This is a guest post from Anthony Verna, a New York City Trademark and Copyright Attorney. You can find out more about him at his websites: www.NYCTrademarks.com and www.NYCCopyrights.com and on his Facebook page. Anthony can be contacted directly at law@nyctrademarks.com.
A trademark, simply stated, is a right that relates to a business and any quality the goods or services the business makes or provides. Think of any of these identifiers: a domain name (priceline.com), a business name (Sears), a brand name (Craftsman), a logo (the famous “golden arches”).
There are two kinds – unregistered (correctly called “common law” trademarks in the United States) and registered trademarks. Common law trademarks are very weak. Registration fills in all the holes and creates a strong mark, as a registered trademark is good throughout the entire United States and has its related goods and services defined. Common law trademarks need to fight over geography and goods and services in court.
For example, if a client comes to me with a domain name, we know the geography is over state lines, but how are the services defined? Sears and eBay are companies with websites, but they really have different consumers and different purposes, even though they both sell goods.
The first step when a client brings me a mark is to do a search for trademarks – usually in the United States Patent and Trademark Office databases – and find those that are the same or similar. I do some analysis and write an opinion letter.
My main goal here to prevent pitfalls later in the trademark application process. I look for marks with similar spellings and misspellings, homophones, homonyms, or any other marks that can possibly create confusion in the mind of the consumer.
Then, if I approve of the mark, I recommend filing the application to the client.
The next step is that in 4-6 months the US Patent and Trademark Office will come back, most likely with a rejection. (That’s how the process works. I try to make your TM as broad as possible – the USPTO tries to make it as narrow as possible.)
Once your mark has passed review, the next step is called publication. All marks are published in a book. Any third party can file what is called an opposition if it is believed the two marks are too similar. If an opposition takes place, I tell my clients to think of this as mini-litigation in order to defend the trademark application. (Trademark Oppositions are rare, but they do happen.)
Once you have your certificates, your adventure is only beginning. You do need to consider how to enforce your trademarks.
Photo Credit: aarontait
