© 2024 Wayne J. Colton, Inc.
San Antonio, Texas

Trademarks

Building your identity ...

TL;DR

  • trademarks represent a single source responsible for the quality of a product
  • trademarks let customers rely on past experience for purchasing decisions
  • to distinguish products, trademarks should not describe goods or services
  • trademark registrations are very important for effective use of trademarks
  • an international trademark application can protect a business’s foreign trade
  • our trademark services

About Trademarks

Trademarks function as identifiers of source, allowing consumers to distinguish one seller’s goods or services from those of other seller offering the same type of product. A product brand is the most common type of trademark, which may also be called a service mark where services are being provided.

These trademarks identify a single provider of goods or services even if the consumer does not know what the actual business behind the brand is. The trademark itself is enough to assure the consumer that they are getting the same product as they encountered or learned about at some earlier time.

There are also two other types of trademark. Trademarks like ROTARY, VFW or the names of college fraternities are called collective membership marks. These marks identify membership in a particular organization.

Trademarks like UL in connection with electrical products, SWISS in connection with chocolates or the “Restricted” label at the movie theater are called certification marks. These marks indicate that the goods or services they are used with meet some requirement set by a particular certifying entity.

Trademarks used as brands should not describe the branded goods or services. At best trademarks that describe the provided product do a poor job indicating source. Consumers encountering such a mark are likely to think the mark identifies the type of product rather than a brand for the type. This is especially true when the encounter spoken. Even if a descriptive mark becomes protectable the protection afforded the mark is relatively weak, and will never prevent a competitor’s use of the term to fairly and accurately describe the characteristics of their own goods or services.

Virtually anything that is capable of functioning as a trademark can be used as a trademark. To function as a trademark, the mark must simply be capable of distinguishing the owner’s goods or services from those of the same type offered by others. This goes well beyond words to include symbols, graphical designs and other logos.

Qualifying trademarks also include such things as shapes or colors of products or product packaging, particular scents, and sounds, but all of these have additional requirements beyond what is required to protect more traditional marks.

In selecting good trademarks, it is important to keep in mind that the strongest trademarks say nothing about the qualities or characteristics of the branded goods or services. These marks say only that the product comes from the brand owner, and it is the brand owner’s reputation that speaks to the qualities and characteristics of the product. As such, the marks are easily recognized as product brands and are also given the broadest protection.

Within these guidelines, it is most important to select a memorable mark that will gain the attention of target consumers. With a mark selected, it is generally a very good idea to have the mark evaluated by trademark counsel and to obtain an opinion regarding registrability.

Trademark rights are created by use of the mark on or in connection with goods or services, and the value of the trademark is a measure of consumer goodwill obtained through use of the mark. The full extent of protection given to these fundamental rights, however, is only attainable through registration. In general, registration increases the value of the trademark by ultimately ensuring that the owner will be able to continue to use the mark indefinitely.

Registration also facilitates enforcement of the trademark by providing evidence of the owner’s rights, and with time federal registration can preclude challenges to those rights. Federal registration also qualifies the trademark for protection at the borders, enabling U.S. Customs to seize infringing goods before they can enter the United States.

An often underappreciated value is the public record that is created by trademark registration. Any sizable business will generally conduct comprehensive searches of the public records before adopting a mark for use. These businesses will almost always avoid using a mark that is already claimed by another. As a result, the public record prevents disputes from ever arising.

Registration is very important and even critical to some business transactions. For example, trademark rights are central to franchising opportunities. In many cases, it is the trademark rights built up over time that provide the value of a business.

Rather than starting anew, a buyer may wish to purchase an ongoing business to obtain established manufacturing lines, an experienced workforce or a prime location. It is the trademark, though, that provides an established customer base. In a case where the sale of a business at some future date is contemplated, it is very important to obtain registration of the associated trademarks as soon as possible in order to fully vest the benefits of registration, providing the buyer with some assurance that the trademark rights are sound.

The value of a trademark is the goodwill consumers have for the business, and ownership of the mark must never be separated from the goodwill. Because of this, the transfer of trademark rights must be handled correctly to avoid abandonment of the trademark rights on transfer. If purchasing a business in a transaction including trademark rights, the advice of trademark counsel is strongly recommended.

A proper application is required to obtain registration of a trademark, whether at the state level or federally. Although the process itself is relatively straightforward, the details matter. Failure to select the best version of the mark may result in a registration of limited scope. Failure to properly identify the goods or services, on the other hand, can derail the application process. In a worst case scenario, such a failure to properly identify the goods or services can result in a defective registration that later cannot be maintained or is found unenforceable.

In any case, the application will be examined to determine whether it is in proper form and is supported by the evidence showing use. The examination will also include a search of the trademark records by the examiner, who will make a determination whether the mark is so similar to the mark of another that it is likely to confuse the consuming public. If so, the application will be refused and the applicant will be given a deadline for response.

If all is in order a Texas application will immediately register. In a federal application details of the application will be published to allow others the opportunity to oppose the registration. If no opposition is filed, the application will continue toward registration.

International Rights

International trademark protection can be sought if the owner of a trademark intends to conduct business in any of over 120 countries. This option requires the applicant to have either a pending U.S. trademark application or an in force trademark registration. It also requires the applicant to have a connection to the United States. A national application of a foreign country may also benefit from an earlier filed U.S. application or an existing U.S. registration if action is taken within prescribed time periods.

