does not matter what you reply, because the Trademark Office in the end will deny your registration.  Period.  Selling terra cotta pots?  You can get a trademark?  Selling pot? No trademark.  Don't waste your time or money.

4. Work with a lawyer on choosing your business name and the names of your goods or services BEFORE you settle on a name.  That's because you want a name that can be registered as a trademark.  Do not sink your time and money into a name that you will have to change.

5. Merely descriptive. Trademark registrations are refused for being "merely descriptive."  "French Bakery" will be rejected by the Trademark Office if it is for a bakery selling French pastries.  However, if "French Bakery" is the name of a perfume, it might be accepted.

6. Geographic names will be rejected if they describe the location of the business.  "Mildred Street Saloon" will be rejected if it is a saloon on Mildred Street. However, it might possibly be able to go on the Supplemental Register.

7. Geographic names that show the source of origin are tricky.  There are rules for source of origin of things such as cheeses, beers, and wines and spirits.  You should absolutely work with a lawyer from the get-go on any of these.  The rules are complex.  For example, a mark that names the geographic origin of wines or spirits will be rejected as being geographic.  On the other hand, a trademark that incorrectly names or implies that wines or spirits are from a geographic region will also be rejected.  If a geographic terms is considered generic for those goods or services, it might be allowed, but disclaimed.  For possible example, the word "Burgundy" is a geographic location, but is also a generic term for a type of red wine, so a trademark such as "Parasol Burgundy," might be allowed, with the word "Burgundy" disclaimed in the application.  Wines and spirits from a geographic location might be better suited to getting a certificate of origin, which is a process different than a trademark.  This is all very tricky and not a do-it-yourself activity.

8. Your trademark cannot conflict with already-existing or already-pending trademarks for the same Class of goods or services.  They don't have to be the exact same goods or services -- just in the same Class.  For example, leather goods are a Class. If someone has already registered a trademark for Pashmina Wallets, you are not likely to be allowed to register a trademark for Pashimina Belts.  

As another example, a trademark for a company that sells drones will be registered as goods.  A trademark for a company that performs searches or photography or inspections via drones is a service.  As it happens, these two are in different Classes.  However, it is not likely a conflicting word mark would be allowed, even though these are different classes, because they both involve drones.  So it is not likely a trademark examiner will allow Skyway as a drone seller if there already exists Skyway as a drone photography service. 

9. A trademark will often be considered to conflict with an existing trademark if they have one of the same words in the mark, even if the whole trademark is not the same.  The two marks may conflict if they are spelled similarly, but not exactly the same.  Alternative spellings may conflict.  Let's say a trademark is Campus Capers.  An alternate spelling of Kampus Kapers for a same or similar class of goods or services will be considered a conflict and the trademark will not likely be allowed. 

10.  TRADEMARK IS NOT A DO-IT-YOURSELF ACTIVITY.  I register trademarks.  To succeed in registering a trademark, I take a lot of time with the initial search and the choice of trademark.  I counsel the clients on whether the registration is likely to succeed.  If it is not likely to succeed, then the person should choose a different trademark, unless they want to take their chance and be willing to risk their money on a possible rejection.  I spend a lot of time on choosing the proper specimen (sample of the trademark in use) to accompany the application.  The overwhelming vast majority of trademark applications fail.  It takes about a year for a trademark application to go DEAD.  If you want to succeed and end out with a registered trademark, do not try to do-it-yourself.