Trademarks are an important part of our practice. For the past 10+ years we have enforced the famous In-N-Out Burger marks against numerous infringers. Additionally, we have procured many hundreds of registrations for our clients, and regularly advise our clients on all trademark issues. Having been on both sides of many trademark disputes, we have the experience and perspective to render expert advice.
Selecting A Suggestive Trademark Is Usually Best
Trademarks are words, symbols, slogans, etc., most anything, that identifies the source of goods or services. A catchy brand name or slogan that is attractive to customers and memorable can be very valuable, and unlike patents will not expire as trademark rights persist as long as the mark is used. Clients often come up with descriptive marks which are legally weak, under the rationale that competitors need such words to describe their businesses as well, and thus there is public policy against excluding their use by others in similar businesses. On the other end of the distinctiveness spectrum are coined or arbitrary words, e.g. Exxon®, Xerox®, etc., that are very strong marks legally since they are made-up or have no meaning relative the products being offered, and thus are words no competitor needs to use. But it is more difficult to market new products under an unknown word. The best trademarks are usually “suggestive” marks, which require imagination to arrive at the goods and services without overtly describing them. An example, Ray Ban® for sunglasses.
“An Image . . . is not simply a trademark, a design, a slogan or an easily remembered picture. It is studiously crafted personality profile of an individual, institution, corporation, product or service.”
— Daniel J. Boorstin, American social historian and educator, 1914.
Adoption and Registration Begins With Searching And Analysis
A thorough search, reasonable under the circumstances, is highly recommended before adopting or applying to register any mark. This involves searching on the Internet and at the U.S. Patent & Trademark Office, and not just for identical marks, but phonetic equivalents which may sound the same, or other marks which may mean the same or have a similar commercial impression. The standard as to whether a new mark conflicts with an existing mark is likelihood-of-confusion, a multi-factor test depending upon the similarity of the marks, goods/services, trade channels, whether the goods are expensive or impulse items, whether professional buyers are involved, etc. We are highly experienced in applying these factors, and predicting how the PTO and the courts will apply the factors. Of note, the PTO tends to apply the standard more broadly in protecting the database of existing marks than will judges in deciding whether or not to enjoin the user of a mark.
Application Process Is Relatively Straightforward But Can Be Tricky
Applying to register a mark in the U.S. is relatively easy except for a few pitfalls. By way of example, the application can only be narrowed and not broadened. The specimens for t-shirts could be rejected as mere ornamentation and not showing the mark functioning as a source identifier. And if substitute specimens are to be submitted, they must date back to before the time a use-based application or statement of use was filed. Some clients in the past have used Legal Zoom or done it themselves, and their applications failed or had to be expressly abandoned. A likelihood-of-confusion determination is potentially harmful, in that if a subsequent cease-and-desist letter is received or infringement action brought, Courts will sometimes defer to the experts at the PTO who have already found a conflict.
After Issuance, Watching Others And Policing The Marketplace
Many companies engage a watch service and to monitor others planning to use or beginning use of similar marks for similar goods and services. We evaluate the watch notices as received and forward those of interest to you and we then confer regarding same. The quicker these problems are detected the easier they are to solve in general, before a lot of effort and resources are expended in marketing/advertising under a new mark. Trademark owners have an obligation to police the marketplace and ensure others are not using the same or similar marks for the same or similar goods.
Domain Names Are Increasingly Difficult To Obtain
Many trademark owners want Internet domain name that corresponds to their mark. Given the many cybersquatters, who reserved thousands of domain names and then wait to sell them for unconscionable amounts, many are unavailable. But if bad faith can be proven, there is a relatively simple and inexpensive administrative proceeding to wrest control of a domain name. We have done many and will be pleased to evaluate your factual scenario.