Trademark

A trademark is a word, phrase, symbol, or design that identifies and distinguishes one product from another. Such as brand names, logos, and slogans. In the United States, trademarks are handled by the Patent and Trademark Office (USPTO). You can go to their website (www.uspto.gov) and search their trademark database via Trademark Electronic Search System (TESS) to see what trademarks are already taken. In board gaming, you’ll need to trademark your game’s name and logo.

There are two types of trademarks: Standard Character and Special Form.

With Standard Character you’re registering only the lettering, not the font, style, orientation, or any design features. You’re basically protecting the wording, not the logo.

With Special Form you’re registering the entire design. You are copyrighting the exact presentation of the name/logo. Even if there are words within your logo, they are not copyrighted as if they were under Standard Character. They're only copyrighted in the exact depiction you registered. So if your logo should change, you would need to register another trademark for the new design.

You may be wondering why not just do Standard Character, that seems to give blanket coverage on anything you might do. Yes and no. The government is actually pretty lax on trademarks. For instance a small business in California can use the same brand name as another company in New York, because they do not infringe on each other’s territory. So you might want to distinguish yourself with a specific logo in case you grow bigger or do a lot of business online. Also, not all brand names can be trademarked. It's hard (but not impossible) to claim rights to words like Apple and Patagonia. One’s a shitty fruit and the other’s a mountain range, those are universal terms. It's much easier to trademark a Special Form logo that contains those words.

I personally recommending filing twice: once for the generic lettering and once for the specific logo. This way you’ll get maximum coverage. You’ll need to make an account at the USPTO website. You’ll want the TEA Plus application. It’s $225. It’s not the world’s clearest application, but you’ll manage. Except for:

You will need to decide if you are filing Intent-to-Use or Use-in-Commerce. 

Intent-to-Use means you don’t actually have and sell a product yet. You’re claiming your trademark in advance, which seems logical. Except it’s kind of a pain. Once your trademark is cleared, you still don’t own it. You will eventually have to file a Statement of Use, which basically says “Yes, I am now in business and actively using the trademark.” So while this scenario is probably more accurate to your situation, it’s more paperwork, more fees, and takes longer to process.

Use-in-Commerce means you’re already doing business. You will have to prove this. Thankfully you don’t need to show a tax return or anything. You only need to upload a "specimen" which is basically a picture of the product with your brand name affixed. So for board gaming, just a picture of your actual game box. If you haven't started manufacturing, a half-decent prototype would probably do. This is definitely the way to go, much easier (even if it’s not entirely accurate to your situation).

The USPTO says you can also use a screenshot of your website, to prove you're selling the product. But your website has to actually be selling the product not just advertising the product. I tried doing this method, but my website simply has a link to Amazon which apparently was not good enough. Here is their response:

 

You will need to assign your trademark to a goods/service class (or multiple classes). The class signifies what industry your trademark is used in. You'll use there IDManual to look up your class (board games are Class 28). Most importantly, you pay for each class you select. They advertise the application fee as $225, but that's for each class you select! So if your brand is relevant in more than one industry, and you want trademark protection in each of those industries, you'll need to add each class. For instance, my Lost Boy Entertainment brand does both film production and board games, so that's two classes.

In the application, you can also connect other similar marks you already own. Such as connecting your Special Form mark to your Standard Character mark. Or linking new logos to older ones.

After filing, you will be given a serial number. Your serial number is not your registration number! Your trademark has not been registered, there is a painfully long clearance process. The USPTO will analyze your application, which usually takes three months. Then they publish your trademark for opposition, giving the public a chance to oppose the trademark. That window lasts 30 days. If you selected Use-in-Commerce, then a couple months later you will receive your registration certificate. If you selected Intent-to-Use, you’ll receive a Notice of Allowance instead, which asks you to file a Statement of Use. You can check the step-by-step status of your registration process on the website under: Trademark Status & Document Retrieval (TSDR). You can also access the same info through your account home page.

 

Some quick side notes, you will receive a bunch of spam after submitting your application. Lawyers will be trying to get you to hire their services to help you complete the process (even though there's nothing left to do). Fake agencies will be demanding that you owe money. It’s super annoying. But the actual USPTO might reach out. An examiner is assigned to your account and might ask questions, give recommendations, or give you an order (known as a non-final office action). You have six months to respond to a non-final office action before your case is abandon.

The government does not monitor or stop others from infringement trademarks. Most people think the government is responsible. Nope, you are.

A trademark will last for as long as you use and maintain it. To maintain your trademark registration, you must file a Declaration of Use between the 5th and 6th year after the registration date. And then again between your 9th and 10th years. And then between every 9th and 10th year after that.