An Entrepreneur’s Guide to Trademarks Part Four: Do I Need A Trademark Lawyer?

Lady doing research with books on tableFiling a trademark application with the USPTO starts a legal proceeding. And like all legal proceedings, it can be very long and complex. Having a detailed, clear and error free trademark application may make or break your chances at trademark protection.

The USPTO requires that each trademark and its application comply with federal law. For that reason alone, it is wise to hire an attorney with trademark and intellectual property knowledge. An attorney does more than fill out paperwork for you. They will help you navigate the trademark application process and to work with the USPTO attorneys to ensure its approval.

Before you even file an application, an attorney will give you advice as to the strength of the mark, the best intellectual property protection and how to prevent any future infringement or dilution.

If you try to do it  yourself, or use a document preparation services (like Legal Zoom or Trademarkia) to prepare the application, you may get the initial application in just fine. But for most applications, the USPTO’s attorneys send back requests for changes or information (anything from a minor “office action” to change a single word, to an outright rejection). When that happens, you cannot just call up the USPTO trademark examining attorney to ask for legal advice. They are explicitly instructed to not give you any legal advice. The USPTO examining attorney may try to help you understand the process, but they will not necessarily tell you everything or explain to you how to comply and avoid a rejection.

So what does an attorney do for you?

First, as already mentioned, a lawyer will help you analyze your mark to determine that you are choosing the best and strongest mark to not only represent your business, but is strong enough to deter potential future infringement. This includes properly identifying and classifying your goods and services with the USPTO. A lawyer will also assist you by preparing responses to any refusals that the USPTO examining attorney issues while your application is pending — this is something you will not get from a document preparation service.

Second, a lawyer will conduct a comprehensive search of federal and state registrations, and unregistered trademarks all before your trademark application is filed to ensure that all potential legal issues have been analyzed before the USPTO ever examines your application.

Comprehensive searches are vital because other trademark owners may have stronger legal rights regarding marks that are similar to yours even though they may not be federally registered. Because they are not registered, these types of “common law” marks will not appear in the USPTO’s search system but could prevent you from using your mark. This is true even if the USPTO registers your mark.

Again, a document preparation service will search the USPTO’s service but won’t do the extensive “common law” mark search. This is because such a search is time-consuming and requires an experienced legal practitioner. Such a search can never be perfect, but it can be pretty comprehensive. An attorneys can help you look for possible problems before you file that application so that you can make the most informed decision for your business.

Finally, a lawyer can advise you on the best way to police and enforce your trademark rights. This may include licensing your mark, protecting against any potential infringement action, deterring counterfeiting and copying of goods and services and any other potential legal dispute that could arise while protecting your trademark.

If you do not police your mark, you can lose it!

The next post in this series explains in more detail the trademark application process.

If you are interested in protecting your trademarks, check out Bellatrix PC’s Trademark Packages and get started today.

An Entrepreneur’s Guide to Trademarks Part Three: 10 Ways Registering a Trademark Protects You

lioness baring fangs Although you can have a protected trademark without registering it with the USPTO, there are a number of benefits to registering. Here are my top ten reasons why you should register your trademark. This list is not all-inclusive but it does cover the major perks to filing with the USPTO.

  1. Registration gives a party the right to use the mark nationwide. This is usually cited to as the most important benefit that a trademark holder can receive. Without registration, you must be the first to use your mark in a specific territory to have protection there. This means, if you want nationwide protection without registration, you would have to use your trademark in every state and likely, in every county across the United States.

For most businesses, it takes years to become a nationwide operation. Without registration, you run the risk of others using your trademark in a territory before you lay claim to it. And if this was to happen, trying to seek registration after this has occurred will still not buy you entrance into that territory. The person using the mark there has already laid claim. In this situation, filing for trademark registration would likely still be a good idea to prevent usage in other territories. However, it is best to seek registration as soon as you know this is a viable business that you plan to grow for years to come.

