Who is a Trademark Lawyer?
A trademark lawyer is an intellectual property attorney who specializes in trademarks.
A trademark protects the things that help to distinguish your business, product(s) and/or service(s) to your consumers. This helps consumers more easily recognize and pick out your product and services from the others out there.
Trademarks can include the name of your company or product, or any images, symbols, logos, phrases and even sounds or colors that set your company, product and/or services apart from others.
It is best to register your trademark with the United States Patent and Trademark Office (USPTO). This will protect your product from being used by your competitors.
A trademark lawyer understands this process intimately. They understand the issues to consider in determining what kind of trademark, if any, is best for your business. Your trademark lawyer can also help you navigate any disputes with other competitors that may arise over your trademark.
Trademark Lawyers Help Protect Against Trademark Infringement
A trademark infringement is when your competitor uses your trademark in a way that would confuse a consumer in violation of the Lanham Act. The Lanham Act, passed by the U.S. Congress in 1946, is the body of federal law that regulates trademarks.
An example of a trademark infringement is if someone tried to name their new beverage product “Coca-Cola.” Coca-Cola is the most widely consumed and therefore recognizable soft drink in the U.S. and abroad. Someone selling a drink with the name Coca-Cola will understandably confuse consumers, which is a blatant trademark infringement.
One of the critical components of trademark infringement is the concept of likelihood of confusion. Again, a key to protecting trademarks is to minimize or eliminate consumer confusion. Therefore, the chances that your use of a certain name for your company, logo, or tagline will confuse a consumer is going to be the most important determination.
Things such as how recognizable the trademark being potentially infringed is to a consumer, and how closely related your trademark is to the infringement in question, will be key.
Let’s look again at the Coca-Cola trademark, one of the most identifiable trademarks in the world. It already passes the test of being recognizable. So what if the new beverage company calls its product Coka-Cole? That is still close enough to the famous Coca-Cola name to be confusing.
When do You Need a Trademark Lawyer?
You do not want to wait until you have a potential trademark infringement on your hands to hire a trademark lawyer. Every stage of the trademark process should include a trademark lawyer. Here are some examples of how a trademark lawyer commonly assists his or her clients:
Clearing a Proposed Mark
Any time a business wants to register a new trademark, it is important to first determine: 1) the trademark qualifies for protection; and 2) does not infringe on the rights of an existing trademark.
A trademark must be unique in identifying your company or its products or services. If the mark you want to protect is too generic, if probably will not qualify. A knowledgeable trademark lawyer will be able to conduct a thorough trademark search to offer an opinion if the new trademark registration is viable.
Trademark lawyers are familiar with using USPTO’s database to conduct searches. They also know which other records and databases to consult as well.
Filing the paperwork to register a trademark costs money so it helps save time and resources to be sure that your mark is not in violation of an already existing trademark before you send in your application. So having a trademark lawyer on your side at this initial stage is already very helpful.
Preparing the Trademark Application
Once you and your attorney have decided the proposed mark is clear, you next have to apply to register your new trademark. When applying for a new trademark, a trademark attorney will assemble the application and all the paperwork.
Trademark lawyers are responsible for gathering all the relevant details from the business and collecting all the required supporting documentation. The lawyer also files the trademark application on behalf of the organization.
The trademark application can be complicated and difficult to understand. Filing the work improperly could result in the trademark being denied, which in addition to the money spent on the initial application, will cost you money and resources to appeal or refile.
Furthermore, the longer the delay of your trademark’s approval, the higher the risk that another business may apply for the trademark instead. Thus, hiring a trademark lawyer for this stage is essential.
Monitoring the Trademark
The trademark holder, not the USPTO, is responsible for monitoring the use of the mark after your application is approved.
A trademark lawyer will have a process for routine monitoring of unauthorized use of your trademark and can send cease and desist letters when needed. A trademark attorney can help with injunctive relief from the courts and potential monetary damages for the business if further action is required.
The misuse of your trademark by another organization can have devastating consequences to your business, profits and reputation. Additionally, if some businesses get away with using your trademark without legal consequences, more bad actors may do the same. Any sign of weakness may be held against you.
In certain cases, you will have new branches of your business, or business partnerships, in which you want to grant authorized use of your trademark. Your trademark lawyer can help you with this process. You’ll need to ensure that it is done correctly and that your trademark rights are protected. A trademark lawyer can negotiate the authorized use of your mark and draft the licensing agreements and documentation appropriate to those terms.
Some Things to Look For in a Trademark Lawyer
When selecting a trademark lawyer, you should look for the following:
A lawyer with an intellectual property background. An intellectual property lawyer, or IP attorney, is what you will need. You will particularly want a lawyer with an emphasis on trademark law.
The number of trademark applications the trademark lawyer has filed before the USPTO. This research can provide a better idea of the businesses this lawyer works with to ensure the right fit for you and your company.
If the lawyer has any professional publications in the marketplace. You may want to look for articles that show what makes that individual an expert in his or her field. By looking at published articles, you can see if the lawyer has a specific background in your type of business. Often attorneys will include a list of publications in their marketing materials, such as their website profile or Avvo profile.
Building a Relationship with Your Trademark Lawyer
Once you have selected and had your first meeting with a trademark lawyer, make regular communication a routine. This is because there are often issues that have nothing to do with registration. Yet they have everything to do with the prevention of trademark infringement and maintenance of the trademark.
I would recommend meeting with your counsel at least once a quarter. This will allow you to discuss trademark protection strategies. You can also check in on new developments either within your company or the marketplace at large that may impact your trademark.