Hi,

How does one trademark something like Got Milk?  And how is trademark
infringement determined?  Obv., I have something I would like to
trademark, let's pretend "Got X"?

Looking forward to seeing an answer.

Thanks

Hi Vlad ~

While filing a Trademark Application is not a particularly "hard"
process, it IS a very detailed process, and it can take as long as a
year to get your trademark registered.

Before I get into too much detail, please pay attention to the
disclaimer at the bottom of this page. I am not an attorney and this
should not be mistaken for legal advice.

Since you mentioned "Got Milk?", I am going to assume you are talking
about registering a trademark in the United States, and answer your
question accordingly. However, if you are referring to an
International Trademark Registration (and the US is a part of the
Madrid Treaty, which mutually respects trademarks from other
countries), there is information on that procedure here:
   - http://www.uspto.gov/web/trademarks/madrid/

and here -
   - http://www.uspto.gov/web/trademarks/madrid/


Of course, there's a lot of paperwork involved, and if you miss or
overlook one detail, it can delay the registration process.


To answer your questions:

1. Start with a search
=======================

The first thing you will want to do is to search the existing pending
and registered records to see if someone has beaten you to the punch
and already trademarked "Got X?"

You can look up the records on the United States Patent & Trademark
Office (USPTO) website, using the Trademark Electronic Search System
(Tess):
   - http://tess2.uspto.gov/bin/gate.exe?f=tess&state=8hrfte.1.1

I'd suggest using the New User Form Search (Basic) first, which you
can refine later if you wish, but this will give you the broadest
possible search of "Got X?"

The instructions for Tess are at the bottom, should you wish to modify
the terms used, and remember, while Tess is pretty comprehensive, it
doesn't *ALWAYS* mean your mark is available for registering. On the
other hand, it's a pretty good indication that it "probably" is
available.

If you find "Got X?" is trademarked, it doesn't necessarily mean it
isn't available to you, because your use of it may be entirely
different from and won't be so similar as to be confused with a
currently registered trademark.


2. Forms and Filing
====================

You can file electronically, in fact the USPTO prefers it, using
Trademark Electronic Application System (TEAS), which you can find
here:
   - http://www.uspto.gov/teas/index.html

Or, you can file a paper copy by mailing the fully completed forms to:

     Commissioner for Trademarks
     2900 Crystal Drive
     Arlington, VA 22202-3514

You can do it yourself or hire an attorney, but if you appoint an
attorney to represent you, they will NOT discuss the matter with you.

More information can be obtained on the USPTO website here:
   - http://www.uspto.gov/web/offices/tac/doc/basic/howtofile.htm


Besides online help for items on the forms, information about the
form's content and requirements on how to answer can be found in "WHAT
MUST THE APPLICATION INCLUDE?" here:
   - http://www.uspto.gov/web/offices/tac/doc/basic/appcontent.htm


3. Fees
=========

The new fee schedule, effective October 1, 2003, can be found here:
   - http://www.uspto.gov/web/offices/ac/qs/ope/fee2003oct01.htm



4. What Happens After You File Your Application?
=================================================

Basically, after your Application is filed, it is forwarded to an
examining attorney who determines if it meets all applicable rules
under the Trademark Act of 1946, 15 U.S.C. §1051 et seq., and the
Trademark Rules of Practice, 37 C.F.R. Part 2. This procedure may take
months.

This stage of the procedure, along with your options if your
Application is denied, is discussed here:
   - http://www.uspto.gov/web/offices/tac/doc/basic/afterapp.htm


5. All information available
=============================

The USPTO site for Trademark Information, really has all the
information you might need, including the forms, procedures, including
notifications, appeals processes, etc., all in one handy site. In
fact, for a government site, it's remarkably easy to navigate and find
the answers to questions and other information you will need.

This is, I am assuming, so that you can keep up with where your
particular application might be in the process - and I suspect that if
you file your Application you will become all too familiar with the
site.

