Booth Udall Fuller, PLC provides trademark services on state, federal, and international levels. Our attorneys focus on serving clients during every phase of the life span of their trademarks:
Trademarks can take a variety of forms. While a trademark is often thought of as a word, phrase or logo, a trademark can also consist of numbers, symbols, stylized lettering, slogans, shapes, colors, sounds, smells, flavors, or any combination of the foregoing, among various other possibilities such as the appearance or shape of the goods or their packaging.
The process of choosing a trademark is difficult. Clients often want to select a descriptive trademark that immediately conveys to consumers the nature of a good or a service or a generic trademark that is the general name of a good or service. However, Booth Udall Fuller attorneys conceive of or carefully help clients select and adopt protectable trademarks that are capable of distinguishing clients’ goods or services from those of others by not describing the goods or services for which they are used, namely trademarks that are coined or invented, arbitrary, suggestive, or a combination of a fanciful, arbitrary, or suggestive component with a descriptive or generic component.
Besides ensuring that trademarks are protectable, Booth Udall Fuller attorneys help clients select trademarks that do not suffer from defects that would prevent the trademarks from being registered. For example, trademarks that are deceptively misdescriptive, geographically descriptive, or geographically deceptively misdescriptive of goods or services cannot be federally registered. Trademarks that are primarily surnames should be avoided as well since they are considered descriptive and may not be protectable or registered in the absence of proof of secondary meaning. Additionally, functional trademarks and trademarks that comprise immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute, cannot be federally registered.
Furthermore, Booth Udall Fuller attorneys often work closely with marketing professionals to make sure that new marketing and brand strategies, which help develop goodwill, have a firm legal basis and help clients select trademarks that do not suffer from marketing shortcomings. For example, trademarks that when translated have negative meanings or trademarks that have any negative meanings either standing alone or when used in connection with the particular goods or services should be avoided. Trademarks (or components of them) that are extensively used by others should be avoided as well since such use will weaken the scope of protection of the trademarks by reducing their distinctiveness. Additionally, trademarks that are difficult for consumers to recognize, pronounce, and/or spell should be avoided so that it will not be difficult for consumers to find or to order particular goods or services.
Screening, Clearance Searches, Reports, and Investigations
Once a trademark has been selected, a limited “screening” or “knock out” search followed by a full comprehensive clearance search should be conducted to determine whether anyone else is using the same or confusingly similar trademark for the same or related goods or services, and, therefore, be able to successfully challenge your use and registration of the trademark. Searches also help determine whether the selected trademark will be protectable against others and can reveal potential obstacles that may be encountered in registering the trademark. From a legal perspective, failure to conduct these searches before adopting and using a trademark may leave an individual or company open for a claim of trademark infringement. From a business perspective, failure to conduct these searches can result in the loss of investments in advertising, promotional, and collateral materials, as well as any goodwill developed in the trademark.
Booth Udall Fuller attorneys conduct a preliminary screening search to eliminate those marks that are identical to marks already in use, registered, or pending for goods or services identical or related to yours by searching the trademark on the Internet and checking the phone book, reviewing trade journals and guides in your industry, and by searching federal trademark applications and registrations on the United States Patent and Trademark Office’s Trademark Electronic Search System. Even if the preliminary screening search does not reveal any potentially conflicting uses, it should not be relied upon to conclude that the selected trademark could be adopted and used. In most instances, a full comprehensive clearance search will need to be performed.
Booth Udall Fuller attorneys utilize proven commercial companies to conduct independent and objective clearance searches of numerous databases encompassing federally registered, pending, abandoned, cancelled, or expired trademarks, state registered, pending, abandoned, cancelled, or expired trademarks, and common law sources such as trade journals, phone books, corporate listings, Internet domain names, World Wide Web sites, business names, buyer’s guides, catalogs, and industry directories, as well as administrative and court decisions relating to trademarks. Once a search report is received, a comprehensive analysis of the search results is then made by Booth Udall attorneys to determine which results may pose a problem, and clients are then provided a legal report concerning the viability for both registration and use of their proposed mark for its particular goods or services.
After you receive our legal report, it may then be necessary to investigate existing registrations or uses that may be problematic. Booth Udall Fuller attorneys can conduct these investigations and make an assessment of the nature and extent of the risks.
Preparation, Filing, Prosecution, Registration, and Maintenance
In the United States, trademark rights immediately arise under the common law where the good faith use and reputation of the mark have been established. However, clients should not rely on common law rights alone, but should consider applying for and obtaining a state or federally registered trademark if they currently produce or intend to produce a good, provide a service, or operate a web site on the Internet, and if they engage or will engage in interstate commerce.
