When you search for “trademark services” on Google, the first thing you see is a set of advertisements. They offer different pricing for handling the submittal of your trademark application to the United States Patent and Trademark Office (USPTO) on your behalf. If your application ends up being approved by the USPTO and unopposed by any third party, you’ve successfully trademarked your logo, name, or some other representation of your product or company.
For some savvy applicants, this may be all they need: somebody else to handle the setup for obtaining their trademark. But typically there’s more to it. In many cases, it takes more diligence to succeed with a trademark.
It is prudent to do a preliminary assessment of a proposed trademark before filing an application. There could be very obvious reasons to forego the mark, such as that it is something regarded as “generic” and thus not able to be trademarked. You can do a simple search on the internet to see how prolific the proposed mark might be, although this is not likely enough. Unless you can immediately rule out a proposed mark for some obvious reason, you’d then want to conduct a more thorough clearance process to help ensure there’s no likelihood of confusion with someone else’s trademark rights.
Trademarks must be used consistently as trademarks. In other words, you can’t alter a logo from the original mark, modify a color scheme, use a different font or case, or use it in grammatically various ways, etc. This could destroy your ability to enforce the mark.
The whole point of paying the government fees and officially establishing legal trademark rights is that you want that mark to last. You also want the public to recognize your ownership of the trademark, and generally associate your products and services with your business – that’s what a good brand is all about.
Unfortunately, that doesn’t stop other people from using your mark anyway and committing infringement. According to the USPTO,
“Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.”
Trademark infringement happens all the time, but the risk of it occurring to you continuously can drastically decrease if you monitor its use routinely. In many cases, the guilty party is unaware that they’ve committed infringement in the first place. Issuing a “hard” or “soft” cease and desist letter can be enough to stop the infringement in many cases (but consult with competent counsel first). In serious circumstances where the threat to your brand is clear and present and you’re inclined to file suit, the fact that you asserted your rights can have the added effect of deterring others from similarly infringing behavior.
IP Attorneys Augment Trademark Services
Many if not most trademark services utilize algorithms for clearance work. They’ll conduct automated searches of the internet for similar marks and attempt to rank such similarities against your proposed mark. They might also search government offices for pending applications and registered marks, and perhaps conduct state by state searches including corporation divisions for registered similar company names. Searches of URLs might also be included. There are also monitoring services that can attempt to watch for similar usages if they pop up on, say, a USPTO (United States Patent & Trademark Office) application or registry list. There is not much a service can do to course correct any improper usage of the mark on your part.
A good IP attorney will be able to augment these services – if not perform all of that work – with a more specific legal perspective and with human judgment of a specialized nature. Trademark lawyers are particularly aware of the context in which you propose to use your trademark and can help ensure you file your application using correct classification codes (e.g., if the mark relates to software, you need to use the classification code for software, but you might need to add a separate classification code for, say, “books and publications” if you’ll ship the software with a manual). They know of and can often search more comprehensively for common law usages (i.e., unregistered trademark usage) across various media platforms as well as in various states and countries as an added effort to an outside trademark service.
Trademark counsel also understands how to fully meet the guidelines set forth by the USPTO or the trademark offices of other countries, and can make recommendations about how you can best strengthen your trademark. Not only must you be mindful of technical requirements, but sensitivity to linguistic concerns should also be top of mind if you’re filing internationally.
IP counsel is also adept at helping to ensure you make the periodic renewal payments required by government offices to keep your registered marks alive, and can help with periodic audits of your portfolio to ensure you’re engaged in best usage practices.
Finally, while it is not a core competency for IP counsel to monitor for infringement, they can advise you on what to look for (what constitutes infringement), whether a potential infringer you spot merits closer scrutiny, and appropriate follow-up actions.
How to Best Manage Your Attorney’s Services
While you might very well achieve more comprehensive protection and valuable information by relying on an attorney, you need to understand and balance the economics. As such, it’s vital that you have a good handle on your legal spend management so that you incur fees as efficiently as possible. IP management software can help with that.
Decipher® is the IP management tool of choice for businesses hoping to achieve end-to-end management of their portfolio. Whether you’re building an inventory of trademarks, patents, copyrights, trade secrets, or some combination of IP, Decipher helps keep you organized, streamlines workflows, gives you actionable reports, alerts you when you need it, and - in the case of working with outside attorneys - get a clear view of your legal spend.
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Note: IAG is not in the business of providing legal advice nor does this information represent such advice, for which competent professionals should always be sought. No warranty or other representation is provided regarding the accuracy or completeness of the information contained herein. All trademarks are the property of their respective owners and IAG claims no affiliation with any such owners.