- Posted on: May 2 2018
By Mary Beaghler Penn, Dunlap Bennett & Ludwig
You’ve just invented a new gizmo and want to protect your prized product from being knocked off the front page of Google by an unscrupulous competitor; good idea. Trademarks protect things like brand names and logos, but they won’t help when it comes to stopping the competition from stealing your brilliant idea. For that part, you’ll need a patent. And if you do a bit of marketing, you may also want to copyright your pitch ideas as well. The process can be complicated, so let’s take a deeper dive into trademarks.
When you apply for the registration of your trademark your idea will go through careful scrutiny regardless of which jurisdiction you’re approaching. U.S. federal trademark applications are going to be reviewed by examining attorneys of the United States Patent and Trademark Office (USPTO). They’re going to be looking primarily at two things: the strength of your mark and the likelihood that it could be confused with someone else’s.
Your trademark must be either a word, name, symbol, device, or any combination thereof that a consumer can’t assume is made or provided by another company. This means it has to identify and distinguish your goods or services from those made or provided by others. That seems simple enough, but many words and phrases are already covered by trademark protection while others cannot be registered at all.
APPLYING FOR A TRADEMARK
The first step is to conduct a clearance search in the USPTO database. That means figuring out whether anyone is already asserting federal trademark rights for a design/wording that is similar and already in use for related goods or services. If there is any strong connection between your name and product and another brand that’s operating in the same general field, the examining attorney will refuse to approve your application. A trademark attorney will conduct that search on your behalf, and can identify any potential conflicts or issues before you file.
You also need to correctly identify the goods or services to which the mark will apply, and be able to accurately convey your basis for filing. Errors in either will inevitably lead to the refusal of your application.
ENFORCING YOUR TRADEMARK
Successfully registering your trademark is only half the battle. Now you need to enforce it. Many words that were once trademarks have fallen into common usage and are no longer protected because the companies who invented them weren’t vigilant about enforcing their trademark rights. Words like “zipper”, “aspirin”, “linoleum” and “laundromat” were all once trademarks that have now been lost or become generic. A strong trademark is one that can not only be registered, but subsequently enforced.
Because companies go to so much trouble to register and protect their brand logos and slogans, they are quick to litigate if they spot any type of infringement. Going it alone can bring some hefty legal bills if later down the road you discover the mark you’ve registered for your gizmo is being challenged by a company that makes a similar sounding product. Even if they seem completely different to you, the complexity of the legal tests for trademark infringement may not bode in your favor.
By all means, file to protect your product or service – but do it with the help of a trademark attorney. The last thing you need, or want, is a lawsuit. A little professional guidance at the start, can potentially save you a considerable amount down the road.
With decades of litigation protecting their clients’ trademarks both in the U.S. and overseas, the team at Dunlap Bennett & Ludwig can help you navigate the process to ensure that your business interests (and all of the money, work and time you’ve invested) are protected.
If you need legal advice on intellectual property issues, contact us today.
Posted in: Trademark