Counseling Clients About the Perils and Pitfalls of Do-It-Yourself IP - Trademarks

A trademark may be around everything that is used to identify a product or service. Trademarks can put in words, logos, shapes, colors, and combinations of the same. Trademarks can represent one of the most important assets of many businesses. Having a fine trademark can distinguish the business' products and/or facilities from those provided by competitors. Accordingly, it can be valuable to the realization of a concern to safe trademark protection. Despite the value that good trademark support can provide, probably even more as a result than taking into account patents, clients may retain the belief that they can file a trademark application or preserve a registered trademark without the opinion of an attorney. It is nearby that clients are reluctant to incur the expense of hiring an attorney to handle trademark matters taking into consideration the forms seem simple to fill out and, of course, play-act the filing without an attorney seemingly can save money. However, the pitfalls of critical corners in the same way as it comes to securing and/or maintaining trademark protection can be myriad.

A. Failure to adequately choose an Enforceable Trademark

Trademark search

When a client attempts to file his/her trademark without the guidance of an attorney, issues sometimes arise because the client may not have finished the due diligence to reasonably state that the trademark is a fine one (i.e., competent of subconscious protected and enforceable). An enforceable trademark is one that allows the owner of the mark to stop others from using the thesame or same marks in link subsequently thesame products or services allied in the same way as the enforceable trademark.

A trademark is more likely to be enforceable next it is distinctive and actually facilities to distinguish the goods or services joined later than the mark from those goods or services provided by others. One of the more common problems once clients try do-it-yourself trademark auspices is selecting a descriptive trademark to be protected. A descriptive trademark is defined as one that describes a vibes of characteristic of the good or facilities to be joined taking into consideration the mark, and these are the marks that are usually the hardest ones to enforce. Yet, a client who is odd next the trademark laws may resign yourself to that his/her chosen trademark is good because it describes the goods and/or facilities to be associated later than the mark. Similarly, the client may admit that the trademark is fine because a potential consumer would know what is living thing sold merely by brute presented next the mark.

When a client selects a descriptive trademark to be protected, the client runs the risk that the U.S. Patent and Trademark Office may disavow that mark for instinctive too descriptive, causing the client to not be dexterous to get hold of a registration at all. The client may try to go at it alone until the U.S. Patent and Trademark Office issues the rejection. At this lessening in time, the attorney may have limited options to address the rejection. The attorney may suggest that the client amend to area the trademark on the Supplemental Register until such get older as the trademark owner can operate long and extensive use, making the mark distinctive. This can be a strategy to quarters the rejection, but the client must then be prepared to make the investment of era and child support to make the mark worthwhile to maintain.

Another potential pitfall of failing to reasonably choose an enforceable trademark at the outset is that in imitation of the U.S. Patent and Trademark Office performs a search during examination, they may identify an existing mark that presents a potential bar to registration because of likelihood of confusion. In such a scenario, the mark may not be protectable, and in fact, may be infringing, thereby causing the client to have to rebrand a business or product. This may cost the client much more grant than would have been paid to a trademark attorney.

The best mannerism to identify such problems is to carry out proper searches prior to filing. These searches may determine the availability of the mark for use and registration next exaltation to one or more classes of goods and services. Conducting a search may welcome marks that are identical or same to the proposed mark. If the proposed mark is identical or sufficiently similar to an existing mark, which is used for goods and/or services that are the similar or thesame to the proposed goods and services, there could be a risk of likelihood of confusion together with these marks. Such likelihood of confusion could cause the denial of a registration of the proposed mark or expose the client to liability for trademark infringement if it uses the proposed mark. unfortunately there are no bright-line rules as to whether there is a risk of likelihood of confusion or the degree of such risk. Instead, it is a question of fact depending upon an assessment of each individual mark as capably as an assessment of the degree of similarity of the relevant goods and/or services. Having an attorney encourage behind such an evaluation prior to filing a trademark application is perhaps one of the most full of zip financial investments a client can make, as it can potentially help to avoid major authentic and new event costs next to the road, particularly if it helps to avoid a rebranding excite