Helping Businesses Build & Protect Their Brands

Via Trademark Law

Intellectual property (IP), in general, and trademarks, in particular, are increasingly becoming one of the most valuable assets of businesses. After all, the world of e-commerce is increasingly digital-first and data-heavy, and by extension, IP is a foundational element in such a digitized world. With IP steadily rising in import as a business asset to protect and monetize, branding and the protection of such value via trademark registration and the law play a leading role.

A trademark is one of the most common types of IP, in addition to other types of IP such as copyrights and patents, as well as trade secrets. While trademarks may seem relatively straightforward, the process and nuance surrounding a trademark’s lifecycle are more complex. From initial research and registration to maintenance and enforcement, as well as scams targeting trademark owners, there are pitfalls at each stage. Further, trademark disputes may arise, including in the context of advertising for your brand.

Some common trademark law considerations include the distinction between a common law trademark and a registered trademark, the nuances of successfully pursuing trademark registration via the USPTO and navigating associated office actions, avoiding common errors in TEAS (Trademark Electronic Application System), whether the USPTO requires you to use an attorney for trademark registration, and enforcement of your mark post-registration. There are also considerations when it comes to trademarking a surname as well as the names of living people, including in the political context and the associated decision in this regard from the Supreme Court. Further, it is imperative to steer clear of using marks that might result in threats of or actual litigation, such as was the case recently in a matter involving Adobe’s trademarked logo. These are only a few of the myriad of critical components that a business must account for when establishing value via trademarks.

As a trademark registration lawyer, RICHT understands the value of trademark law and how, when correctly navigated, it can result in great returns, whether through brand-building, a subsequent business acquisition, licensing, or other means. The converse is true, too, though. Trademarks, when incorrectly pursued, such as may be more likely to occur when done through DIY (do it yourself) online trademark services, can result in a host of issues ranging from the refusal of registration to litigation. From those with an independent e-commerce brand to sellers on Amazon, as well as for SaaS, AI, startups, and related technology offerings, we provide unique value to clients via trademark registration and related areas of the law.

At RICHT, our singular goal is to help our clients seamlessly navigate the trademark lifecycle, including:

• Trademark Search & Clearance: We conduct a comprehensive trademark search to determine if your desired mark is available for registration.
• Trademark Strategy: We assist in formulating a trademark strategy that is more likely to result in a successful registration.
• Trademark Application: We prepare and file your trademark application with the USPTO, utilizing our experience to structure the application to maximize the chances of successful registration.
• Office Action Responses: If the USPTO issues an “office action” regarding your trademark application, we can help you respond, resolve the problems identified by the USPTO, and get your application approved.
• Trademark Registration: Once your trademark application is approved, we help you navigate trademark publication for opposition and registration so you can use the ®.
• Trademark Monitoring: We help ensure that you maintain your trademark and monitor for infringing use that, if left undisputed, could result in the loss of your trademark.
• Trademark Enforcement Against Infringing Use: If someone infringes on your trademark, we help you enforce your rights through a variety of means, including litigation.

The benefits of working with RICHT to secure your trademark registration include:

• Experience With Trademarks: Our firm has counseled clients on trademark law matters, from registration to infringement.
• A Full-Suite Of Trademark Law Services: We provide clients with a full suite of trademark law and related IP services, from registration to licensing.
• Law That Knows Business: Our firm’s ethos is “Law That Knows Business,” which summarises our focus on understanding our clients’ business goals and formulating legal solutions that help them attain those goals effectively and efficiently.
• Affordable Flat Fees: We aim to provide our clients with cost certainty via flat fees so that incentives are aligned, and you can be confident that you are getting legal services in a cost-conscious manner.

Related Intellectual Property Law Services We Offer

Some Of The Types Of The Brands We Can Help

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Find Out About How We Can Help Build & Protect Your Brand Via Trademark Registration

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Trademark Registration Common Questions

What is the value in getting a registered trademark from the USPTO?

Trademark law is quite nuanced, and the trademark registration analysis includes what to trademark, such as whether it should be a logo, brand name, phrase, or some combination of the above. That said, on the most foundational level, applying for and subsequently gaining a trademark registration from the USPTO provides a company with not only a potentially competitive edge and a more professional brand identity but also powerful tools for maximizing and protecting profits and growth.

What is the timeline from application to review for potential registration?

Though subject to change, due to a surge in trademark applications over recent years, applications are experiencing a multi-month wait before the USPTO examines an application for potential registration. Even once reviewed and not subject to adverse action, whether from the USPTO or another party, there are several additional steps prior to registration, including publication in the Official Gazette for the opposition period.

