Category: Trademark Law

Unfortunately, individuals and small businesses often try to save some money and apply for their own trademark application. Then they end up calling a trademark attorney because someone opposes registration of their trademark.

This situation may arise even if the US Trademark Office initially approves your trademark application, because your trademark is published for opposition before the US Trademark Office will register your trademark. During the opposition period, anyone can oppose registration of your trademark if they believe that they will be harmed by the US Trademark Office granting a trademark registration for your trademark.

One reason someone may oppose your trademark is if the opposer believes that your trademark is merely descriptive, or even a generic term, that anyone should be allowed to use in commerce. The opposer might argue that they will be harmed if the US Trademark Office grants your trademark registration, because they, and others would no longer be allowed to use those words to fairly describe their products or services.

Another reason someone may oppose your trademark is if the opposer believes that they have been using the trademark as their own before you started using your trademark. Therefore, the opposer may argue that they have priority and are entitled to use the trademark instead of you.

Another reason someone may oppose your trademark is if the opposer believes that your trademark is the same as, or confusingly similar to their own trademark. Someone may argue that your trademark is confusingly similar to their own trademark even if your trademark is spelled differently. For example, EXTREME is virtually indistinguishable from X-TREME.

Of course, these are merely allegations until proven otherwise. Therefore, you may be able to prevail and have your trademark registered. But it is best to work with an experienced trademark attorney who can help you navigate the opposition proceedings so that you don’t end up losing rights to your trademark for missing a deadline or making an inadequate argument.

Trademark rights are not established simply by filing a trademark application with the US Trademark Office. Trademark rights can only be established by using your mark (words, design, or logo) in a consistent manner to identify goods or services in commerce. In fact, you cannot even file a federal trademark application unless you are already using your mark as a trademark in interstate commerce, or have a bona fide intent to use your mark as a trademark in interstate commerce (typically within about six (6) months of filing the trademark application).

So you can’t just file trademark applications to “reserve” a mark that you might want to start using sometime in the next five (5) years. You can, however, take the following approach:

1. Do a trademark availability search. A trademark availability search will give you some idea whether the mark you want to use is already being used by someone else for the same or similar goods or services. A good place to start is with the big Internet search engines (Google, Yahoo, Bing). And don’t forget to check the US Trademark Office databases. If you find others using your mark or similar marks for your product or service (or similar products and services), then you can pick another mark. At least you found out before you started your branding campaign and didn’t have to receive a cease and desist letter from the other trademark owner.

2. Discuss your proposed trademark with an attorney. If you think the mark you have chosen is available, consult a trademark attorney. A trademark attorney can tell you whether your mark is a strong mark or a weak mark. A trademark attorney can help you determine whether you might run into trouble when trying to register your trademark with the US Trademark Office. A trademark attorney can also tell you whether you run the risk of having another trademark owner stop you from using your mark because it is too similar to their own trademark.

3. File a trademark registration application with the US Trademark Office. Hopefully you haven’t started using your trademark yet. Once you know that you plan to use your mark as a trademark in interstate commerce within the next several months, you can file what is called an Intent-To-Use (ITU) trademark application with the US Trademark Office.

If you have already started using your mark as a trademark in interstate commerce, you can file an actual use trademark application with the US Trademark Office.

Here again, it is a good idea to speak with a trademark attorney and have the trademark attorney file your trademark registration application with the US Trademark Office so that you don’t make any mistakes that could come back to haunt you.

Only after taking these steps should you start your branding campaign . . . printing business cards, brochures, and other literature, buying advertising, labeling your product, and so forth. Otherwise, you may be forced to stop using your mark and start all over . . . which can be costly. Not to mention, you lose any goodwill that you may have already started to establish with your customers.

Tag lines can be an important part of a brand and your overall trademark strategy, if used effectively.

One way to effectively use tag lines as part of your trademark strategy is to describe the product or service when the trademark or logo is unclear by itself. For example, a strong trademark is a completely made-up trademark, like the famous Coffee House (yes, you know the one I am talking about even without my having to name it here in this article). But until everyone knew what they were selling, it probably helped to use a tag line describing their product (“coffee”).

Another effective way to use a tag line as part of your trademark strategy is to use a trademark which conjures a pleasant image in the mind of the customer. The customer will then come to associate your trademark with that pleasant image. For example, a travel agent may use a tag line saying “. . . taking the hassle out of travel.” Now when customers see the travel agent’s trade mark, they will think of stress-free travel, an obvious positive.

Of course there are many ways to use tag lines as part of an effective trademark strategy, and we have only scratched the surface here.

Here’s a Tip when selecting a tagline to use as part of your trademark. Be creative . . . and put some thought into it before you adopt a tagline as part of your brand. There is nothing worse than a brand that changes every couple of weeks, months, or even every couple of years. The key to a strong brand is consistency . . . because consistency helps build customer loyalty. And customer loyalty can mean a successful business.

 

I am often asked “Do I need a Trademark for my invention?” Patents and Trademarks are different kinds of legal protection. Trademark protection may be available for the name and/or logo used to identify your goods or services in commerce.

A strong trademark (or service mark) can be key to a successful marketing campaign. Ultimately, customers identify the mark with the goods or services your business is selling.

Some advantages of Federal Trademark Registration include . . .

1. Others cannot register a mark that is confusingly similar to your mark.

2. A trademark registration provides a legal presumption of your exclusive right to use the mark nationwide, and serves as constructive notice of your claim of ownership in your trademark.

3. A U.S. trademark registration provides a basis for registering your mark in foreign countries.

4. A trademark registration allows you to bring an infringement action in Federal Court, file with U.S. Customs to prevent others from importing infringing foreign goods.

Once your trademark is registered, you can use the encircled-R notation ® to designate your trademark.

Some Common Pitfalls to avoid . . .

1. Selecting a weak mark.

2. Selecting a mark that is generic or merely descriptive of your goods or services.

3. Selecting a mark that is confusingly similar to someone else’s mark.

4. Failing to fully and accurately identify all of your goods and services in the trademark application.

Hire an attorney to help you identify any existing marks that may be considered confusingly similar to your mark before you start using a trademark. Your attorney can also guide you through the selection process to help you identify a strong trademark for your products or services. Then your attorney can help you with all aspects of state and federal trademark registration, and advise you on the proper use of your trademarks so that you are able to build the strength and value of your trademark.

Visit www.trennerlaw.com for more information about costs to register a trademark.