TRADEMARK/ SERVICE MARK PROTECTION

Do you have an existing product already named or are you starting a new business venture and are at the point where you must choose a name for your business, product or service?  Should you obtain a trademark registration?

For new business ventures, the first step is to choose a mark that will serve as a strong source indicator for your business and/or products/services.  To function as a trademark or service mark, the name or logo design must be distinctive and unique in the mind of consumers. 

If the mark is sufficiently distinctive it may be registered with the United States Patent and Trademark Office (“USPTO”).  Whether a mark is distinctive is determined by considering the mark in the context of the business/product/service with which it is associated.  So how does one determine the distinctiveness or strength of a mark?  Fanciful or arbitrary terms (e.g., XEROX® or KODAK®) are typically considered the strongest marks, because they tell the consumer nothing at all about the product or service with which they are associated.  Marks that are suggestive of your product or service are next in line in terms of strength, and these are the most common types of marks (e.g., DOWNY® suggests a quality of the products that use such a fabric softener).  Marks that are descriptive of your product or service are not considered distinctive at the outset, but through significant continuous use in commerce can become distinctive and may be registerable with the USPTO.  Lastly, generic marks (e.g., car for vehicles) are never distinctive and cannot serve as a source indicator for your product or service, and are not registrable with the USPTO. This is because generic terms must be available for others to use to describe their business, product or service.

After you have chosen a mark and before you begin using the mark in commerce, a search should be conducted in order to locate pre-existing marks that could present a problem should you use your mark.  This search involves checking available databases and online searching using one or more search engines.  What could happen if a search is not conducted?  Consider this situation.  You put a large amount of thought, time and money into your new product, not the least of which was choosing the right mark to associate with your product.  You designed your advertising materials, labels/packaging and website around this mark and have begun selling your product.  Then, you receive a letter (often called a “cease and desist” letter) from another company accusing you of trademark infringement, and find yourself in a situation where you must make some hard decisions, one of which could be whether you change your mark in order to resolve the situation.  If you change your mark, all your advertising, labels/packaging, website (and any other materials which include your mark) must now be replaced.  This is no small task, and will be quite expensive.  Additionally, your customers associate your mark with your product and will now have to familiarize themselves with a new mark.  All of this is extremely disruptive to a new or existing business, and can usually be avoided if a proper search is carried out.

So your mark has cleared the search, what’s next?  You have the option of filing a application with the USPTO to attempt to obtain a federal registration.  If the USPTO determines that your mark is registrable, you will be granted a federal trademark registration which can be a powerful tool should you become aware of another party using a mark identical or similar to yours in association with related goods/services.  The federal registration process typically takes 1-3 years from filing through formal registration of your mark.  The various states also issue trademark registrations, and in some situations are beneficial.

This may all seem straightforward on its face, and so you may be considering searching your mark yourself and filing your own application with the USPTO to reduce expense.  We do not recommend this.  Yes, you will save money at the outset.  However, there are many strategic and legal factors that must be considered both when conducting a search and filing for a federal registration.  One of the most common problems which results from filing your own federal application is the inability to correct certain information in the application after it is filed, which could mean that your application is worthless.  Plus, your analysis of search results may not consider all of the factors that influence trademark clearance.

The bottom line is that hiring a trademark attorney to conduct a search and to file and prosecute your federal trademark application can help you avoid costly legal problems which can result from an improper clearance search and/or an improperly-filed federal application.