Five Value Additions of an Attorney’s Assistance with Trademarks

It is not necessary to have an attorney representing you to register your trademark. However, there are some very good reasons to have an attorney’s assistance.

Summary Regarding Trademarks and Brand

I wrote about the basics of trademark registration and branding previously. In summary, legal Trademark protection is about unfair competition and protecting consumers from misrepresentations. The idea with the protection is that consumers who come to recognize a distinctive mark as indicating the source of goods or services should be protected from a copycat who tries to use the same mark to fool consumers into mistakenly buying its products instead of what the consumer thought they were getting.

As a result, Trademarks are distinctive marks (usually words, logos, designs) used in commerce, to identify the source of goods or services. This is different from a brand, which is a broader term often used to describe the totality of the impression one has about the source of the goods or services, including the quality and nature of the goods and services, the type of source it is, and whether one is favorably disposed toward that source. In other words, a trademark is often a part of a brand, but a trademark is not the brand.

For example, consider your personal name. Your name is like a trademark, hopefully it is somewhat distinctive and when people hear your name, they think of you. In addition, however, you also have a brand in the sense that you have a certain reputation, certain skills and talents, a personal, social, and public persona, and relational characteristics you have established over time by your consistent conduct and activities. Your name is not your brand, but when a person who knows you hears your name, that person has an impression of you that is a kind of brand.

As you start to understand these distinctions, you can also start to see that a Trademark is often different from the name of a company or its tradename. The issue is that a Trademark is a particular type of identifier used to communicate the source of the goods or services, it does not have to be the name of the actual source. Many large companies have multiple brands and multiple trademarks that are all different from their actual company name.

In short, Trademarks are independent communicative assets of a business that give consumers information about the source, but also about the brand.

It is within this context that the value of legal assistance for creating, managing, and using Trademarks is realized.

Value Additions

Legally Protected Mark

First, a Trademark attorney can help the client create a legally protected mark. Often, clients come to an attorney with a mark they want to register as a trademark without realizing that they are already within a sophisticated legal and marketing framework. The first thing an attorney needs to do is determine whether the suggested mark really is a trademark. Many client headaches can be avoided if the client works with their attorney early on to make sure that the mark they are developing will be a legally protectable trademark.

Avoiding Infringement

Second, a Trademark attorney can help the client avoid unintended infringement. As soon as a client creates a trademark and begins to use it in commerce, they are asserting that the mark is distinctive and will not confuse consumers. However, because of the nature of trademarks, and the way that even local businesses often have a national presence over the internet or otherwise, the possibility that a mark is confusingly similar to an existing, registered mark, can be very problematic. If you have not done the work to check the federal registry, or understand how infringement takes place, you may be surprised when another business demands you stop using your mark. Depending on the situation, you may not only have to stop using the mark, you may find yourself in federal litigation, and you will likely have lost a lot of the value you spent time and energy building into the mark. An attorney can help you check these issues and develop a mark into which you can invest with less risk.

Navigating Registration

Third, a Trademark attorney can help the client navigate the registration process. Not only should the attorney help to determine if the mark is likely to be capable of registration before registering, but the attorney can identify the likely issues or objections to be raised, and evaluate with the client the best course of action. Then, during the registration process, the attorney can interact with the USPTO’s examining attorney to help the acceptance of the application. This is not only for large issue like objections that the mark is confusingly similar to another registration, but also in simple issues like providing the USPTO a complaint description of goods or services, providing proper examples of the use, or filing affidavits of continued use to maintain the registration.

Increasing Protection

Fourth, a Trademark attorney can assist the client in developing a mark that has a greater amount of protection. Not all trademarks have the same level of legal protection. Some marks have thin protection where the specific use of the mark is protected, but similar uses might be allowed. Other marks develop a broader level of protection so that even seemingly unrelated uses of the mark will still be restricted by others. Trademark attorneys can assist their clients in thinking through the protection they need and want, and advise the clients in putting together trademarks, and strategies around those trademarks, to maximize the value of the investment over time.

Maintenance of the Trademark

Fifth, a Trademark attorney can help the client maintain the value of the mark. Trademarks do not protect themselves, and the government does not protect them for you. In fact, the government only comes to the assistance of Trademark owners to the extent of the owner’s own efforts. Clients need to take steps to protect their marks by both using their marks appropriately and monitoring any potential infringing use by others. A Trademark attorney can help a client think through the use of the mark in a way that will preserve its value, including proper terminology, licensing with third parties, maintenance of the registration, and the monitoring of potentially infringing applications or uses. If these things are ignored, the Trademark’s value can shrink or disappear.

Conclusion

In summary, Trademarks are a particular kind of asset in which a business can invest and obtain a great deal of value. The assistance of a Trademark attorney is important for helping businesses navigate the process, and maximize the investment. Specifically, while an attorney can be invaluable for the actual application for registration of the mark, much of the value of an attorney’s assistance is in the advising on the creation, development, implementation, maintenance, and actual use of the Trademark.

Give us a call if you have any questions.

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