  1. Registration constitutes nationwide constructive notice to others. This is exactly what it sounds like. By registering, you are letting the world know that this is your company! Your goods! Your services! Constructive notice also serves a deeper purpose – if you were to find yourself in a situation where someone has infringed on your trademark rights, either by copying the mark or making counterfeit goods, courts look at registration to determine the damages. U.S. Courts have held that a trademark registration constitutes “constructive notice” to the general public about the ownership of that particular mark. Thus, if someone who is not the registered owner decides to use the mark anyways, they have done so deliberately and likely with ill intentions. Court’s use this constructive notice rule to increase the potential damages that a trademark holder can recover in any potential lawsuit.
  1. Registration enables a party to bring an infringement suit in federal court. Federal Court has jurisdiction over all registered trademark disputes. If a mark is not registered, the case must be brought before the individual’s state court. This can be a disadvantage for many reasons. First, not all state courts have their own trademark laws and if they do, they are usually much more relaxed than the federal court laws. Next, procedurally, Federal court is much more streamlined, quicker, and all around more efficient. Because intellectual property and trademarks in particular are generally a federal court issue, the federal court system is set up to accommodate these types of claims more efficiently. Finally, there is usually more damages available in federal court over state court in an intellectual property matter.
  1. Registration allows a party to potentially recover treble damages, attorneys fees, and other remedies. Like benefit #3, going to court can allow you to recover an array of damages for any infringement. This includes triple the amount of your actual damages, attorneys fees, and potential other statutory damages. Damages such as these are usually not an option for an unregistered trademark.
  1. Registered trademarks can, after five years, become “incontestable,” at which point the exclusive right to use the mark is conclusively established. If your mark becomes incontestable, other parties are prevented from arguing that your trademark is confusingly similar, lacks secondary meaning or that it is functional. These arguments are the most common arguments brought in trademark infringement actions. Thus, by being registered for five years or more, your exposure to many of the common intellectual property litigation pitfalls is essentially erased.
  1. You can enlist aid from the United States Customs Service when needed. For any of us who have ever shopped on Canal Street in New York City or any major transportation hub internationally know that counterfeiting is a major black market industry. Having a registered mark allows to you receive assistance from U.S. Customers to ensure that no one imports counterfeit or gray market versions of your goods. However, to get this benefit – you must take the additional step of recording your registration with the U.S. Customs service. If your product is one that is easily duplicated however, this is a serious benefit that cannot be overlooked.
  1. You get to use the fancy ® symbol! What, it’s pretty cool, right? This nifty symbol also constitutes the “constructive notice” that we discussed above. You are telling the world “This is mine! I made this!”
  1. You can use your registration to prevent cybersquatters from using your mark as a domain name. This is an area of the law that is currently evolving. However, in recent years many trademark registration holders have successfully prevented “cybersquatters” from purchasing their trademark name as a domain name and sitting on it while trying to essentially ransom it back to the trademark holder for a handsome sum. If this is a particular concern of yours, Bellatrix PC can aid you in developing a plan to prevent the loss of any domain names related to your trademark.
  1. If you plan to register in other countries, you can use your U.S. registration date to get priority. If you plan to expand internationally, this is an important thing to understand from the beginning of your business development and plan for. Our attorneys at Bellatrix PC can help you plan out your international expansion and intellectual property protection overseas.
  1. Finally, you can deter others from using your trademark. The value received form this alone covers the costs of a trademark registration. You are telling the world that it is your product and you stand behind it. Goodwill for your company begins to develop the moment those goods hit the market. Further, from the moment you register, the USPTO will refuse registration to any marks that are considered “confusingly similar” to yours. Further, others looking to develop trademarks will find your mark on searches and databases, thus preventing them from picking anything similar to yours. Most businesses do not deliberately want to get into litigation so if they find your mark out in the world, they will generally avoid any potential infringement at all costs.

