Trademark — Check!

Not exactly sewing related, but I’ve had so many requests for this information, and this is really the only place I have to put it.

Last March, after spending too many hours working on SEO (search engine optimization) for my company website, I realized there are just too many damn companies that use the name Firefly.  I knew the domain owner of “FireflyFabrics.com” has never, ever published a site with that name, but he wants $10,000 for the rights to the name.  Whatever.  Then in a few of my Facebook groups, too many very good, very innocent people were running into huge headaches because others were using their chosen company names or designs, yet they really had no recourse because they didn’t have enough official documentation to prove it was theirs in the first place. So I decided it was time to look into a trademark filing.

When I started this company, I filed for various things before doing anything else — business license, resale license, DBA paperwork, tax stuff, blah blah blah.  I bought domains, and set up an account so that my entire online presence would be automatically saved and marked in case I ever ran into a copyright issue.  But I never approached the trademark issue because, let’s face it, it isn’t cheap…everyone told me that I needed an attorney to do it for me, and even without an attorney, the filing fees for my two classes would be $450 alone — including a $200 discount.  Yikes.

Being the cheapskate that I am, and considering the fact that I usually stupidly assume I can do something — anything — until proven wrong (which is often, believe me), I decided to just file on my own.  It was tedious and a royal pain the rear, but really, not so bad — and definitely not difficult. Everything worked perfectly, until a little issue with J&P Coats (as in Coats & Clark, thread folks for those of you who sew), which I’ll get into later.  But first, mostly for my FB small business group friends, I wanted to give a quick outline on how to file on your own:

1. Set aside (or acquire) the funds. Normal filing online for one class is $225 to $325, depending on how you file.  Most WAHM (Work At Home Moms) who run a small business will only need to file in one class.  I filed in two, because my business includes selling supplies and selling finished garments.  Of course the USPTO (US Patent & Trademark Office) separated these…so my cost was $450.  More on cost later.
2. Watch the videos on searching existing trademarks HERE.
3. Do an exhaustive TESS search.  TESS stands for Trademark Electronic Search System, and you can access it HERE.  Before conducting a search, you may want to check out their helpful how-to page.  Start with a basic wordmark search, but don’t stop there.  For example, if you type in “Firefly,” you’ll get 1056 results.  Go through each one.  But don’t stop there…after searching with the basic wordmark search, go back and use the structured search and the free form search.  The links are all on the main TESS search page.  I realize this is going to take hours…but it’s worth it — unless you don’t care about throwing $225 per class down the toilet.  Once you pay, that’s it…no refunds, whether or not your trademark is approved.  It’s like the most stressful gamble EVER because you’re betting on a US government agency.  Do the search, then do it again.
4. Now it’s time to start thinking about filing.  Go to the info page at TEAS (Trademark Electronic Application System) here.  Click the links for any parts of the process that are still a little fuzzy for you.  I suggest trying to go the TEAS Plus route, because a) it’s the cheapest, and b) if you’re computer savvy enough to file online, there’s no reason for you to not get your correspondence via email (the other two filing processes mail stuff to you…but hey, for a $100 discount per class, I’ll take everything by email, thankyouverymuch).  All three options are laid out clearly on the TEAS application page.  There’s a great set of videos HERE, which really walks you through the entire application process.
5. Before you start to file, get your proof and photos ready.  Like many online application systems, this one can time out — so if you don’t have enough time at one sitting and if you don’t have your files in order, don’t start the process until you’ve got about 90 minutes to spare all at once.  If you’re creating a brand spanking new trademark, then you don’t need these additional files — but generally, most people file after they’ve already designed and used some sort of business mark because that’s when they realize they have so much time/effort/energy/dollars invested in the mark and its use.  You’re going to need photos as proof of this — hang tags, garment tags, business cards (though a business card isn’t going to be enough proof), signage in your store, brochures, flyers, etc.  You can submit multiple forms of proof, and I suggest you do this.  After my initial filing, they wanted more specific proof because my business card wasn’t specific enough…so I took photos of every single thing I could think of, and submitted them.  Nothing fancy — I used my cell phone and didn’t clean up the photos or anything.  If you use a business card, you just need to be sure that your business type is very clearly stated on the card, and it matches the class in which you’re filing.  If it’s vague, submit other proof as well.  A business card is sort of generic, but a tag sewn into a garment is very powerful.  If you do use a business card, be sure to take a photo of it — don’t just submit your original artwork file.  You need to prove you’re using this mark…and just having the digital file isn’t good enough.

