10 Essential Questions for a Startup Trademark Attorney

All roads were leading us back to the blue box.”

Marka Hansen, President of Gap North America (October, 2010)

Back in 2010, when a fair few of you reading this were either in college or even high school, U.S. fashion retailing giant Gap, who actually hadn’t seen an in-store net profit for several years, decided to refresh their iconic brand image by altering their logo, hoping this would lead to a significant change in company fortunes.

We reached out to a few lawyers to see if this was common. One of them being Entcounsel, an entertainment lawyer in Toronto. And they agreed, they see this sort of thing all the time.

Well, as any student knows, there are fails… and then there are FAILS. The enormous customer backlash, led through social media, resulted in Gap dropping the new multi-million dollar logo within a week, and this ill-thought out, failed marketing ploy ended up costing the company a cool $100 million. As one of my old college buddies used to repeatedly say after getting in trouble yet again for something or another, “Andy, honestly, it just seemed a good idea at the time.”

Allow me to introduce myself. My name is Andrew Macia, a successful digital marketing entrepreneur, with technology startups forming a high percentage of my ever-growing client list. The colossal subject of branding and its intelligent design is, understandably, close to my heart, every facet of which usually gets my undivided attention.

Recently, I thankfully had the opportunity to discuss at length the importance of branding legalities – in other words, trademarking and protecting your brand – with David N. Sharifi, a well-respected, experienced trademark lawyer for startups, based in Los Angeles, CA. As David told me:

In the early stage of a technology startup, from idea to market research to product launch, the company name, or a brand name, enters the entrepreneur’s mind from a myriad of sources and inspiration. Soon after, navigating the complexities of trademark due diligence to select and adopt a brand name as the name of the product or service to be launched becomes critical.” 

Here is the full, hugely enlightening interview – 10 essential questions for startup trademark attorney – a must-read for anyone themselves navigating the raw, forceful impetus (and possible pitfalls) of their own startup.

1. Is it a legal requirement or absolutely necessary for me to register my trademark?

In the U.S., filing for trademark registration at the federal or state level is not required to obtain trademark rights because of the long-standing tradition of recognizing common law trademarks. However, common law trademark rights require actual use in commerce, which generally requires a finished product or service, and the detailed requirements may slightly vary in each U.S. state. For technology startups that are pre-launch, they may not qualify for common law trademark protection, leaving the federal trademark registration system as the only option to reserve their trademark rights until they are launched. Federal trademark protection by filing an application in the United States Patent & Trademark Office (USPTO) is usually the best option regardless for nationwide protection, with the greatest legal advantages, even if common law requirements are already met.

If you’re based elsewhere, for example in Canada, it’s worth noting that you’ll need to follow a different trademark registration process as this page describes https://www.heerlaw.com/trademark.

2. What advice can you give about my choice of trademark?

I cannot give legal advice because this is just an informational interview, and readers should consult an experienced trademark attorney before relying on the information. Below are few general best practices for trademark selection, adoption, and legal protection in the United States:

  • Consider federal trademark registration as the best way to protect a trademark rather than relying on common law rights.
  • Timing is critical in U.S. Trademark Law. The first person or company to file for a trademark application, OR, the first person who establishes common law rights, has legal priority to the trademark.
  • Try to pick a unique name – the strongest trademarks are coined terms like KODAK® which has no english meaning. These so-called fanciful marks are strongest, and usually get the fewest rejection or office actions in the USPTO federal trademark registration process. Of course, each trademark is analyzed on a case-by-case basis.

3. What trademark specimen should I use?

A specimen must show use of the mark on the products or services identified in the application. Some the USPTO has listed as acceptable include:

  • Labels, tags, or containers and packaging for goods
  • For service providers, specimens may be advertising such as magazine advertisements or brochures.
  • A photograph of the product showing the mark directly on the product (e.g., the bottom of a coffee mug)
  • Product labels and tags showing the mark (e.g., the label on a t-shirt)
  • Product packaging showing the mark (e.g., detergent soap packaging)
  • Signage used in a product display at a store (e.g., a photograph of the display)
  • A web page showing or describing the product near the mark and with purchasing information.
  • Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.)

4. What are the costs involved?

The costs can vary depending on the complexity of the trademark, and the range or products for which the trademark is used, which will determine the number of applications to file in the USPTO. Generally, technology startups and entrepreneurs should budget for their trademark search and clearance steps, whether they use an attorney or some other service. A trademark search is not required, but can provide insight on potential conflicts before a federal trademark application is filed in the USPTO.

After the search (or if the search is skipped), a separate budget for filing the application is required in each class. For example, a fashion company wanting to protect their name for clothing would likely only need to file one application, and including various apparel merchandise items under that application, such as t-shirts, pants, skirts, dresses, gloves, headgear, and shoes or various footwear. These all fall under International Class 025 for apparel merchandise and would be under one application.