Remember, this list is not all inclusive. However, it cannot be stressed enough that trademark registration is not only a smart investment, but it pays for itself almost immediately in the benefits received.

The next post in this series discusses whether you need to use an attorney to apply for a trademark, or whether a document preparation service such as Legal Zoom or Trademarkia are good, economical alternatives.

Have we convinced you to register your trademarks yet? If so, head on over to Bellatrix PC’s Trademark Packages page and get started today.

An Entrepreneur’s Guide to Trademarks Part Two: Types of Trademarks

row of converse sneakersAlright, so you have come up with a killer business name and concept. You have even created a great logo and now you are looking to have this business logo trademarked so that you may protect it while you grow. Simple, right?

Not completely.

For a trademark to work for your business, it has to be strong enough to be protected. This essentially means that the mark must be distinctive enough that people can identify the source of that particular good just by looking at it.

How does one even go about determining that? Luckily, the Courts have had a long time to narrow this requirement down. Generally, trademarks fall into five categories:

  1. Fanciful
  2. Arbitrary
  3. Suggestive
  4. Descriptive
  5. Generic

Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded a particular trademark will depend upon which category it falls within.

A fanciful mark is a mark that is completely made up and only exists as to this good or service. For example “Exxon” or “Kodak” are both completely made up terms that we know associate with each respective company. This is the strongest trademark category in that because the marks are completely made up, they arguably have little to no risk of overlapping with any other already existing marks. They are simply made up words where the only function of the fanciful word/mark is to function as a trademark.

An arbitrary mark is a mark that bears no logical relationship to the underlying product. For example, the “Apple” logo bear no inherent relationship to their underlying products of computers, phones, and now watches. Further, the Nike “swoosh” bears no obvious relationship to shoes. Once again, because this is a distinctive mark like a fanciful mark, it receives a high degree of protection.

A suggestive mark is a mark that evokes or suggests a characteristic of the underlying good. However, it is up to the individual perceiving it to add a little imagination to put it all together. For example, the trademarks Greyhound, Playboy, Jaguar, Citibank and Coppertone are all examples of a suggestive trademark. It is that exercising of imagination where the consumer associates the word or phrase with the underlying product. Suggestive marks are not as strong as a fanciful or arbitrary mark but they do receive a high level of protection.

A descriptive mark is just what it sounds like. It is a mark that describes, rather than suggests, a characteristic or quality of the underlying product. For example, “Holiday Inn,” “All Bran,” and “Dental Center” all describe some aspect of the underlying product or service. They tell us something about the product. Unlike the other types of marks we have discussed so far, descriptive marks are not inherently distinctive and are protected and registered only if they have acquired “secondary meaning.”

“Secondary meaning,” a topic which will be explored in more depth later in this series, takes about five years to acquire pursuant to the USPTO. Gaining secondary meaning also usually requires a massive advertising budget. An individual should discuss their mark at length with their trademark attorney to determine if this is the best course of action.

Finally, a generic mark is a mark that describes the general category to which the underlying product belongs. For example, the term “Computer” is a generic term for computer equipment. Generic marks not protected under trademark law. It is a concern of all business owners and trademark holders that their trademarks may eventually become “generic” due to widespread misuse of the term by the consumers. For example, cellophane, monopoly, zipper and aspirin are all items that were originally trademark protected. However, companies like Xerox were able to successfully prevent their mark from becoming generic by taking a proactive approach.

Deciding which type of trademark to seek for your business is a serious decision with long term consequences.

The next post in this series discusses 10 ways a trademark protects you.

If you are ready to take the next step and apply for a trademark right now, consider Bellatrix PC’s Trademark Packages.

An Entrepreneur’s Guide to Trademarks Part One: What is a Trademark?

coffee with idea lightbulb in foamWe have all heard the term before: “Coca Cola has trademarked its logo” or a certain celebrity “trademarked a catch phrase.” But what exactly is a trademark?

