Trademark Law

1. What is a trademark?
2. How long does a trademark last?
3. What is genericization of a mark?
4. How can I determine if someone is infringing on my mark?
5. How do I choose a strong mark?
6. I am making or already have a mark to register! What should I expect?
7. Can you help me file a trademark or respond to a legal notice I have received?

    1. What is a trademark?


A trademark is a symbol, word, or combination of the two, that is used by consumers to identify the source of goods or services. The first user of a mark in a geographic area (the senior user) will generally have ownership rights. A mark may simply be a word or phrase by itself or it may be limited to a specific styling of that word or phrase.

    2. How long does a trademark last?


Trademarks can potentially last forever. A trademark will continue to be protected as long as consumers identify that mark with the source of the goods or services. These protections are based on consumer identification; as a result, they are location and market dependent. A mark that becomes too powerful may be lost due to genericization (see below).

    3. What is genericization of a mark?


A trademark can be lost due to genericization. This occurs when the mark becomes so powerful that consumers use the term synonymously with a certain type of product, rather than with the specific producer or source of that type of product. The more successful your mark becomes, the more important it becomes that you protect it.

For example: although still a Bayer trademark name for acetylsalicylic acid in about 80 countries, including Canada and many countries in Europe, “aspirin” has been declared as a generic name in the United States and has lost trademark protection. Other common examples are escalator, heroin, and linoleum.

    4. How can I determine if someone is infringing on my mark?


The legal standard for determining trademark infringement is known as the “likelihood of confusion” test. Simplified, the test is whether or not the junior mark confuses consumers with respect to the senior mark. In order to determine this, a multitude of complex factors must be considered that are best left for discussion with your attorney.

    5. How do I choose a strong mark?


There are 4 general categories, listed from strongest (arbitrary marks) to weakest (merely descriptive):
Arbitrary: These are marks that are completely unrelated to their products. For example: Amazon.
Suggestive: These marks suggest what they relate to, but do not describe it. For example: L’eggs (pantyhose).
Descriptive: These are marks that describe the product. Significant consumer identification must be shown to protect these marks. For example: World Book Encyclopedia.
Merely descriptive: These are marks that only describe the product without anything more. They can NOT be protected. For example: “Athletic shoes” as a mark for athletic shoes.

    6. I am making or already have a mark to register! What should I expect?


It is highly recommended that you consult with a qualified trademark attorney. Trademarks are complicated and can have a great influence on your overall business plan. An improper search may waste valuable capital and, should office correspondence be required, a knowledgeable attorney at your side can be the difference between an approved or rejected filing.
Choose a strong mark: You should start with a strong mark. Avoid merely descriptive marks.
Trademark Search: Next, a search must be done to see if the mark, or any mark similar enough that might present a “likelihood of confusion” exists, and, if so, what geographic locations and markets those similar marks exist in.
Trademark Filing with the USPTO: Each application filed with the USPTO requires a $325 filing fee (a TEAS-PLUS form, if qualified, costs $275). This is the cost paid to the USPTO for processing of your registration. In many cases, the office will require other correspondence (such as in the case of creating a new category of goods or services).
Receive formal registration: Once your mark is registered, you must remember your renewal dates and police it appropriately for as long as you wish to keep it.
Time tables for trademark registration: For a time-table of a typical filing, please see the USPTO website here: http://www.uspto.gov/trademarks/process/tm_sec1atimeline.jsp

    7. Can you help me file a trademark or respond to a legal notice I have received?


Absolutely! Please call us for a FREE consultation on your matter: (657) 333-6264.

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