How a Trademark Attorney can Protect your Brand
Your company’s distinctive brand (or “trademark”) carries your company’s reputation (or “goodwill”). The intangible asset of goodwill, embodied in your trademark, is likely your most valuable company asset. A trademark is a unique asset because it can grow in value over time and last as long as you use and protect it. So protecting your brand and adding to the goodwill in your trademark is extremely important in preserving and adding to the value of your company.
Federal trademark registration gives you the exclusive right to use your brand in all fifty states. But before you apply to register your mark, you need to know if someone else has already used or registered it. If you don’t, you may end up in an expensive trademark infringement lawsuit because, as a general rule, first use trumps registration.
So, before applying to register a trademark, the first step in the process is to do a comprehensive search to ensure you can register the mark your want to use. Our trademark attorney’s search included the U.S. Patent and Trademark Office database, the business name and trademark registries in all 50 states, Internet domain names, a directory of millions of U.S. business names, and trademark registries in countries you identify where you want to do business. Then our trademark attorneys provided a detailed letter of advice summarizing the results of our search, identifying potential conflicts, and explaining your options if there is a conflict.
Once a search shows your trademark is in the clear, what are the next steps to obtain federal registration?
- Use the mark (or plan to use it) “in commerce,” meaning in connection with the sale of goods or services in more than one state.
- Provide the dates the mark was first used and first used “in commerce.”
- Identify the International Class (or Classes) under which to file the mark (this is where we can help).
- Prepare a description of the goods or services offered in connection with the mark (we can help here, too).
- Decide whether to apply for a words-only or a words-and-design (logo) mark, or both (we can discuss advantages and disadvantages of each).
- Provide a copy of any logo, and a specimen to show the word mark or logo in use (for example, on a label or packaging, or, for an Internet-based business, a website screenshot); and
- Pay a filing fee.
Why use a Trademark Attorney?
In sum, before you decide a “do-it-yourself” approach to protecting your brand – and risk an expensive lawsuit – consider having a trademark attorney conduct a comprehensive search and then help you prepare and file your application. Contact Fillmore Spencer Law today to learn how we can help you protect your brand.
Barnard N. Madsen’s current practice focuses on intellectual property, employment law, commercial litigation, and appeals. For four years running, he has been voted by other attorneys in the state as one of Utah’s Legal Elite in intellectual property and business litigation.
