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Tips for Trademark Success, Winston-Salem!

The short list of what to do when choosing a trademark (before using the mark commercially):

Photo by Alex Read on Unsplash
  1. Come up with a list of at least 15 trademarks that would be unique for your business's goods and services.  We'll call this a list of "candidate trademarks."
  2. Use an internet search engine to search each candidate trademark.  If businesses closely related to the services/goods come up in a search engine search, consider eliminating that candidate trademark from your list.
  3. Do a search of the remaining trademarks in the USPTO's trademark database.  If another business has a candidate trademark registered under the goods or services you intend your trademark to be associated with, eliminate that candidate trademark from your list.
  4. Crowdsource the strength of the remaining candidate trademark names on your trusted social networks.  See which of the remaining candidate trademarks people seem to like, and try to rank the remaining candidates.
  5. Speak to an attorney about the remaining candidate trademarks.  The attorney will help you decide which trademarks may deserve a robust search and which trademarks are the best candidates for successful registration at the USPTO.

the best-case scenario

In the best-case scenario, a client comes up with a strong trademark and the United States Patent and Trademark Office (USPTO) grants registration of the client's trademark without any pushback from the USPTO or any other person or business.  That is often the case, especially when the client opts for a trademark search and counseling from a good Winston-Salem trademark attorney and trusted intellectual property law firm from the get-go.  Ideally, the attorney will be working with you in conjunction with your designer.  In any case, any trademark you intend to use in commerce should get some counseling from a trademark attorney.  We've personally counseled several leaders in the brand design community as well.  The nationwide average floor cost of trademark infringement litigation is $100,000!  You can see why many businesses have to rebrand when trademark infringement, confusion, or dilution is claimed.

The common Scenarios: Why we educate

The best case scenario is not the only flavor of trademark matter.  Trademark concerns often come to us after the business owner has run into some trouble.  In Winston-Salem, we see a lot of the same slip-ups from a wide range of business owners--from seasoned, venerated businesses to shiny new startups.  This post is part of a continuing effort to bring these essential business matters into public awareness.  We also do pro bono counseling at the Forsyth Tech Small Business Center, Wake Forest University's Entrepreneurship Center (formerly known as ICE), Flywheel Coworking, and at the Center for Creative Economy.  

    Do-It-Yourself Is Great, Unless It'S An Expensive Mistake

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    Trademark law is surprisingly complex with many nuances; it is worth it to seek legal counsel. Many people (in Winston-Salem and Greensboro, especially) come to us to revive seemingly doomed applications after they try DIY through online companies that claim to offer guidance.  If you have the capital to spare and are not too tied to the success of registering a trademark (you have barely invested in your business and it's under a limited liability structure), the failure of registration or confusion/infringement allegations may not be a costly risk.  In that case, the DIY route may make sense.

    A Case Study--An egregious example

    We see a number of problems with some prominent online assisted DIY services.  Although the initial fee for drafting and filing an application is lower than one a licensed attorney would charge, those online services will charge much more later on for routine responses to the USPTO when an attorney is likely to charge much less. One example from the past year is especially egregious--a mature-stage tech startup used an online DIY service that claimed an attorney was reviewing their application before they filed it. The trademark examiner rejected the application, and cited their reasons for the rejection in a letter called an "office action."  The online DIY company then told the startup that the application was rejected for a totally different reason.  The DIY offered to respond to that office action rejection for a flat fee of $1,000.  Luckily, the startup signed with us for our perspective.  We told the startup's CEO what was up--the DIY company mischaracterized the rejection, and our fee for the response to the Office Action would be a fraction of the cost quoted by the online company.  Had the startup stuck with the online DIY service, it would have paid at least twice as much for a failed result (that would have been the result of the DIY's company's error).  Our strategy saved this client its valuable trademark and minimally impacted the startup's burn rate.

    Protection From Scam Drama

    Information regarding attorney representation (or the lack there of) is made public when applying for trademark registration with the USPTO.  Scam companies target trademark applicants that are not represented by an attorney and send applicants notices to pay hundreds of dollars.  These communications seem so official that even attorneys have to do a doubletake!  These scam companies are less likely to target people who have a registered attorney.  Our flat fee for trademark application services includes following up on any suspicious trademark-related communications the client may personally receive.

    Trademark Examiners are Great, But They're Human, Too

    The trademark examiners at the USPTO are human.  Although all of them are given the same ginormous Trademark Manual of Examining Procedure, they may interpret the rules differently.  That's why some seemingly great trademarks can be shot down (not so common), but ones that are risky may be granted registration (a bit more common).  No trademark attorney can guarantee the success or failure of an application for registration. You might be able to think of some companies that do have registration for trademarks that seem weak.  Know that those companies are not necessarily in the clear; just because a trademark examiner granted registration does not mean that the company in question is safe forever--another company may start a law suit that invalidates the registration.  This is why counseling from the get-go about trademarks is so important--there are so many factors that go into what makes a legally successful trademark; success and registration may not be one and the same.

    Winston-Salem Marketing & design

    Winston-Salem has some really great marketing and graphic design firms--our own office is literally wedged between Alloy Magnetic and Fifth Letter!  We counsel several design firms and their clients about the legal aspects of trademarks and intellectual properties.  If you are going to invest in a design firm, ask the firm if they provide counseling in the legal aspects of trademarks.  It makes sense to make significant investments in marketing and design only if you are also legally protecting your trademarks.