Howdy severisth-ga,
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for informed professional medical, psychiatric, psychological, tax, legal,
investment, accounting, or other professional advice."
The first process is getting a service mark on "Art Bar" for your client.
This is a pretty straight forward process, and can be filed by using the
Trademark Electronic Application System (TEAS) which is an online facility
on the United States Patent and Trademark Office (USPTO) web site.
This will cost $325.00 "per international class" if you do it online and
$375 "per international class" if submitting paper, as of January 31, as
per this USPTO web page.
http://www.uspto.gov/web/trademarks/notices/tmfeechange.htm
"Trademark Filing Fees Change on January 31, 2005"
What does the "per international class" mean? For the service mark for the
bar, you will need to file for one international class, specifically for
something such as "Bar services" (IC 043) if that is all the client does.
If your client wants to sell shirts with "Art Bar" on them, that is yet
another international class (IC 025), and another $325.00, etc.
The place to start for getting a service mark is this USPTO web page.
http://www.uspto.gov/teas/index.html
"The United States Patent and Trademark Office (USPTO) is pleased to present
TEAS - the Trademark Electronic Application System. TEAS allows you to fill
out a form, check it for completeness, and then submit the form directly to
the USPTO over the internet, making an official filing on-line."
A TEAS tutorial can be found here.
http://www.uspto.gov/teas/eTEAStutorial.htm
"Welcome to United States Patent and Trademark Office (USPTO) TEAS TUTORIAL"
International class codes can be found here.
http://tess2.uspto.gov/netahtml/tidm.html
"Trademark Acceptable Identification of Goods & Services"
Just take your time doing the application. It really is not that bad to do,
and if you read the help files the USPTO has online, you should get through
it without too many problems. You can call the USPTO at 800-786-9199 with
questions and they have Frequently Asked Questions (FAQ) web page as well.
http://www.uspto.gov/web/offices/tac/tmfaq.htm
"Trademark FAQ"
There are alternatives to doing it yourself, such as LegalZoom?s "lawyer-free"
service, which runs $149.00 in addition to the USPTO fees.
http://www.legalzoom.com/legalzip/trademarks/products_trademark.html
"Simply answer an easy-to-understand questionnaire, and LegalZoom takes care
of the rest -- no need to download, no need to print."
You can get an attorney instead, and that could run from a few hundred to a
few thousand dollars.
I actually liked learning how to do it myself as that gave me knowledge that
I could use in the future, such as now.
Then, you get to wait. It can take less or more time, but it took 18 months
for me to get my service mark. Even though it appears the service mark that
your client wants is available, this does not mean that it really is available
or that you will get it. It might have already been filed for, or if there is
a dispute for the service mark, such as another company having used it in the
line of business before your client, the service mark application could be
denied. If that happens, you will most likely not get any of the application
fees back.
For the next part, we will assume that you got the service mark. You could
hire an attorney to draft a letter to the domain name's owner at that time,
citing (for instance) service mark (trademark) infringement, and see how they
react. In my situation, I emailed the infringing party, told them of my
intent to file in federal court, and they quickly transferred the domain to
me. As the current owner of the domain name in question is relatively large,
that might not get you very far.
The alternative is seeking a judgment under the Uniform Domain Name Dispute
Resolution Policy (UDRP) which was adopted by the Internet Corporation for
Assigned Names and Numbers (ICANN) and they have more information of the UDRP
on their web site.
http://www.icann.org/udrp/udrp.htm
"All registrars in the .biz, .com, .info, .name, .net, and .org top-level
domains follow the Uniform Domain-Name Dispute-Resolution Policy (often
referred to as the 'UDRP')."
More on the UDRP can be found on these ICANN web pages.
http://www.icann.org/udrp/udrp-policy-24oct99.htm
http://www.icann.org/udrp/udrp-rules-24oct99.htm
This ICANN web page has a list of organizations that can arbitrate or mediate
disputes.
http://www.icann.org/udrp/approved-providers.htm
"Approved Providers for Uniform Domain-Name Dispute-Resolution Policy"
One of the above providers is the World Intellectual Property Organization,
also known as WIPO.
http://arbiter.wipo.int/domains/
"This area is dedicated to the services established by the WIPO Arbitration
and Mediation Center for the resolution of domain name disputes."
They have a good FAQ section which explains their fees, etc.
http://arbiter.wipo.int/center/faq/domains.html
"For resolution of a case involving one to five domain names, with a single
panelist, the current cost is US$ 1,500; for three panelists, the total cost
is US$ 4,000."
A "plain English" UDRP FAQ can be found on the InterNIC web site.
http://www.internic.net/faqs/udrp.html
"The following is a list of frequently asked questions (FAQs) about the Uniform
Domain Name Dispute Resolution Policy (UDRP)."
The above FAQ points out that the process usually takes just a few months.
As with the service mark process, there is no guarantee that your client would
win under the UDRP process. As one commenter pointed out, they might not look
favorably on an "after the fact" trademark acquisition.
As another commenter pointed out, you might want to apply for the trademark,
and offer the current owner (negotiate!) $500 to start with, and go up to
$1,500 (the bottom line for the UDRP process) for the domain name. They
might just go for it, and that could save you some time and money.
If you need any clarification, feel free to ask.
Search strategy
I already knew of the processes involved, so I reviewed the current information
at the following web sites.
USPTO web site - http://www.uspto.gov/
ICANN web site - http://www.icann.org/
Looking Forward, denco-ga - Google Answers Researcher |
