JobMob is now a registered US trademark. This is how it happened.
When I first started JobMob, even though I had no idea where it would be 4 years later, or perhaps because I had no idea where it would be 4 years later, it made perfect sense to protect what I was building. And one of the ways you do that is by trademarking your idea.
I had a feeling it would be expensive, especially for someone who was just getting started and wasn't thinking of blogging as a business, so I did some research and found out that:
- Yes, it IS expensive for a hobby blogger (over US$300 just to file an application)
And that's just for an American trademark. It's even more expensive to file a trademark in Israel.
However, I also found out that according to the US Patent and Trademark Office (USPTO), “if you claim rights to use a mark, you may use the “TM” … designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO).”
In other words-
- You can add the ™ symbol to your logo or product name for FREE
Once I saw that, the JobMob logo had a quick update and the ™ symbol has hung on its right shoulder ever since.
Fast forward almost 3 years from December 2006 to September 2009. I was having a conversation with my friend Susan P. Joyce of job-hunt.org® about the fact that job-hunt.org is one of the few registered trademarks in the job search industry, and Susan explained how she got that done in 2008.
Thankfully, Susan opened my eyes to some bad news:
- The application process is long and drawn out – almost a full year – and that's when there are no snags (!)
- The price I quoted above is only relevant if you file the application on your own, but there are so many non-obvious snags, you'll want to use a trademark lawyer. And that'll cost you 4-5 times the price of the application.
At that point in time, JobMob had already become part of my business, and I was definitely willing to do whatever was necessary to get the trademark successfully registered asap, which meant getting it done on the first try.
The good news was that Susan had a good trademark lawyer to recommend, the one who had successfully registered her job-hunt.org trademark, Mary Casey of Harbor Law in Massachusetts, USA.
A few weeks later, I contacted Mary and we jumped into the registration process.
How to increase your chances of trademark registration success
Mary explained that there are 2 important things you need to do for best chances of trademark registration success:
- Do an exhaustive search of similar trademarks, both registered and unregistered.
- File the application correctly with all the detailed information you're asked for, making sure it's error-free, and tailoring it to avoid collision with any existing registered trademarks.
If you're trying to register a trademark that already exists, your application will be rejected and you'll have wasted time and money.
If a similar trademark exists – slight spelling difference, but same industry/purpose – you can still be rejected, or at least, forced to make changes to your application, prolonging the process by months. That's also true if you need to correct or update information after the initial application was sent.
Finally, you'll want to check unregistered but similar brand names because their owners will have a chance to oppose your trademark application if they want to.
How to search for similar trademarks
I chose the name “JobMob” in 2006 after seeing that although I wasn't first with it, it was no longer being actively used either in Israel or America, and I set up a Google Alert for a basic monitoring of the JobMob brand online in general.
As a result, when my trademark discussion began with Mary, I already had a good idea of where the brand name had been used and I knew of at least some of the problematic, similar brands that we needed to consider. Not surprisingly, Mary was able to find others that I would have never thought of.
The best place to search for similar registered trademarks is using TESS, The USPTO's trademark database search. Not the most user-friendly, but the USPTO website does provide help and explanations about using it.
The best places to search for similar brand names or unregistered trademarks are:
- Of course, the major search engines like Google, Bing and Yahoo
- Across social media, either directly in the networks (e.g. Twitter, Facebook, LinkedIn) themselves or using cross-network search tools like socialmention.
You might also try industry-specific searches or directories, but if your trademark exists in another industry, your application might still be rejected. A trademark lawyer would know.
DO NOT post questions in LinkedIn Answers or any other public forums, asking for help and suggestions about competing trademarks. Here's why- assume that competitors are watching their brand names too, and the last thing you want to do is announce that you're about to start a long process that might have a negative result for them. You really want to avoid someone opposing your trademark application.
Back to the story…
Annoyingly, after all our searches, there was ONE competing registered trademark that had us concerned. Mary had found it, but it slipped past me and I'd even mentioned it in a past JobMob article!
Arrgh! So close!
How to file your trademark application correctly
I won't go into too much detail here because Mary filed the application for me, but I did double- and triple-check all the information Mary asked me for.
The tricky part for us was to write a trademark description that sounded different enough from the competing one we were worried about. Mary's advice was that if the USPTO did ultimately require us to update the description, it would be less risky to take a general description and make it more specific than vice-versa.
So what happened?
On January 25th, 2010, the application for a US trademark of JobMob was officially submitted.
The official status report for the application shows all the information I had checked so carefully, and details the timeline of events stretching until August 24th, 2010, almost exactly 9 months to the day of the submission.
One week later, Mary's office received official notification that the trademark had been registered.
And now, the newly-updated JobMob logo appears across the site. Yay!
One last warning
As you can see in the status report, by submitting an application to the USPTO, you make a lot of information public.
And there are many people watching.
Less than 2 months after the application was submitted, I received a very official-looking letter from the very official-sounding “US Trademark Maintenance Service” trying to sell me a yearly US$400 service to monitor my trademark. At first I thought it was from the USPTO itself, but it's not, and Mary also told me that I didn't need it anyway.
And finally, since I know many people will have this question-
What if you can afford to register a trademark but can't afford a trademark lawyer?
- Use the tips above to search for competing trademarks and brand names
- Study the resources & help guides of the USPTO website
- Get writing inspiration from existing results in TESS
- If you anticipate any potential snags, get guidance on Linked Answers (without mentioning specific trademark names) and legal forums like TheLaw.com's, or even in blog comments on legal blogs.
- If you experience any snags after the process has begun, hopefully by that point you'll be able to afford the legal fees with the end in sight.
If you liked this article useful, see also my 200+ Resources and Tips To Help Manage Your Reputation Online where you can find more tools for searching & monitoring brand names, including personal brand names.