Federal and State Trademark Registration

When your company wants that “®” rating!

To begin, let’s start with a definition of a Trademark or “mark”. A trademark is a word, symbol, design, a combination of letters or numbers or other devices which identifies and distinguishes products and services in the marketplace. Once developed through advertising, marketing, trade shows, and other means, trademarks become one of your most valuable assets. Your customers identify your firm with your trademark.

To illustrate, the registered marks Pepsi®, Porsche®, and Lexus® each bring to mind certain “quality” products to potential purchasers. Consequently, these trademarks are some of the most valuable assets of these companies and they should protect them with a vengeance.

Creating Your Trademark

Registering your mark at the State, U.S. Federal or International level provides the maximum legal protection for the name of your company or product. Consequently, an important goal in selecting your trademark is to create one with the highest potential for becoming registered. With millions of trademarks already in registered in the world, creating a name for your product or service, or designing a logo not already in use is becoming increasingly more difficult and more necessary.

When creating a trademark people often focus on the marketing aspect – spending weeks or even months developing a catchy name. However, a registered trademark may already exist that is confusingly similar to the trademark chosen. Also, unregistered marks (known as Common Law Marks) can cause problems since, even though they are not registered, they are still legally protectable.

Creation is the stage when a trademark, service mark, symbol or other device identifying your product or service is developed for use in the marketplace. There are guidelines to consider when creating a trademark, such as avoiding generically descriptive terms (such as Guns Magazine for a gun magazine), or misleading terms and watching for foreign translations. (For example, the car name “Nova” translates as “no go” in Spanish – not a great advertisement.) Once you have some preliminary ideas for potential trademarks, you should consult a Registered Patent Attorney who can provide helpful guidelines as to how to make your proposed mark distinctive and increase its potential registrability.

The Trademark Search – Look Before You Leap

Once you have determined the mark you feel best suits your product or firm, you should have a search conducted to ascertain if the mark is available. There are many firms offering such services in the price range from $10 to $500. As with everything, you generally get what you pay for as the cheap searches use staff untrained in the nuances of Trade and Service mark law. The more expensive searches may be overkill or just a non-technical law firm marking up a search they had to purchase, since they could not do it themselves.

TRICKY PROCEDURE

The Patent Office can turn your Trademark Application down for many reasons that are not well understood unless you have dealt in this area before. A Patent Attorney who has filed and prosecuted a large number of trademarks will be a much better source for an opinion about the registerability of your trademark and you should consider this before having a search performed. If the person or firm running the search does not know the statutory reasons for disqualification of a trademark, why are you paying them?

If you are running your own search, are you familiar with the factors which may cause a refusal? Our office will consider the normal “confusingly similar” standard for rejection as well as other factors that include:

1. Matter which is merely the generic name of the goods on which it is used cannot be registered.
2. The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
3. The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
4. The proposed mark consists of or comprises the flag or coat of arms, or other insignias of the United States, or of any State or municipality, or of any foreign nation;
5. The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
6. The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
7. The proposed mark is merely descriptive or deceptively mis-descriptive of applicant’s goods or services;
8. The proposed mark is primarily geographically descriptive or deceptively geographically mis-descriptive of applicant’s goods or services;

If you are not familiar with the many nuances and difficulties that you might encounter in a trademark application, make sure the person you hire is familiar and experienced in this area. This process takes six months to a year and you can’t buy back all the lost time if your trademark is rejected, or, worse yet, you are infringing.

Our offices offer a 24-hour turn around on most Trademark Searches if requested.