Trademark Attorney Services

Trademark Applications

At the base of the trademark practice we obtain registration of trademarks for use in the United States, and facilitate registration of trademarks for use in other countries. For use of a mark in connection with goods or services offered in the United States we will prepare an application for registration, which entails properly presenting the mark and correctly characterizing the goods or services. This will also entail obtaining suitable evidence establishing actual use of the mark as a trademark, although in some cases this may be deferred.

For use of a mark in connection with goods or services offered outside of the United States an international application may be prepared. At the same time, or alternatively, we may work with a network of foreign trademark attorneys and agents as they prosecute corresponding applications in their own countries. In working with a client seeking foreign trademark protection we will provide early guidance to ensure that the client’s foreign applications receive all available benefits of international treaties between the United States and foreign nations.

Once filed, whether in the United States or internationally, we will monitor the status of the application as it progresses through the examination process. We will respond directly to any actions taken by the USPTO or, in the case of an international trademark application, to any actions taken by the World Intellectual Property Organization (WIPO). During the examination process we may ask the owner of the mark for a sworn statement or declaration of facts supporting our arguments.

For applications filed with the USPTO, we will if necessary appeal an examiner’s final decision to the USPTO’s Trademark Trial and Appeal Board (TTAB). If during the examination process a third party opposes registration of a client’s mark, we can defend against the opposition before the TTAB. If warranted, we are able to appeal any decision by the Board in a federal appeals court in Washington, D.C.

If a foreign trademark office takes an action after initial compliance with the WIPO requirements for an international application, we will either respond or work with foreign counsel for response to the action, depending on the particular circumstances. For applications filed directly with a foreign trademark office we will work with foreign trademark counsel for all matters arising during examination.

Contact Us now to discuss trademark applications with an experienced trademark attorney.

Adoption and Use of Trademarks

In addition to preparation, filing and prosecution of U.S. and international trademark applications, our trademark practice includes providing advice to clients in the earliest stages of product branding, while the client is working to select a trademark. For clients who are not experienced with trademarks, we can explain in detail the characteristics of strong trademarks, which should be sought. Just as important, we can also explain what makes for weak or otherwise problematic trademarks, which should be avoided.

This advice also includes making sure a client understands how to properly use a selected trademark in commerce, and taking steps to ensure that the client succeeds in making proper use of the trademark. We are available to monitor the development of trademarks as a client prepares for first use, ensuring that costly errors are avoided. This will often entail reviewing printers’ and similar proofs just prior to the client’s approval of advertising material, websites, signage, articles used in trade such as glasses in a restaurant, or even the display of the mark as part of a business’s décor.

Contact Us now to discuss selection and use of trademarks with an experienced trademark attorney.

Trademark Searches and Opinions

An important step in the adoption of a trademark is making sure the trademark is available for use as intended. While it is not possible to definitively clear a trademark for any use, the risks associated with using a new trademark can be greatly reduced by conducting appropriate searches of existing prior uses. An opinion based on the result of a search is typically prepared for further consideration with the client.

We can provide an array of searches, which vary in scope according to an assessment of the business risks created by use of the trademark. For example, a registrability opinion for a trademark that presents relatively little risk as proposed for use may be based upon a comprehensive search of federal trademark records, or of federal and Texas trademark records.

Where risk is high, such as in connection with a large scale product rollout, a search may also include the trademark records of every state, nationwide business directories and Internet domain name registrations. In some cases, a comprehensive search may even include trademark records of foreign countries.

Contact Us now to discuss trademark searches or registrability opinions with an experienced trademark attorney.

Trademark Licenses and Sales

Improperly prepared trademark licenses or sale agreements can cause a trademark to lose its distinctiveness. When this happens, and the trademark no longer identifies a single source of goods or services, the trademark may be deemed abandoned and no longer protectable. Likewise the sale of a trademark, or business having a trademark, that does not include the goodwill associated with the trademark can also constitute abandonment.

We are able to prepare appropriate trademark licenses and trademark purchase agreements that do not risk loss of rights. More importantly, we can ensure that the arrangement contemplated by the parties meets the requirements for a valid trademark license. If not, we will work with the client to find and negotiate changes to salvage the arrangement if possible.

Contact Us now to discuss trademark licenses or trademark assignments with an experienced trademark attorney.

Trademark Litigation

In the event of a trademark dispute, we are often able to settle the matter on the most favorable terms available. If the trademark dispute cannot be settled amicably, we will litigate the matter in a federal court. In many cases, actual trademark infringement can be preempted or otherwise avoided by wisely using federal administrative procedures and agency programs. For example, we can entirely avoid some infringements by working with U.S. Customs to have them intercept gray market and infringing imports at the U.S. border.

In the USPTO we can monitor potentially infringing trademarks from the time of filing and take steps to dissuade the applicant from further pursuing the mark. Failing that, we can file an opposition to registration in an administrative proceeding similar to an infringement suit but pursued before registration of the applied-for trademark. This is often prior to any actual use by the applicant.

Where another party threatens litigation based on a registered trademark it may be that there are flaws in the registration that make it invalid. In addition to traditional litigation, we may find it advantageous to file a petition for cancellation of the registration. This administrative proceeding in the USPTO may eliminate some or all of the grounds supporting the party’s infringement claims.

A cancellation proceeding may also be used to remove a registration that is not discovered in time to file a petition for opposition. In this case, however, time is of the essence. Failure to act promptly can waive any right to challenge the registration.

Contact Us now to discuss trademark litigation or other trademark proceedings with an experienced trademark attorney.

Other Trademark Matters

If you have a different trademark issue Contact Us now to discuss it with an experienced trademark attorney. It is very likely that we can help you.