Five of the Most Common Trademark Questions

As a trademark lawyer, I’ve worked with hundreds of clients and potential clients who are going through their first ever experience with trademark protection.  It is very common for such clients to have the same questions and I’m sure there are many more people who may never end up working with a trademark lawyer but who would benefit from hearing some answers to these questions.

Below are give of the most common trademark-related questions that I’m asked by people who are new to trademark protection.

  1. Do I really need to search and protect/register my trademark?
    I offer people a very simple litmus test for deciding whether they need to worry about clearing and protection their trademark. Just ask yourself: how much would you care if you were forced to suddenly change the name of your business, product, or service? Such a scenario is exactly what you risk if you don’t make sure that nobody else is using your mark or something similar and/or you fail to protect it against others’ use. Most people are very attached to their trademarks, even before they’ve made their first sale. You can imagine what it might be like to essentially throw away a mark for which you’ve spent countless hours (and dollars) on building market recognition. There may be situations in which it’s not a big deal to stop using a trademark that you’ve selected, but I’ve not yet come upon one.Clearing your trademark through a professionally conducted search assures that you are aware of what potential risks are out there and can act accordingly. By federally registering your trademark, you ensure that you have a right of priority throughout the country, over any other parties that would adopt a confusingly similar mark.
  2. How much does it cost to protect my trademark?
    As with most legal projects, costs can vary considerably depending on a variety of factors. Generally speaking, the more types of goods or services you want to offer under the mark, the more costly the process will be. Selecting a mark that is a very common word or combination of words will also result in a more difficult and, therefore, more costly registration process. Making up a totally new word as your trademark is always a good idea.More specific information on the costs involved with clearing and registering a trademark can be found in my earlier blog post, “How much does a trademark cost?
  3. What if I already know of someone else using the trademark I want?
    It might certainly turn out that a trademark you’re interested in using has been put to use by another person. In limited circumstances, this may be an acceptable conditions, but such situations are generally few and far between. In particular, if someone is using the same or a similar mark in a limited geographic area and your own use will also be limited to a specific geographic area that is relatively far away, you may be able to coexist. However, neither party would have the ability to register their mark at the federal level and, accordingly, both would suffer the risk that some third party would come along and begin using the mark in territories where neither is using the mark.In the age of Interent marketing and nationwide distribution channels accessible to even the smallest of businesses, it is riskier and riskier to adopt a mark that is in use anywhere in the country. Certainly the best long term approach is always to avoid using a mark that is in use anywhere in the country in connection with similar goods or services. If you have nationwide aspirations for your business, as most entrepreneurs do, this is even more critical.
  4. What if I can’t afford to search and register my trademark?
    Whether you can afford to forego searching and clearing your trademark is a function of both your budget and your risk tolerance. As stated above, if you’re willing to live with the risk of having to change your name and you’d rather take that risk than spend your dollars on legal services, that might make sense for you. Assuming that there is simply nothing in the budget for expert trademark legal services, I would advise people to at least take the following measures:

    1. Search for your proposed trademark on Google and at the US Patent and Trademark Office’s database and back away from any mark for which there appears to be identical or similar marks in use on goods or services similar or related to your own
    2. Search your state’s Secretary of State database for any local trademark registrations
    3. Check to see if there are any organizations in your area that might be able to provide you with free or low cost legal services—in Massachusetts, there is Volunteer Lawyers for the Arts, which helps artists find pro bono attorneys willing to help with legal issues, including trademarks and intellectual property concerns.
  5. Can I just use one of those Internet services for registering a trademark?
    Generally speaking, any service that purports to provide trademark searching and registration services and is not associated with a licensed attorney is not worth any amount of money. Indeed, the US Patent and Trademark Office is cracking down on such operations because they commonly mislead consumers into thinking that they’re getting something that they’re not. For the most part, these services run your trademark through an automated search script that spits out a computer generated search report. This type of searching is certainly not comprehensive and is likely to have significant holes in its coverage.Worse yet is the “service” offered in connection with registering your trademark. Typically, data that you provide in the form of a simplified online form is then automatically inserted into a trademark application and submitted. Such a process leaves out a multitude of considerations that might render your applications anything from problematic and expensive to fix to completely useless. Some trademark attorneys have a fondness for these services because they tend to lead a steady stream of people to them, each hoping that the attorney can fix the many mistakes made in the application.If you really want to “do-it-yourself” when it comes to trademark applications, avail yourself of the many resources at the US Patent and Trademark Office’s website and plan to spend a few dozen hours going through the basics. When your application is substantively reviewed by the USPTO, they will likely issue an Office Action, which would need to be responded to and may contain any number of objections. The manual that contains the basic information necessary to effectively prosecute a trademark application contains several hundred pages of information and is available online.