Dina Leytes is a member of Griesing Law, LLC and Practice Group Chair for the firm’s Intellectual Property and New Media Group. She represents a wide variety of clients including privately held businesses, non-profit organizations and entrepreneurs and Fortune 500 companies in matters related to trademark and copyright clearance, brand management and enforcement, technology licensing and acquisitions, web and mobile agreements, privacy and data security, domain name strategies and disputes.
(Photo courtesy of Dina Leytes)
What is the process for selecting a trademark?
Developing a truly distinctive name is key. Clients often want to select a name that is descriptive of the goods or services offered. Examples of descriptive brands are a computer retailer called Computerland or a green dry cleaning service called Green Cleaners. Under U.S. trademark law, descriptive brands are considered weak trademarks, making it difficult to protect them. The strongest trademarks are arbitrary names, like Apple for computers, and fanciful, made-up names like Exxon for petroleum products. Arbitrary and fanciful brands require more investment to educate consumers about what the name means, but they are much easier to defend in court.
What is the process for protecting a trademark?
Once a name has been selected, trademark counsel should conduct a trademark clearance and if the results are promising, file a trademark registration. The clearance process can be relatively straightforward or time intensive and complex. The purpose of the trademark clearance is to identify whether anyone else has applied for or is using a confusingly similar trademark. This seems like an easy point to address, but it is a nuanced legal distinction that requires an understanding of the relatedness of goods and services and the likelihood of confusion analyses used by the U.S. Patent and Trademark Office (USPTO) and the courts. If a client starts to use a name that is confusingly similar to another trademark, they will likely have to rebrand later after investing time and money promoting the name and achieved brand recognition in the marketplace. The client may also be forced to pay statutory damages and attorney’s fees to the prior user if sued.
Our firm’s trademark clearance and registration process involves several steps. To clear the mark, we conduct an initial knockout search on the USPTO database where we look for identical or similar marks in use in connection with related goods or services to those of our client. If the results from that search are not concerning, we move on to order a comprehensive third party full search report, which is comprised of USPTO applications and registrations, business names registered with state authorities, domain names and other uses, to get a fuller picture of all relevant uses. If the results of that additional search are favorable, we then draft an attorney opinion letter stating why we believe the client can move forward with the trademark, file the trademark application, respond to any office actions from the USPTO and of course, update and consult with the client throughout the process.
This article was written by Robin D. Everson for Small Business Pulse