  
6. What is trademark infringement?
===================================

Trademark infringement - in laymen's terms - is basically when someone
uses your trademark, or one similar to it, so as to create confusion
as to his association with the trademark owner or product/service
which the trademark represents.

There are some circumstances I could use your trademark on my own
website, or in my material, attributing the ownership as not my own.
For instance, I could discuss "Got X?", and then state somewhere
visible that "Got X?" is the registered trademark of Vlad.

The Bitlaw website discusses trademark infringement on its site in
"Trademark Infringement" here:
   - http://www.bitlaw.com/trademark/infringe.html

and "Trademarks On The Internet" here:
   - http://www.bitlaw.com/trademark/internet.html


Both of the above pages contain fairly comprehensive information about
what is - and what is not - trademark infringement and are a good
reference source.


Search terms used:
  - Trademark infringement

I am also familiar with the USPTO website, as I regularly use it in
the course of business.


By the way, using Tess I found out that "Got Milk?" is a registered
trademark of the California Fluid Milk Processor Advisory Board, STATE
AGENCY CALIFORNIA, 1801A Fourth St., Berkeley CALIFORNIA 94710.

Thanks for asking - and good luck with "Got X?"

Serenata
Google Answers Researcher

Excellent.  Concise yet thorough.

Dear vlad,

Please allow me to comment (along with serenata's excellent answer) as
follows:

Generally speaking, a trademark is anything (a slogan, word, picture,
color, sound, smell) that has been appropriated and used by someone in
an effort to create source identification in the minds of consumers. 
For example, when I say, "Coke," you do not think of running shoes,
and when I say "Nike" you do not think of soft drinks.  This is
because Coca Cola and Nike have appropriated (used) these words and
their associated slogans, logos, songs, images, swooshes and shapes
and spent millions of dollars to create source identification with
their products in the minds of consumers.

Rights to a mark accrue on use of that mark on goods or services in
commerce.  You can perfect and enhance your rights to a mark through a
separate process called federal registration, but as long as you use a
mark, you may have enforceable rights to it.

A trademark, by definition, cannot be generic, i.e., you cannot use a
generic word as a trademark for that thing.  For example, Nike could
likely not obtain trademark rights in the phrase "running shoes."  But
Coke maybe could, as long as they were not trying to use it to
describe, well, running shoes.

So, I agree that it is curious that that someone was able to claim
trademark rights in "Got Milk," for milk, since the mark contains that
generic word.  But if you look at the federal trademark registration
for "Got Milk," owned by the California Fluid Milk Processor Advisory
Board, they had to disclaim the generic word "milk."  (It is
Registration No. 1903870 if you want to look it up at uspto.gov.) 
Similarly, I bet if Nike tried to register "running shoes" they would
have to disclaim the generic word "shoes."

So, you could very well claim trademark rights in the phrase "Got X,"
as long as it was not confusingly similar to the California Fluid Milk
Processor Advisory Board's registered mark or someone else's
registered or common law (unregistered) mark.  Thus, you could use
probably use "Got Tools?" for a tool shop as long as consumers were
not confused by your mark and somehow believed that the California
Fluid Milk Processor Advisory Board was sponsoring or endorsing your
store (one of the tests for confusing similarity).  Also, you would
probably not have any enforceable rights to the word "tools" as a
generic component of that mark.

One caveat: once a mark becomes "famous," you do not need to prove
confusing similarity to prevail in a claim of trademark infringement. 
"Got Milk" is so widespread and popular and that it may by now have
acquired "famous" status, and if so the California Fluid Milk
Processor Advisory Board could likely prevail over anyone who was
using "Got X" since the intent is obviously to palm off of and
capitalize off of the fame and strength of the "Got Milk" mark.  I
mean, why would you even want to use "Got X" if not to capitalize on
the notoriety and strength of "Got Milk?"

This was a high level overview--let me know if you need clarification.

Many thanks for the insightful comment.  

-vlad