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[pqsfb]

I am new in trademark, and please help.

I am running a small software business for two years. I use a mark that is a drawing with my company's name under it. Now I want to register it as a trademark, so that no one else can use my business name in their software product, and no one can use my drawning in their software product either.

When I read some basic information about the trademark registration, I found that there are two formats of marks: 1) standard character format; 2) stylized or design format.

Which format shall I use to achieve my protection purpose? Or shall I register two marks, one in standard character format; another in design format? If I use the design format, shall I use just the drawing or the combination of drawing and name?

Thank you very much!
-pqsfb

[TheTrademarkCompany]

A standard character format protects the words in the trademark for any font, appearance, color, stylization, etc.  Accordingly, in theory the protection afforded to a standard character mark is much broader than that afforded to a stylized mark.

In regard to which and/or how many variants should be applied for, this is most likely a business determination based upon the amount of resources you wish to devote to the protection of your brand(s).

For instance, Nike may apply to register the slogan JUST DO IT alone, the Swoosh symbol alone, as well as the Swoosh symbol and JUST DO IT underneath the same to maximize protection.  But Nike's economies are significant compared to the cost of a trademark application.

So determine a reasonable budget for what you can afford to invest in the registration of your marks and once you figure out the cost of filing for the same (government filing fees, private law firm or filing company services) you may then decide which marks should be applied for within your budget.

Hope that this helps,

/Matthew H. Swyers/
The Trademark Company

[pqsfb]

Metthew, Thank you for the timely reply.

I just noticed another issue. I always "ship" the software through email to my customers. How can I showed evidence that I have used the mark (a drawing with ABCXYZ under it) for two years? Which of the followings is good for this purpose?

1) My company's website with the mark.
2) My partner companies' webpages showing my product introduction with the mark.
3) Flyers of the product
4) Business card (but there is no date on the business card)
5) Invoice to customers with the mark
6) License agreements (contracts) with customer. It's a 10 page document, and the name of the product (leading with the ABCXYZ) is mentioned several time.

Thanks,
-pqsfb

[JSonnabend]

Does the software have a splash screen showing the mark(s)?  If so, a screen capture of that will suffice as a specimen.  Webpages offering the software for sale, preferably with a means for purchasing the software, will also suffice if they include the mark(s).

- Jeff

[TheTrademarkCompany]

Looks like Jeff got the answer to your latest question ... he is spot on ...

Let us know if you have any other questions,

Matt

[pqsfb]

Jef and Matt,

Thanks for your kindness. Unfortunately, the software we developed is embedded in chips and works "silently".  I still have a headache in finding a "specimen".

Regards,
-pqsfb

[JSonnabend]

How do you use your trademark?  Where does it appear?  Who do you sell it to and how do they learn of your software?

- Jeff

[pqsfb]

we use our mark on the followings:
- on our website, just product introduction, can not order oline
- on partners' websites (listing our software),
- on product flyers used in tradeshow (distributed in our partner's booth)
- mentioned in NDA with potential customers
- on our quotations to customers
- on our license agreements (contracts) with customers
- on our invoices
- on our datasheets & user manuals

But the shipment of the software is just an attached to emails. The customer need to "link" our software (just like a library) to their our software and make a final software. The software is typically used in some equpiment without any displays. (Think of the software in an automotive engine, or in a black box in an airplane. End users typically don't realize there is software inside such equipment. Even if they know there is software inside, they only know the equipment manufacturers. The equipment manufacturers are our customers. They are huge companies, and they don't want the end users know that a piece of software inside is actually from a small company.)

Which one in my list can be used as  a specimen for the trademark use? If none, what else can I do?

[JSonnabend]

The invoices, licenses, nda's and those types of things won't qualify as specimen.  The websites, product flyers and the like might (but also might not).  Best bet is to have a qualified TM attorney look at the materials directly.

I'm afraid from the information you've given, there is no obvious answer.

- Jeff