If this same company also wanted to protect the same brand name in connection with their blog, or a lifestyle media channel that discusses fashion and apparel merchandise online, then a second trademark application may be filed in International Class 041 for online media content and digital publishing, and this would require a separate budget. If they also wanted to make perfumes and cosmetic products under the same brand, an additional application would be filed in Class 003.

There are 45 International Classifications in the US Trademark Office, and they cover virtually all areas of industry. So, it all depends on the scope of protection and other case-by-case specific factors. Entrepreneurs and technology startup CEOs should aim to work with an experienced technology, trademark and intellectual property attorney, who have expertise working with technology startups on lean budgets, and reach a clear understanding of the legal costs and due diligence steps to be performed at each stage of the trademark selection and protection process.

5. How can I fully protect my trademark?

There is no “full trademark protection,” particularly for new brands because of the risk of potential earlier users. Also, for international trademark protection, separate filings in each country may be required.

The best trademark protection strategy roadmap for technology startups is:

  1. Select a trademark as a first choice, and have 2-3 backups.
  2. Do a Google search to see if someone is using the mark.
  3. After your own search, consider hiring a trademark attorney to either also do search, and/or file a federal trademark application in the USPTO.
  4. Assuming there are no conflicts, this is the best method of trademark protection in the U.S., using the federal trademark registration system in the USPTO.

6. Have you had any difficult cases in the past, and how were they resolved?

Without discussing client details, I had a case where we filed a federal trademark application for a very desirable brand name in connection with a mobile application software company. A few weeks after our federal filing, we discovered a Fortune 500 company using the exact same trademark in connection with the exact same mobile application software on one of Apple’s App Stores. We ended up being successful on the issue of priority because our federal trademark application was filed in the USPTO just a few hours before their mobile application went live, and this withstood legal challenges. That case went to appeal and my client was ultimately successful. The case is now federal law in the Seventh Circuit.

The lesson for trademark owners is the legal benefits of presumptive nationwide priority that comes with filing a federal trademark application, assuming other legal requirements are met and the application matures to registration, can be substantial.

7. Does your practice handle other types of cases, or is it solely focused on trademarks, and their registration and protection?

We are an intellectual property and entertainment law firm, and we focus on digital media and technology startup ventures, including software innovation. Intellectual property law includes trademarks, copyright law, patent law, trade secret and confidential information protection, and the protection of these proprietary assets through registrations and through contracts.

We also negotiate and draft contracts related to software development and attaching key strategic partners to ventures. Most of intellectual property law is federal law, and we have clients all over the U.S, China, European Union, U.K., and other countries.

8. How many trademarks have you registered?

In my ten years of exclusive intellectual property law practice, I am personally listed as attorney of record on over 165 federal trademark records in the USPTO database. I am also attorney of record on over 26 trademark litigation cases in the Trademark Trial And Appeal Board (TTAB), and regularly consult legal teams on federal trademark litigation in connection with technology.

I’ve been named among the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal and interviewed by ABC News, KTLA News and other major outlets as a legal expert in technology, trademark and startup law.

9. Have you ever had to present verbal arguments and representations before the TTAB?

No, primarily because the TTAB is designed to keep legal costs low by permitting arguments in writing, making oral arguments rare in these settings.

10. If you could summarize the importance of a trademark, what would that be?

Take action on trademark protection early as priority matters, and try to select a unique name because generic or descriptive terms like “Delicious Beer” for beer or “Soft” for pillows, for example, may have more legal hurdles compared to the strongest types of trademark protection for coined, fanciful terms like “Kodak®” for photography film.

As we have learned, during the early stages of a tech startup venture, branding and marketing questions arise, and entrepreneurs and CEOs begin to consider their brand name protection with trademarking. A lot of factors can determine what makes “good” trademark from a legal perspective. Consideration of these factors with an experienced trademark attorney can help entrepreneurs make informed decisions about which brand names, logos, and slogans to protect, and which federal trademark application filing strategies in the USPTO best suits their objectives.

  • The importance of due diligence is paramount to avoid potential conflicts.
  • Analyzing the scope of trademark protection across various goods and services is also important.
  • The type of specimen that will be required to complete trademark registration can help inform the filing strategy early on in some cases.
  • Consulting with an experienced trademark attorney can significantly improve the chances for federal trademark registration.

Are you currently using trademark on products and services or do you want to protect a trademark for a product that is pre-launch? Please feel free to comment with your questions or concerns about branding, timing, and using trademark protection to protect brand names and logos in the U.S. However, remember this is a public forum, so keep any confidential information just that – confidential.

Lastly, and after profusely thanking him for his excellent insights, David wouldn’t let me go without promising to include the following:

Disclaimer: The content here is a discussion of legal issues and general information; it does not constitute legal advice, and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship.

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