Registered trademarks can be very valuable assets and help to protect the trademarks, put others on notice, and provide a presumption of ownership. State trademark registrations provide trademark protection within the geographic confines of a state and are the only option if the use of the trademarks is not intended to extend beyond state boundaries or if federal trademark registrations are not obtainable. However, federal trademark registrations are the most preferred because they allow applications based on intent to use trademarks in the future, provide evidence of the exclusive right of the registrant to use the trademarks in commerce, are considered national constructive notice of the registrant’s claim of ownership, and may be deposited with the Untied States Customs authorities to prevent the importation of goods bearing infringing trademarks.
Clients rely on Booth Udall Fuller attorneys for effectively preparing and filing state, federal and international applications under the Madrid Protocol. We provide guidance and expertise in identifying the trademark to be identified in the application, as well as the international class and the acceptable identification of goods or services that the trademark has been or will be associated with and information regarding the date of first use, the owner of the trademark, and other required information to streamline the examination the application. Clients also rely on us for effectively prosecuting applications through to registration or refusal, appeals, opposition, or cancellation proceedings.
In all countries it is necessary to maintain your trademark. Booth Udall Fuller will keep track of these maintenance dates for clients and provide this information to clients on a timely basis so their registrations can be renewed.
Quality, Usage, and Protection
Whether or not clients obtain registrations for their trademarks, it is essential that it is used as a trademark and its usage and the quality of the products or services associated with it are controlled. Failure to do so can not only result in the destruction of the trademark as a source and trade identifier, but could adversely affect consumers’ perceptions of the trademark and its associated goods or services.
Our attorneys counsel with and help clients set standards to control the manner of use and display of their trademark. Generally, the trademark should be should be prominently positioned on labels or advertisement materials and should be followed by the appropriate symbol (i.e., TM, SM, or ®). In written materials the trademark should be used as an adjective, followed by a generic noun. The trademark should never be used as a verb, in the plural, or in the possessive, and the trademark should never be altered or abbreviated. The trademark should be set off from surrounding text by using the appropriate symbol and larger-sized print, all capital letters, distinctive print, color, and/or the like. We also advise clients on applicable laws relating to notices, markings and legends in order to give appropriate notice of trademark rights.
Booth Udall Fuller attorneys also counsel with and help clients set standards to control the quality of the goods or services associated with their trademark. We advise clients on applicable laws relating to the production, advertising, promotion, distribution and sale of their goods or services, as well as laws relating to notices, markings and legends in order to give appropriate notice of trademark rights.
Trademark rights can also be lost through abandonment, as the result of the trademark becoming a generic term, through failure to maintain registrations (as discussed in the previous section), and through failure to monitor or enforce trademark rights (as discussed in the next section). Booth Udall Fuller attorneys help clients and marketing professionals develop advertising to educate consumers to use client trademarks as trade identifiers rather than as generic terms, and help clients ensure that their trademarks are differentiated from the characteristics, functions, or purposes of their goods or services on packaging or advertising materials (e.g., by placing the trademark in prominent print followed by a description of the goods or services).
Monitoring and Enforcing
Whether or not clients obtain registrations for their trademarks, clients should monitor and enforce their trademark rights. Preemptive enforcement is usually preferred and is less difficult and expensive than litigation, which to a great extent is dependent upon the opposing party’s conduct and strategies pursued. Our attorneys can help protect trademarks by identifying potential trademark infringement early on through utilizing proven commercial watch services. Watch services provide us with reports of any federal trademark applications, state registrations, common law business names, domain names, or uses that are the same as or similar to trademarks of our clients.
These early warnings enable us to immediately contact infringers early on when there is a greater chance for resolution. Sometimes a cease and desist phone call or letter is enough. However, if litigation in state or federal courts, proceedings before the Trademark Trial and Appeal Board of the USPTO, or domain name disputes under ICANN’s uniform dispute resolution policy become necessary, Booth Udall attorneys will work to achieve a resolution that is as beneficial as possible.
Booth Udall Fuller attorneys help clients reap the maximum benefit from their trademarks through their licensing. As client trademarks become better recognized, it is often possible to commercially exploit them in unrelated fields. We work with clients to help them secure rewarding revenue opportunities for having invested in their trademarks by participating in negotiations and preparing license, trademark acquisition, co-existence, and settlement agreements.