I am developing a niche social network focused on sport. It will also include a forum. I am thinking that I should trademark the name but notice that it can cost a lot depending on how many classes are covered.
1. If cash is tight is it worth registering a trademark initially?
2. Is it beneficial to just register under one of the main classes relevant to social networks. What degree of protection would this provide?
3. What are the most relevant classes in my case that I should look at registering.
thanks for your help
1. Yes, starting a business requires an outlay of capital. When developing a web-based business, it's a matter prudent management as one judges to how much to spend, and when, for various functions . These would of course include web design, construction, and hosting, marketing communication, and such services as accounting, legal and insurance.
In the U.S., there are two ways that a business can develop rights in a trademark. One way is to seek federal trademark registration on the basis that the business "intends to use" it interstate commerce starting in the foreseeable future. Another way is to start using the trademark in connection with an existing business and gain mindshare for it among prospective customers.
The first way effectively "reserves" the trademark from the date that the application is filed with the federal government (provided the application is eventually approved by a Trademark Examining Attorney at the US Patent & Trademark Office). The second way depends on the slow development of "goodwill" among the consuming public.
In my view, it makes sense to allocate a portion of startup costs to obtaining a search of other's trademarks from an attorney who'd provide a "clearance" opinion letter, advising that it's unlikely that another business already has developed superior rights in the desired trademark or one confusingly similar to it ... and then promptly seeking at least one trademark registration at the outset.
2. This is a good question, and in my view, the answer is favorable. A federal trademark registration by Company A recites the goods or services to which the trademark applies. But if a different business (Company B) thereafter starts using the same trademark for different, but somewhat related goods or services, then Company A would have two benefits. The first is that Company A would be entitled to sue Company B in federal court for trademark infringement, even though Company B's product is different from what's recited in Company A's trademark registration. The second is that if Company B seeks to register the trademark at the Patent & Trademark Office, it's possible (but not assured) that a Trademark Examining Attorney would reject Company B's application on the basis of Company A's preexisting registration, even though not for identical goods or services. That's because the test is not whether Company B's product is the same as what's recited in Company A's registration, but rather whether there's a "likelihood" that a hypothetical consumer who is aware of Company A's product/service would be confused as to the source or sponsorship of Company B's product/service when encountering it tied to the trademark in question.
3. For actionable legal advice, you should engage an attorney with experience in trademark registration practice and confidentially disclose your business plans. YAsk the attrorney about the difference between filing under TEAS or TEAS Plus. To prepare for such a discussion, you could consult the US PTO's searchable database of acceptable descriptions of goods or services at the following URL: http://tess2.uspto.gov/netahtml/tidm.html
Right, TMs are per mark and per class, and at a $325 minimum USPTO fee each, not even including legal fees, this can definitely get expensive.
You acquire TM rights from USE, not from REGISTRATION, so while you don't NEED to register anything, frankly you'd be foolish to invest the time and money in developing something and marketing it to get it known under 1 brand name, only to have to change that name if that name turns out be not viable and/or not available.
This isn't a DIY job, just as a lawyer shouldn't be trying to develop computer code. Hire a lawyer for help.
Kevin Mark JonesIntellectual Property Law AttorneyThe Woodlands, TX ·
If cash is tight, you should seek funding in some fashion. If you cannot afford to protect your idea properly, you are taking a chance that you may simply be wasting your money. When money is tight, the proper action would be to seek professional advice and spend the money you have wisely.
The most relevant classes in your case would depend on your short term and long term goals for the business, and without a business plan, anyone helping you would simply be guessing.
If cash is tight, this is the least of your problems. Trademark rights arise from use in commerce, and registration often can wait for start-up companies. But some things cannot wait, First, you need counsel to perform a trademark search and, more generally, work with you on your branding. Branding this web-site (choosing trademarks and logos) is one of the most important business decisions you will ever make, and you should not and cannot reasonably do this without working closely with experienced IP counsel. Working with IP counsel should be one of your two or three highest budget priorities---otherwise you will undoubtedly make financially damaging errors.
An equally high priority for a web-site business such as this is that you retain counsel to conduct a patent search. There are literally dozens of patents (US and foreign) relating to social network web-sites, and you may need licenses from them in order to operate.
And if you are going to include a "forum" for comments, you need to develop terms of use that assure your compliance with the Digital Millennium Copyright Act, state and federal privacy laws, laws relating to the participation by minors in your web-site's activities, and numerous others. You are going into the internet service provider/publishing businesses, and you are competing against many well-established web-site operators. Anyone who goes into a business like this absolutely must have IP counsel (and business counsel) on speed dial. Most web-site operators have in-house counsel who work for them around the clock, because IP and related legal issues constantly arise. If you do not have a budget for IP counsel, then frankly you probably do not have adequate capital to operate this web-site.
