At VeriTrademark, we want you to understand how to go about securing a distinctive mark that also offers strong legal protection. Thus, we have outlined a general approach to securing trademark protection that will work for most new businesses and anybody else who plans on selling a product or service beyond local markets. This approach is a three step process:
- Spend time creating a distinctive mark
- Validate this mark via a trademark search
- Register the mark federally with the USPTO
Step One: What Is A Distinctive Trademark?
A trademark must successfully identify your goods or services in the mind of consumers to offer strong legal protection. In other words, it must be distinctive; the law offers varying degrees of protection for varying degrees of distinctiveness (see our Article About The Five Categories Of Trademarks. For example, a high level of protection exists if a mark was arbitrary (i.e. no suggestive meaning) prior to being adopted by a business for use as an aid in commerce.
Many entrepreneurs and new businesses make the mistake of using marks that piggyback on the goodwill of existing marks, or at least contain some similarities. Some entrepreneurs think that an advantage to this approach is that it will hint to consumers that your product is similar in quality to the existing product. However, this approach can cost you dearly in a trademark infringement suit (even if you are able to establish that your mark is sufficiently different, defending your rights may be so costly as to put you out of business). Moreover, this strategy will yield you only very weak trademark rights if your business succeeds, since your identity is linked to another. The upshot is that it is almost always worth the effort to choose an identity that stands on its own.
Step Two: Trademark Search, How and Why?
A trademark search is a systematic hunt for existing marks that legally conflict with your proposed mark. A competent search identifies both direct conflicts and analytical conflicts. An analytical search scans for non-obvious conflicts like homonyms, synonyms, anagrams, phonetic equivalents, alternative spellings and other similarities. Entrepreneurs often possess a do-it-yourself ethos, but trying to do a good trademark search yourself is folly because of the steep learning curve involved. A trademark attorney can perform the search and interpret the results for you much more efficiently. You may also outsource portions of the search process to trademark search firms, but these firms are not allowed to interpret the results (because they would be guilty of unauthorized practice of law).
You should plan on spending a few hundred dollars per mark on a trademark search to validate the mark. The function of this search is preventative; it may save you a lot of time, money and aggravation later. Ideally, your search will result in an informed opinion that your attempt at federal trademark registration is not likely to fail. It should also result in an informed opinion that your mark will be secure from future attack by other trademark owners. Please keep in mind that no matter how thorough your search, and no matter how brilliant your attorney, there is always risk that a confusing mark is overlooked or goes unnoticed. It is not possible to uncover all possible conflicts with a mark or to predict with certainty how a judge or jury might react to a future dispute over whether a mark is confusingly similar or dilutive to another mark.
Step Three: Trademark Registration, How and Why?
To reinforce a point made above, you should not attempt federal registration of a trademark without first doing a competent and thorough trademark search. Federal registration of each mark currently costs $325 per mark per class. You may wish to register multiple marks and each of these may require protection in multiple classes (there are 42 classes in all). Since you will have to pay the fee regardless of whether the mark is accepted or rejected, you want to be assured of a reasonable chance of success when you file an application.
Before you go about registering a trademark with the USPTO, you should understand a critical principal of US trademark law; namely, federal trademark law is governed by the principle of first use, rather than first registration. That is, you get some legal rights simply by using a mark in commerce, and these rights may trump later registration of the same mark by another party.
Nevertheless, federal registration is usually a good idea for all businesses except very small and local concerns; federal registration of a trademark confers important benefits and advantages to a registrant. These include notice to the public of the registrant's claim of ownership of the mark, a legal presumption of national ownership, and the exclusive right to use the mark in connection with goods and services set forth in the registration. There are other advantages as well -- basically, federal registration makes it easier as a practical matter to enforce your rights to your branding tool. The only surefire way to enforce your rights to a trademark is to file an infringement lawsuit, and federal registration establishes many presumptions in your favor that the other side must overcome; these cement the real power of your rights.
When Should I Involve An Attorney In This Process?
It is a shame that attorneys often get involved in a business issue only after a dispute has arisen and the specter of a potentially expensive, time consuming and emotionally draining lawsuit is looming. A smarter approach to managing your intellectual property is to harness the expertise, vision and judgment of a good attorney to head off such problems. A good attorney can help with all three of the steps outlined above. For example:
An attorney can be consulted to help you narrow the field of potential marks for your business based on their legal strength and marketing appeal.
An attorney can interpret your trademark search to validate the strength of a mark, thereby reducing the risk of that you will be unsuccessful with either registration of your mark or future conflict with another trademark owner.
An attorney can prepare your federal (or state, if appropriate) trademark application, efficiently handle snags and assist with international registration, if applicable.
Please Click Here for a PDF version of this article.
Danny Bronski is an attorney licensed in WA and NY with a legal practice that includes trademark law.
Please Contact VeriTrademark for more information on registering your trademarks.
This article is copyrighted and is not intended to serve as legal advice, but rather as a general approach to the law at the time the article was written (in 2004).
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