   

6. Stay in contact. You’ll get a few emails from the USPTO, but you’ll get lots of emails from various people and law groups telling you that you need their help.  You probably don’t.  In fact, the USPTO even warns you at the end of the application process that you’re going to receive unsolicited emails, so you need to be very careful about what you keep and what you trash — because sometimes these unsolicited emails (and even snail mail…more on that later) look official, and the USPTO emails blend right in.  Don’t accidentally trash something from the USPTO!
7. If you need to add something later or amend your application, there are links here to do it. I did add additional proof about two weeks after my initial filing, and it was easy.  HOWEVER, a few months later the USPTO asked for the exact proof I’d already filed, so I am not sure just how connected these amendments and additions are to your actual initial application.  As soon as I sent these same .jpg’s again, the application was approved.  So just be diligent, and don’t be afraid to submit more than you think you need.  One additional hint: when I was asked to send additional proof, I noticed that some of my original photos were no longer attached to my application…so I resubmitted them, too (this is part of the “online application process that doesn’t save attachments after you close your browser” thing, and it’s totally normal.  Just submit them again).  Just something to check on, should this happen to you.  I was also asked to “exclude” claim to the word “fabric” unless it’s attached to the word “Firefly” or to my logo.  At first I freaked because I figured that was obvious (I mean, how can you trademark the word “fabric?”), and because I had no idea how to do this because it wasn’t part of the original application — but, of course, they actually give you suggested wording in the email; so all you have to do is follow their very clear directions, cut and paste the exact wording they give you, and you’re good to go.  If there are any issues, they give you the opportunity to amend your application, and if you take their exact suggestions, your application could be approved in a matter of a couple weeks.  As difficult as they make it sound in the beginning, once you actually apply, they really seem to go to great lengths to help you along.
8. Follow up.  This is a slow process, but you can track the progress of your application online easily.  You’ll receive a US Serial number quickly, and you’ll need that HERE to track your application.
9. Publication.  You’ll get an email, usually about 4-6 months after your initial filing, telling you that your application has been approved for publication (because you did such an exhaustive search first, right?).  But you’re not finished…as I unfortunately learned.  Anyone can file an opposition to your trademark, or they can file for an extension (companies and individuals have 30 days to file this sort of thing after the publication date).  As exciting as it was to see my mark in the USPTO Gazette, two days before the end of the 30-day window I received several postcards from random law firms telling me I needed their services to defend my trademark.  What??  I was confused, so I checked online…and sure enough, J&P Coats filed for an extension so that they could investigate how my mark was going to confuse and befuddle their customers.  Now, I could go off here about how stupid this is, how their “Firefly” thread isn’t even sold retail in the US (it’s thread treated with fire retardant for things like bullet-proof vests and fire fighter jackets, and obviously big manufacturing companies looking for fire retardant thread are going to be very confused and attempt to purchase it using their Paypal account from a garage roller skating dress sewing business with purple rhinestones all over the website, because yeah, it’s so similar and confusing), how their marks are registered in totally different classes, how they only registered the name “Firefly” with no logo or anything else, how stupid it is that a huge European company who used to have the total corner on the thread market would be so pathetically worried about a tiny little silly skating fabric company in the middle of nowhere, but I’ll refrain…

So anyway, I did a lot of research, and apparently there are attorneys who do nothing but file these sorts of things, and then they go back to these big companies to present their case to see if they’re willing to pay them to pursue it.  The man who filed against me has filed hundreds of these things (you can search for almost anything in the USPTO web pages!)  As of this morning, two days past their additional filing deadline, J&P Coats hasn’t given this guy the go-ahead bucks to come after me, so right now it looks like I’m in the clear!  Officially I have to wait eleven weeks for my final final final letter, but a quick email from the USPTO tells me I’m ok.

So that’s it — how to file in a long-winded nutshell.  To anyone who has made it this far in this very long post, if you’re thinking about a trademark filing, you can do it!  I found that the stress wasn’t in the application at all — it was in the waiting and wondering, which I still would have had to do anyway had I paid an attorney a few thousand dollars to do it for me.

Good luck, and happy filing!

ADDENDUM 5/12/2016: BTW, I received my official and very cool looking US Patent & Trademark Office certificate on December 8, 2015 — less than 9 months after my initial filing.  That may seem like a long time, but I don’t care…I’ve got the cert in my hot little hands, so I’m happy!  In fact, I learned today that the USPTO actually does a bang up job of defending trademarks they’ve approved without you having to lift one tiny finger…so if a trademark application comes in that seems to infringe a bit on one they’ve already approved, they reject it.  The applicant can always appeal, but the point is that there’s a reason these applications take so long…and if it’s because they’re doing all this work for me, I don’t mind one bit.  I thought I’d have to scour the Gazette every month, but nope — they’ve got my back, so I can get on with doing the stuff that made me file in the first place.