Insights and Opinions

 

Sunday, November 11, 2007

Basic information About Trademarks

from Steven C. Sereboff, Mark A. Goldstein, and Michael D. Harris





Your company name. Your logo. Your slogans. The look and feel of your business and products. These all set your business apart from your competition, and therefore can act as trademarks. In general, the word “trademark” is just another way of saying “brand”. Understanding trademarks is as simple as understanding branding.

Trademark law is based upon two important public policies: (1) protecting consumers, and (2) protecting private property. Trademark law protects consumers by providing the assurance that products having the same brand came from the same source. Trademark law protects private property by giving companies control of their valuable brands.

Brands become strong through use, namely sales and advertising. While you can pick a brand/trademark which is distinct, there is no substitute for marketing and sales. Sell more products and you have more brand recognition. Advertise your product and you have more brand recognition. Quite simply, your trademark rights are mostly equivalent to your brand recognition.

Usually brand recognition will be defined by the geographic scope of your use of the mark, the kinds of products you sell, how those products are sold and distributed, whether your consumers plan and research their purchase or whether they buy impulsively, the quality of your products, and a host of other factors which define markets and submarkets. Without the help of a trademark attorney, trademark rights usually are equivalent to brand recognition.

A trademark attorney can help you pick good names for your brands, enhance the strength of those names, and keep your competitors from unfairly benefiting from your brand recognition. Trademark attorneys can also help you avoid infringing others’ rights and help you when others accuse you of infringement.

Trademark Registration

Registration of your trademarks provides several important benefits. First, a registered trademark is treated as if it has been used throughout the entire United States, even if it has only been used in a small area. Second, it creates a presumption that the information in the registration is accurate – and this includes the dates of when you started using the trademark and the nature of your products and services. Proving these facts in court can be very expensive, so the presumption means a lot.

While having one registration might be enough, sometimes you need more than one. This is because trademarks are creatures of state, national and international law. A U.S. registration is only good in the U.S. If you are selling in other countries, you might want to register there, too. If you are only doing business in a single state, then a state registration might be right for you.

Once your trademark is registered with the US Patent & Trademark Office (USPTO), you can use the ® symbol with it in connection with the goods and/or services listed in the registration. Until then, you may use the TM (trademark) or SM (service mark) designation to alert the public to your claim of rights, regardless of whether you have filed an application with the USPTO.

How Long Will This Take and How Much Will it Cost?

A lot of people think that trademark applications are simple, and choose to do it themselves or use a discount on-line service. Of course, tax forms also look simple, too – you just put a bunch of numbers in boxes. If you file tax returns like that, you will probably suffer expensive consequences. Likewise, trademark applications are important legal documents which deserve the knowledge and experience of a trademark attorney.

Experienced trademark attorneys can get an application filed in a few days. Our firm currently charges a $1,600 flat fee for filing a U.S. application, including a pre-filing precautionary search and government fees.

After filing, there is usually some back-and-forth between the government and the attorney. The government will compare your mark to others in its registry, and determine whether your mark is capable of acting as a trademark. Usually, the registration is granted in six to eighteen months, during which you will probably spend an additional $1,000-1,500.

Where Should You Start?

A search should be one of your first steps in the trademark process. Before you spend the money to hire someone to do a trademark search, try doing some searching on your own. Use a search engine such as Google or Yahoo to see if there is (or was) anything out there like your trademark for similar and related products or services. You should also use the trademark database of the USPTO, www.uspto.gov, to search trademark registrations and applications. Most people search and find nothing, but at least it is a good start.

If your proposed trademark looks clean, you might want to have a trademark attorney do a search, and maybe prepare a formal opinion on the search. The search alone normally costs $500-1,000. A simple, formal opinion costs about $3,000. However, the scope and cost of the search and formal opinion should be based upon your likely investment in the brand, and your risk tolerance.

When Should You Start?

The U.S. and international laws favor early filings. Tread carefully here. If you file the application too late, someone else might file theirs first. Though the U.S. is a “first to use” system, many foreign countries have “first to file” rules. Even in the U.S., first filers have a stronger position. The safest approach is usually to file your U.S. trademark application prior to any kind of public use or attempt at commercialization. Foreign applications may be filed concurrently or within prescribed treaty periods.

Closing Comments

These estimates are budgeting guidelines based upon having a competent trademark attorney do the work, and include the government fees and other costs. You can look up the government fees at www.uspto.gov.

In addition to trademarks, you might also want to consider patents, trade secrets, and copyrights.

Steven C. Sereboff, Mark A. Goldstein, and Michael D. Harris are are partners in SoCal IP Law Group LLP (www.socalip.com). About SoCal IP Law Group LLP: SoCal IP Law Group LLP handles intellectual property matters for high technology and high growth companies. This work involves patents, trademarks, copyrights, trade secrets, licenses and IP-related business transactions. Although most of our work is with companies in the $10M-$200M range, our clients also include multi-billion dollar multinationals and start-ups. We have chosen to limit our practice to intellectual property law, and therefore have developed considerable expertise and a reputation for excellence in our field.

Article (c) 2007 SoCal IP Law Group LLP. Used with permission.


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