This Side of the Law: How to Think About Protecting Your Brand
By The Attorneys at BNR

HOW TO THINK ABOUT PROTECTING YOUR BRAND

Clients (and potential clients) often call me and state: “I want to trademark a new brand name I chose for my product/service/business.” In most instances, however, they have little idea what that means, or what it entails. For those budding entrepreneurs out there, let me give you a quick tutorial…..

First of all, trademark law is (like many things) a specialized field that few attorneys practice. If you work with an attorney regarding your brand (and you should), make sure he/she is experienced in trademark law.

Trademark Clearance:

• “Clearance” is the process we trademark attorneys undertake in order to help a client choose a brand. Some brands simply incorporate block letter words, sometimes those words are stylized, and sometimes the words go with, or are part of, a design (i.e. a logo).
• From a legal perspective, the key to choosing the right mark is selecting one that is unique, meaning, no one else already has a mark that is identical or “confusingly similar” to yours. The most effective way to discern whether your mark is unique is to order a full trademark search report from a company like ThomsonCompumark (cost is like $800) and to review it with your trademark attorney. Such a report will provide you a good picture of the marks already in use in the marketplace that are identical or which may be deemed “similarly confusing” to yours. This will help assess your probability of success in registering your mark, and well as (and equally important), your risk of being sued for infringement by the owner of another mark who believes your mark is identical or “confusingly similar” to his.
• So before you hang your new sign on your store and spend money on new letterhead, business cards, web site, marketing materials, etc., do some clearance work. It’s always better to spend a little money (relatively speaking) upfront to be sure your mark is safe, than to spend a bunch of money on marketing materials only to find out that your mark will not stand a good chance of being registered and/or that your mark infringes someone else’s, and then you receive a cease and desist letter and have to stop using it.

Trademark Rights:

• Trademark rights can be a confusing concept. The owner of a brand only obtains right when the mark is actually used in commerce ON the product or IN CONJUNCTION WITH the service. This means you cannot simply create a cool brand and save it on your home computer and claim trademark rights. You have to actually use it in the marketplace.

Registration:

• It’s a common misconception that a trademark owner needs to register a mark. You do NOT.
• Common law trademark rights are afforded to any trademark owner who uses his mark in commerce. Your area of protection (i.e. the place where you can assert that you are the only one who has the right to use your mark, or any other mark identical or “confusingly similar” to your mark) is the geographical area in which you actually use the mark. Thus, if you own and operate a flower shop in Pawling, NY under the brand name CARTOON CRAZIES, you likely cannot sue a flower shop owner in Phoenix, AZ who uses the same name for his flower shop.
• If you choose, you can register your mark with the State of New York. This purports to give you statewide protection (regardless of where in the State you are located). It is pretty cheap (i.e. $50 per class) and simply takes one form. There is no substantive review of the application, and therefore is also pretty quick.
• You can also choose to federally register your mark with the United States Patent & Trademark Office (PTO). This, however, is an entirely more substantive, lengthy and expensive process, and one for which you will definitely need a trademark attorney’s assistance. The filing fee is approximately $375 per class. The application will be assigned to a PTO Examining Attorney, who will oversee the examination of the application (what we call the “prosecution” of the application). Prosecution of the application can take anywhere from 18-36 months, depending upon how many issues the Examining Attorney has with the application. After prosecution of the mark, your application will be published in the Official Gazatte for the world to see. Any other mark owner will then have 30 days to file an Opposition to the application. An Opposition proceeding is akin to a mini-litigation, during which the parties litigate over whether the two marks are “confusingly similar” and whether your mark should be entitled to registration. The benefit of a federal registration is that you are entitled to nationwide rights – which makes it a VERY valuable asset!

So here are the takeaways:

• Find an experienced trademark attorney to work with you.
• Do your clearance work first, before you start using your mark or file an application to register it.
• Make sure you actually use your mark in the marketplace.
• If you decide to register your mark, seriously consider the time and expense involved.

Please don’t hesitate to call or stop into our office if you have any questions.

Your neighbor,

Brian L. Berlandi, Esq.

(w) 212-804-6329

(c) 914-525-0898

Email: bberlandi@bnrllp.com

*Brian Berlandi is the Managing Partner of Berlandi Nussbaum & Reitzas LLP. He focuses on personal and corporate transactions within the fields of real estate, health care, and intellectual property. He is a graduate of Bowdoin College and Boston College Law School.