Creating your trademark or service mark

Boosting Your Brand, Products, or Services


Trademarks are an important and valuable asset of your business.  In fact, for some businesses, a trademark may  be the most valuable asset they own.  Think about some of the most well known and popular brands that exists today.  In some cases, the owners  of these marks do not even produce the goods or services that are marketed under their marks, but merely license others to produce them under the marks while profiting from the licensing fees they collect. 

In the U.S., common law rights in a trademark or service mark are typically acquired by the actual use of the mark in  connection with your goods or services. While you do not need to register a trademark or service mark to obtain these common law rights, you will likely want to protect your mark or marks to ensure they remain strong and are adequately protected.  The U.S. Patent and  Trademark Office allows you to apply for and obtain a federal  registration of your mark that can provide additional benefits and  protection that go well beyond any common law rights you may have in your mark.

One of the benefits of a federal  registration is that it provides constructive use of your mark throughout the U.S. and its territories without actually having to use the mark in all areas within the country. Additionally, by filing an  intent-to-use trademark application with the U.S. Trademark Office, the  filing provides a constructive use of the mark as of the date of filing even though you have not actually begun using your mark.

If you are using your mark in a particular state, most states will also allow you to obtain a state registration that would protect your mark throughout the entire state even though your use may be limited to a particular area of the state.  Such state trademark registrations typically provide certain benefits that may not be available solely through common law trademark rights.

Before using a mark or applying for a  trademark or service mark registration, however, one of the most  important steps in the process is to ensure you are not infringing on someone else’s mark.  The cost of conducting a trademark search is a small price to pay compared to what you might pay if you are sued for  trademark infringement, or if you later have to change your mark after expending considerable resources to promote it.  Furthermore, if someone has already applied for or registered a similar mark, you may be  prevented from registering yours.   Knowing this before hand will prevent you from wasting time and money in seeking to register an unregisterable mark.

Why You Need an Experienced Trademark Attorney

While the trademark registration process may seem straightforward, it is full of pitfalls for those that are inexperienced.  This begins with selecting the mark  you want to use with your product or service.  As discussed, a conflicting mark can prevent you from using or registering your mark, as well as exposing you to a claim of trademark infringement.  Determining whether an existing mark constitutes a conflict or not is often difficult to determine, however.  Those attorneys or individuals that have little experience in this area oftentimes do not know whether a  mark would constitute a conflict or give rise to a claim of trademark  infringement.  Conversely, someone inexperienced in this area may believe there is a conflict when there is not.  Trademark law requires the balancing and weighting of different factors to determine whether an  existing trademark constitutes a conflict or presents an issue of trademark infringement.  Only an experienced trademark attorney having  an extensive knowledge of rulings by the Trademark Office and the courts as to what weight is given to these different factors and the types of marks that present conflicts and those that do not will be able to  provide guidance in this area.

Beyond  conflicts with existing marks, there are other issues that only an experienced trademark will be able to help you with.  Oftentimes  businesses select marks that are descriptive of their product or service.  Descriptive marks are typically not registerable.  For  example, the mark BATTLECAM has been held as being descriptive for computer game software.  URBANHOUZING was found descriptive for real  estate brokerage services.  And SUPERHOSE! for hydraulic hoses was  considered descriptive.  Someone seeking to register a descriptive mark  will likely receive a rejection that will prevent them from registering  their mark.  There are ways to register and protect the descriptive  marks, however.  An experienced trademark attorney can assist you if you  are seeking to register a descriptive mark.

Another  problem that those inexperienced with trademarks can encounter is  meeting the formal requirements necessary to obtain a registration.   Specimens of use showing actual use of a trademark or service mark are  typically required to be filed with the trademark application or before  the mark is eventually registered.  If the specimens do not comply with  the requirements of the Trademark Office, your application will likely  be rejected.  This can be for a variety of reasons.  The specimens may  not show trademark usage but mere ornamentation that is provided on the  product itself.  If so, the specimen may be rejected or your entire  application may be rejected.  Or the specimen may show service mark  usage for the sale of goods but not trademark usage for the goods  themselves.  If the applicant sought to register the mark for the goods  themselves, the specimen and application may likely be rejected.  In  certain instances, this can be a fatal defect that cannot be corrected.   

These  are just some of the issues related to trademarks that might indicate  that you need to consult an experienced trademark attorney or  intellectual property law specialist.  Contact us for a free consultation.  

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