At its most basic, a trademark is a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products and distinguish them from the products of another. Trademarks are valuable because the brands who create them use them in a matter to not only advertise the quality of their goods or services but to foster goodwill within its customer market. Trademarks allow for a business’s products to be easily identified by consumers.

For example, the trademark “Nike,” along with the Nike “swoosh” symbol help consumers identify the shoes made by Nike. In that same vein, both the Nike name and its logo differentiate Nike shoes from those of other companies in the same market.

Another example? The trademark “McDonald’s” and its “golden arches” distinguishes the fast-food chain from other competing fast food chains on the market. When a mark is used to identify services (e.g. “Roto-Rooter”) rather than products, they are called service marks. Service marks are generally treated the same as any other trademark.

Sometimes, trademark protection can extend beyond words, symbols, and phrases to include other aspects of a product, such as its color or its packaging or even a sound. One example is the NBC “three chimes” sound the broadcast network usually has play either before or after it airs a program. NBC has registered the chime sound as a service mark.

Other trademark examples that go beyond words or symbols includes the unique shape of a Coca-Cola bottle or the special “Tiffany blue” that the jewelry chain uses to identify itself.

Sometimes marks like these fall under the term “trade dress,” rather than an actual trademark. However, they may still be protected if consumers associate the particular design item with a specific manufacturer and not with simply a particular type of product. It depends; if such a feature is purely functional, meaning that the item simply works better due to a certain design, it may not be protected as a trademark (perhaps it can be patented, though).

Trademarks are distinguished from patents. A patent is related to a process, design, mechanics or existence of the patented invention. Trademarks are focused on the branding of the product, rather than the product itself.

Trademarks are distinguished from copyrights, too. Copyrights attach to the words, music or art itself (i.e. no one else may copy that book, song or painting and use it for themselves). Some trademarked things may be patented and copyrighted as well. But they are distinct types of intellectual property.

By making goods easier to identify, trademarks give companies the incentive to invest in the quality of their goods or services. If a certain product is easily identifiable on the market but the quality of the product is lacking, the consumer market will quickly know this and associate that poor quality with the trademarked brand. So once a branch gains traction, a business will invest in it to keep the product and brand positive; the trademark is meant to protect that investment.

Fostering a trademark can set a business on a path to success so long as the trademark is protected and the quality of the goods and services is consistently maintained.

In the next post in this series, we explain further the types of trademarks.

If you are looking to trademark your product or service’s branding, Bellatrix PC’s Trademark Package may be for you. Click here to take the first step towards protecting your investment in your business.

Business Law

BUSINESS LAW

Disputes, misunderstandings, and litigation impact the health and longevity of your business. Whether you’re the owner of a sole-proprietorship, a partner in a partnership, a member of a limited liability company, or shareholder in a corporation, it is critical to ensure that your entity’s legal and financial interests are being protected by an aggressive and experienced business law lawyer.

At Bellatrix PC, we pride ourselves on providing our clients with responsive, tactical business solutions.  Through critical analysis of the issues at hand, our legal team has repeatedly achieved favorable outcomes for numerous clients across a diverse range of industries and legal structures.  As a results-oriented firm, we aim to resolve complex disputes as rapidly and efficiently as possible, so that you can resume normal operations with clarity and confidence.

To arrange for a private consultation with the commercial attorneys of Bellatrix PC, call our law offices at (800) 449-8992 today.  The sooner you consult with us, the sooner we can get to work addressing your legal matter.

Experienced Business Law Lawyers

Even outwardly simple business transactions can lead to confusion and uncertainty.  Businesses of all structures are subject to myriad state, federal, and municipal regulations, which collectively encompass matters ranging from workplace discrimination to job site safety to the enforceability of non-compete contracts and other contractual agreements.

