Based on his experience as a trademark attorney, Hank Fasthoff knows that the importance of a company’s brand–symbolized by its trademarks and goodwill–cannot be overstated. In 2016, the aggregate value of the world’s Top 10 most valuable brands was more than $750 billion, according to Interbrand, with Apple leading the way with a value of $178 billion.
Below is a very high-level, incomplete, general overview of a few aspects of trademark law. Do not rely on it as legal advice because it is not legal advice.
What Does Trademark Law Cover?
A trademark is a word, phrase, symbol, design, sound or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark serves the same function with respect to services and, although technically different, trademarks and service marks are typically referred to as “trademarks” and treated the same.
Trademark law also encompasses “trade dress,” which include things such as shape, color, and overall look and feel (if it serves as a source identifier), e.g., the shape of a Coca-Cola bottle, the shape of a Ferrari, Kodak’s yellow and red color combination, and the shape of a Mobil gas pump.
Trademarks permit manufacturers, distributors and retailers to distinguish their brands from those of others, thereby giving customers an easy to way to identify goods and services which, in turn, enables customers to make quicker purchasing decisions.
Why Should I Register My Trademark?
Trademark rights in the United States arise by using the mark in commerce, not by obtaining a trademark registration. There are, however, important reasons to apply for and obtain federal registrations for trademarks. A federal trademark registration:
- Grants to the owner of the mark the exclusive right to use the trademark nationwide in connection with the goods and services listed in the registration
- Provides nationwide “constructive notice” of a business’s trademark rights, thereby eliminating any argument by a subsequent user that its trademark was adopted and used in good faith
- Grants the right to use the ® symbol (use of the ® symbol without a federal registration is considered fraudulent under certain circumstances and can have significant penalties)
- Grants the trademark owner a priority use date that relates back to the date of filing the trademark application, which is important since trademark rights arise from use rather than registration
- Provides a basis for filing foreign trademark applications
- Provides the right to recover treble damages in certain instances when it becomes necessary to enforce your trademark rights in court
- Makes statutory damages available if a third party is engaged in counterfeiting the goods or services of a registered trademark owner, damages which can range from $1,000 to $2,000,000 per counterfeit mark, per type of goods or services sold, offered for sale, or distributed
- Gives the trademark owner the right to record the registration with the U.S. Customs Service which, in turn, is then empowered to block seize items with counterfeit marks
How Do I Register a Trademark?
Many people believe that filing a trademark application and obtaining a registration is essentially an administrative procedure that involves rotely filling out and filing a form with the U.S. Patent & Trademark Office. There is, however, considerably more to it than that.
The most prudent way to go about filing a trademark application first involves consulting with the trademark attorney about the proposed trademark(s). The attorney should evaluate the proposed mark for any obvious problems (e.g., using “Apl” to brand a computer company, or “McDowell’s” with a golden arcs design to brand a quick service hamburger restaurant).
The client is given the option of having the attorney commission a trademark search that is designed to identify existing trademarks that could potentially block a registration or otherwise be problematic for the client. These searches should be performed by third party search companies that use proprietary algorithms to identify potentially problematic marks already in use.
If the client decides, in consultation with the trademark attorney, to proceed with filing an application based on the results of the trademark search report, the attorney files the application. This process requires identification of the International Classes and description of the goods and services with which the trademark is used, or will be used.
Approximately three months after the application is filed it is assigned to a trademark examiner at the U.S. Patent & Trademark Office. The examiner will review the application and determine whether the mark should be registered.
If the examiner concludes that it should not be registered, the examiner will issue an “Office Action” explaining the reasons for refusal. The trademark attorney will be able to respond and present augments and evidence designed to overcome the examiner’s objections.
If there are no objections to registration, or if the applicant overcomes all objections, a Notice of Publication will be issued and the mark will be published in the Official Gazette, a weekly publication of the U.S. Patent & Trademark Office. Third parties who believe they will be damaged by the registration then have 30 days within which to file a Notice of Opposition or request an extension of time to oppose the registration.
If an opposition proceeding is filed, then the client has the option of fighting the opposition proceeding (which is trademark litigation before an administrative body), abandoning the application or reaching some sort of compromise with the opposer (assuming the opposer wants to cooperate).
If the opposition period expires without anyone opposing the application, a registration will be issued. The entire process from filing the application to receiving a registration–assuming there is no opposition and any Office Actions are promptly and successfully addressed–takes approximately 7-9 months.
Trademark Lawyer Services
With more than 23 years of experience in the trademark field, Hank Fasthoff is well-versed as a trademark attorney in helping clients understand trademark law and unfair competition law, and helping them to protect and enforce their rights. Below is a sample list of the advice, counseling and transactional services we provide to protect and commercialize our clients’ trademarks interests:
- Preparing and filing trademark applications and obtaining trademark registrations
- Prosecution and defense of inter partes proceedings before the U.S. Patent & Trademark Office
- Negotiation and drafting of commercial agreements where trademark rights are at issue
- Advising clients on the legal aspects of commercializing trademarks
- Drafting of trademark licenses
- Assisting clients with due diligence in transactions involving trademarks, copyrights and other intellectual property
- Drafting and recording of intellectual property and trademark assignments
With more than 23 years of experience representing clients ranging from Fortune 500 companies to celebrities to small business owners and entrepreneurs, the Fasthoff Law Firm is able to guide clients through the subtle and nuanced world of trademark law and other intellectual property rights. For more information on Hank’s experience as a trademark attorney with trademark litigation and other intellectual property litigation, click here. Feel free to contact the firm now to discuss how we may be able to assist you and your business.
Some of the clients for whom Hank has provided representation and legal services include:
Contact the Fasthoff Law Firm Today
Intellectual property rights are mostly a matter of federal law, so the Fasthoff Law Firm is able to assist clients from around the country. If you are in need of a trademark lawyer or trademark attorney in The Woodlands or a trademark attorney or trademark lawyer in Houston, contact the Fasthoff Law Firm, and its trademark law firm with offices in Houston and The Woodlands, to learn more about how your trademark rights can be protected and enforced so as to help maximize their value in your business.
Hank is AV-rated (highest) by Martindale-Hubbell, is a Top Rated Intellectual Property Attorney by Texas Super Lawyers®, was ranked for five consecutive years as a Texas Super Lawyers® Rising Star in the fields of Entertainment and Intellectual Property, and has been ranked from 2013-present by US News & World Reports’ Best Lawyers® Litigation – Intellectual Property Litigation.