What are the key levels of “distinctiveness” (sometimes referred to as the “Spectrum of Distinctiveness”) to keep in mind when embarking on a potential trademark application?

The USPTO will not register any mark that is applied for. After all, one of the key goals of trademark law Is to allow goods and services to have a source identifier and to limit “consumer confusion” as to said source. Therefore, the USPTO may only accept registration if a potential trademark is distinctive enough. The key levels of distinctiveness, going from weakest and, therefore, least likely to be granted registration to most distinct, are generic, descriptive, suggestive, arbitrary, and fanciful marks. A mark is “generic” where the mark directly references the specific product or service in question, such as trying to register “peach” for a peach company. In this instance, the USPTO will issue a refusal. The next level down would be “merely descriptive” marks, where the mark describes the product or service. An example would be “cookie shop” for a shop that sells cookies unless the mark has potentially acquired distinctiveness. Suggestive marks suggest what the product or service is, such as may be the case with Netflix. Arbitrary marks are those marks that have no connection to the product or service corresponding to the mark. The most famous example in this regard is Apple, the behemoth maker of iPhone and Macs. Lastly, and most distinct, are fanciful marks, which are made up of words, such as in the case of Google. Though the “distinctiveness” analysis is essential, it is only one of the considerations that must be accounted for when undertaking a potential trademark application.

Can a last name (surname) be trademarked?

As is frustratingly common with the law in general and trademark law in particular, the answer to whether the USPTO will grant a trademark registration for a last name, sometimes referred to as a surname, is that it depends. Specifically, the USPTO, as per Trademark Section 2(e), will not grant a trademark for a name deemed “primarily merely a surname” (5 U.S.C. §1052) but may grant registration if the name has “secondary meaning” and “acquired distinctiveness.” See TMEP §§1212–1212.10. While this may sound a bit confusing initially, it is helpful to take a step back and review a key driver for trademark protection to help avoid “consumer confusion.” In light of this rationale, if a surname has acquired the requisite level of meaning and, in particular, association as an identifier for specific goods or services, then registration may be possible as it fits within the ethos of what trademarks aim to accomplish. On the other hand, if one’s last name has not acquired such “secondary meaning” and, in particular, as a source identifier, there is a countervailing public policy motivation not to grant registration, including so that others with the same surname can use their names “in commerce” without being at risk of trademark infringement. Some of the critical factors that the USPTO will consider when determining whether a surname has “secondary meaning” include the uniqueness of the last name in question, how long and to what extent it has been “used in commerce,” and whether the applicant in question has the surname, among other considerations. That said, if surname trademark registration via the Principal Register is denied, generally called “a Section 2(e)(4) refusal,” one can try to prove “acquired distinctiveness” and register the mark on the Principal Register based on §2(f). Proving “acquired distinctiveness” is most practical if you have been using the surname in the stream of commerce in the United States for at least five years. On the other hand, if you have not been using the surname in commerce for five years, proving “acquired distinctiveness” is significantly more challenging, and one may need to submit extrinsic evidence, such as sales volumes, marketing campaign spending, or consumer studies. If registration on the Principal Register is denied after trying the “acquired distinctiveness” route, registration on the Supplemental Register may be possible. Common examples of trademarked surnames include McDonald’s, Ford, and Disney.

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Trademark Registration Law News

 

Reuters

X Corp Hit With Lawsuit From PR Firm Over 'X' Trademark

Elon Musk’s X social-media platform violates the trademark rights of PR firm Multiply, according to a lawsuit filed in California federal court that was made public on Monday. The complaint said, that X, formerly known as Twitter, causes consumer confusion by using the “X” trademark for social-media marketing services that compete with Multiply.

Trademark Law

IPWatchdog

The Biggest Trademark Rulings of 2023

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues.

Trademark Law

Law.com

From Palette to Protection: When Does Color Function as a Trademark?

While companies like UPS have successfully used color as a trademark, securing trademark protection for a color can be challenging. This article discusses what it takes for a color to be eligible for trademark protection and the legal considerations involved.

Trademark Law

Tech & Marketing Law Blog

Trademark Extraterritoriality: Abitron v. Hetronic Doesn’t Go the Distance

In Abitron Austria GmbH v. Hetronic International Inc., the Supreme Court held that the Lanham Act extends trademark protection only to claims where the infringing “use in commerce” is domestic.

Trademark Law

CoinDesk

Visa Files Trademark Applications for Crypto Wallets, NFTs and the Metaverse

Payments giant Visa (V) filed two trademark applications to the United States Patent and Trademark Office (USPTO) related to digital wallets, non-fungible tokens and the metaverse.

Trademark Law

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