Even for highly knowledgeable and experienced entrepreneurs, it can be virtually impossible to keep abreast of the business world’s numerous and ever-shifting laws while busy with the daily demands of running a company.  All too many business owners have been unpleasantly surprised by federal investigations, the imposition of civil penalties, and lawsuits by employees, despite believing they were in full compliance with the law.

At Bellatrix PC, we bring a nuanced practical understanding of the full scope of business law to each and every legal matter we handle.  We will listen to your concerns, advise you with regard to your rights and responsibilities as a business owner, and explain the potential outcomes of the courses you could take on the path toward resolving your issue.

Should litigation arise, we are fully prepared to defend your business all the way to trial if necessary.  However, we are also qualified to function as mediators, to represent your company during arbitration, or simply to act as general counsel for your basic, daily questions and concerns.  We will help you understand the benefits and disadvantages of each available legal strategy as it pertains to your matter, so that you can make an informed decision about what’s right for your company.  When you work with Bellatrix PC, you can feel confident that your business is in capable hands.

Representing Partnerships, Corporations, and LLCs: Cases We Handle

As business owners ourselves, we are personally familiar with the seemingly endless complexities which can arise in business and commercial law.  In order to serve our clients effectively, we handle a wide variety of legal matters throughout every stage of the business life cycle, from formation to sale and dissolution.  No matter which point in its life cycle your company has reached, our dedicated attorneys are prepared to counsel you.

We are equipped to handle the full spectrum of commercial matters, including but not limited to the following:

Breach of Contract

  • Contracts act like blueprints, setting clear expectations for all parties to any business agreement.  When a contract is breached by one or more parties’ improper actions or failure to act, the other party or parties can suffer significant financial harm.

Business Formation and Dissolution

  • Selecting the right legal structure is critical for the long-term success of any business.  Likewise, proper dissolution ensures that debts and assets will be distributed appropriately when the company changes hands or reaches the end of its life.

Commercial Litigation

  • All types of disputes can lead to destructive lawsuits.  Whether your company has been accused of breaching a contract, engaging in discriminatory hiring practices, or other alleged misconduct, our attorneys will vigorously defend your business in court.

Contract Drafting and Negotiation

  • Contracts are the foundation upon which all business transactions are built.  We will prepare, review, revise, and aggressively negotiate your contracts with employees and other businesses, ranging from licensing agreements to commercial leases.

Employment Law

  • Whether your company has been named in a gender discrimination lawsuit, needs assistance determining overtime classification and fair payment of wages, or you simply have questions about drafting an employee handbook, our employment law attorneys are here to help.

Trademarks and Intellectual Property

  • Databases, recipes, software, and related information can be a company’s most valuable assets.  We work to protect your intellectual property and trade secrets with clear and enforceable contracts.

Our other areas of practice include, but are not limited to, the following:

  • Business Insurance
  • Creditors’ Rights and Debt Collection
  • Hiring, Firing, and Layoffs
  • Independent Contractors
  • Leasing Property and Equipment
  • Libel, Slander, and Defamation
  • Mergers and Acquisitions
  • Minimum Wage and Wage Disputes
  • Non-Competes and Non-Disclosure Agreements
  • Non-Profit Organizations
  • Payroll, Salary, and Bonuses
  • Permits and Licensing
  • Sexual Harassment
  • Stock Options
  • Tax Compliance
  • Unfair Competition and Unfair Business Practices
  • Whistleblower Lawsuits
  • Workplace Discrimination
  • Wrongful Termination

Whether you’re thinking about starting a company, need assistance resolving a stubborn dispute, or have already been named by a commercial lawsuit, the attorneys of Bellatrix PC have the skill and knowledge to help your business reach its goals.

To schedule a private appointment, call our law offices at (800) 449-8992 today.

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Alicia Dearn

Alicia I. Dearn is the founder of Bellatrix PC, a woman-owned law firm with offices in Missouri and California. Bellatrix PC handles lawsuits and business transactions. We advise in business, employment, real estate, intellectual property, civil litigation, and election law.


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