Why You Need a Trademark Lawyer

If you've ever wondered whether to hire a trademark lawyer near you, consider the importance of a trademark.

Trademarks are a type of intellectual property that requires protection. For example, they distinguish your product or service from competitors. The US Patent and Trademark Office (PTO) prosecutes trademark violations.

Besides safeguarding your brand's unique identity, you gain valuable legal rights to prevent unauthorized use. For one, they're helpful when filing legal documents and contracts.

A trademark lawyer can help you file and police your trademark, offering these services:

  • Legal advice on the use, adoption, selection, and registration of new trademarks
  • Conducting a search using the USPTO's Trademark Electronic Search System
  • Evaluate the strength of the proposed trademark
  • File applications to register trademarks meeting USPTO requirements
  • Provide advice on how to address trademark infringement and enforcement issues

However, unlike patents, trademarks do not protect inventions or other tangible assets. Instead, creative work like logos, symbols, words, images, colors, and sounds can receive intellectual property protection.

The Lanham Act

Through the Lanham Act (15 USCS § 1051 et seq.), federal law has provided benefits to trademark owners for over 70 years. The trademark law created registries that list the registered trademarks (the Principal and Supplemental Registers). In addition, it provides trademark owners with the means to defend their marks and obtain relief from infringers. So working with an experienced trademark lawyer is essential to protect your intellectual property.

Trademarks are critical to protecting your identity, as they distinguish a company's brand from others in the marketplace. Moreover, they preserve the goodwill a company has accrued through years of growing its business.

A business can gain protection on the words and images used by their company. Those include the company, logo, and other symbols used to identify its goods and services.

A Trademark Lawyer Can Ensure Your Mark is Distinct

A trademark must meet several requirements before the PTO grants it. The Lanham Act further sets the conditions for trademark registration.

For instance, a trademark must distinguish the goods or services it identifies from similar goods and services. A trademark lawyer can clarify if you meet the requirements.

The distinctiveness of a trademark falls into one of five categories:

  1. generic (least distinct)
  2. descriptive
  3. suggestive
  4. arbitrary
  5. fanciful (most distinct)

The more unique the mark, the less likelihood it's confused with other marks. More importantly, it carries greater legal weight when defending against competitors and other unlawful uses. However, you must register your trademark with the United States Patent and Trademark Office to receive that protection. 

A trademark must be distinctly different from the product's generic name. For example, Kleenex® is a trademark for facial tissue, while White Out® is a trademark for correction fluid.

In addition, you can't confuse a trademark with a trade name. The trade name identifies the company. For instance, "The Coca-Cola Company" is a trade name, while COKE® is a trademark. 

You can still apply if you feel your trademark may be more generic. Read more about trademarking a generic name here.

Do I Need to Hire a Trademark Attorney to Register My Mark?

The trademark registration process requires attention to detail. For example, you must apply within the appropriate class or classes of goods. However, there are 34 classes for goods and 11 for services, which leaves much room for error.

That's where a trademark lawyer comes into play. They're familiar with the process and can avoid those errors.

In addition, a trademark attorney offers several advantages over going it alone. For instance, they can help with the following trademark services:

  • Search for similar trademarks that could prevent you from registering yours.
  • Interpret the results of the findings and tell you how to proceed.
  • Evaluate the strength of your proposed mark and help you develop a strong mark.
  • Explain your rights about the registered mark and how to pursue infringement claims.
  • Prepare and file the application and amend any concerns.
  • Follow up on the process, adhere to deadlines, check status, and respond to any further questions regarding the application.

Once you've registered a trademark, a licensed attorney can help enforce your intellectual property rights. Plus, they can monitor and pursue claims related to potential infringement. 

How Do I Trademark Something?

A business (or individual) must apply to the United States Patent and Trademark Office (USPTO) to obtain a registered trademark. The USPTO prosecutes and registers trademarks and maintains the Principal and Supplemental Registers. The process has several steps; you can learn more about the basics here. A trademark lawyer can work with you to ensure you apply correctly.

Trademarking your company name is not as simple as filing for an LLC and may take longer than you imagine. So you'll need to go through these steps:

1. Search

You must search the federal database to ensure the name you want is available. The USPTO's Trademark Electronic Search System (TESS) will aid the process.

In addition to searching for the trademark you want, you should search for similar names. For example, the PTO may deny your registration if the name is too similar to one registered in the same class. A trademark lawyer can search for you if you aren't comfortable with the process.

2. Apply

Prepare your application once you've searched and cleared the name you want to trademark. You can file for a name already in commercial use or if you intend to use the name in the future.

The trademark application has ten items:

    • The name and address of the applicant
    • The citizenship and legal entity of the applicant
    • A name and address for future correspondence
    • A drawing of the desired mark, or you can enter the title without one
    • A description of the mark
    • A specific list of services or goods covered by the application
    • The class of services or goods
    • An example of the mark in use and the date you first used it
    • A dated signature from you or an authorized agent like your copyright lawyer
    • The appropriate fee for the type and number of classes in the application

3. File

You have two filing options: TEAS Plus and TEAS Standard. The Plus option is less expensive and more straightforward. In addition, it has less chance of rejection.

However, you cannot create a custom description of your services or goods. That capability doesn't exist in the preset list offered by Plus.

Once you submit your application, you will receive a confirmation receipt and serial number from the USPTO. So you can use that number to check the status of your application in the Trademark Status & Document Retrieval (TSDR) portal.

Our Trademark Lawyers Can Help

Our trademark attorneys can support you with copyright or trademark protection. They work with clients in Montgomery County and Bucks County, PA. As a full-service law firm, we can help you with other business matters. They include commercial litigation employment law, and workers' compensation, to name a few.

Trademark Law Attorneys

Joel D. Rosen

Joel Rosen | corporate law attorney at High Swartz Attorneys for Law

Managing Partner and corporate law attorney Joel D. Rosen has 30+ years experience practicing law in employment, franchise and business areas.

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