Trademark attorneys are increasingly topping the list of attorneys that businesses seek to retain on a long-term or ongoing basis. One reason for this the duration of the trademark registration process. Registering a trademark takes at best nine months, and that’s only if there are no refusals or oppositions or office actions from the Trademark Office. Another perhaps more important reason is that forward-thinking companies are seeking to adopt and execute an overall trademark strategy. Designing and implementing a thoughtful trademark strategy requires knowledge of trademark law and the benefit of prior experience. Each trademark strategy is unique and should take a variety of factors into consideration, however these four rules of thumb are a good place to start.
1) Develop a system to identify existing and new marks. It may seem obvious, but before you can start to build and execute a trademark strategy, you need to know what your marks are. You also need to know when and how to select and identify new marks. This is particularly important if a business routinely rolls out new products or services. Companies should have a detailed process in place to select, clear, identify and protect the valuable brands that consumers will associate with them. Moving quickly is important here in order to reduce the possibility that, if there is a delay in getting an application filed, another applicant files an application for a confusingly similar mark in the meantime.
2) Make sure registrations remain valid. A registered mark enjoys the benefits of federal registration only as long as it is alive and in good standing. From time to time during the life of a federally registered mark, the owner must submit certain filings to the USPTO to show (among other things) that the mark is still being used in commerce. Competent trademark counsel can assist in determining how best to prove use and what “specimens” are appropriate for these types of filings.
3) Understand what makes a strong trademark. Adopting a mark that describes the goods or services with which it is used can make marketing easier, but it’s not always smart from a legal perspective. Marks that are “merely descriptive” are not entitled to strong trademark protection under the law, and in some cases may not be registrable. On the other hand, marks that are arbitrary or fanciful enjoy strong legal protection. A qualified trademark attorney can explain the meaning of these terms in the context of trademark law and advise on a mark’s legal strength.
4) Fight for your rights. The day a company receives a cease and desist letter should not be the first time there is a discussion about how to handle claims of infringement. Similarly, a business should not wait until there is a competitor in the marketplace using a confusingly similar mark before deciding on an enforcement strategy. This is another area where the role of ongoing trademark counsel is important. When it does come time to defend a mark—either against potential infringers, or claims of infringement—having counsel who is already familiar with the company’s market, brand, and goods and services ultimately can save time and produce a better result.
Having ongoing trademark counsel should not be viewed as a luxury particularly because in the long run, they will likely save you money and time. Our firm is experienced and seasoned in business, trademark, and contract law. Consider having us be your trusted advisor for trademark strategy.
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