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The Law Office of Joan I. Norek |
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Intellectual Property |
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Chicago, Illinois |
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More on Trademarks - Pre-Filing Issues Trademarks -- Your registration will be only as valuable as the professionalism of the attorney who handles the pre-filing issues. Whether or not there are obvious conflicts is not the only serious pre-filing issue. Trademark selection and protection is rather counter-intuitive. Without pre-filing professional input, you are making a significant investment in a trademark without knowing: 1. The extent to which the trademark is available and will be defensible. Is the trademark confusingly similar to prior marks? Is registration a possibility? Will the registration provide the scope of protection that you assume will be yours? 2. The best registration format for your trademark. A registration can be sought for a trademark in standard character form, stylized or in a logo. Which is best for you and your trademark? Many, if not most, will fail to select the best format. Trademark law is very counter-intuitive, and other issues are not considered. 3. Whether the way you use, or plan to use, the trademark is sufficient. Trademark rights ultimately stem from commercial use. No one can "buy" a trademark. The way you use your trademark can make or break the trademark rights you expect to have. 4. Whether you are filing into a pack of trouble. There are scams out there, and some of the scammers use the USPTO and even the federal courts to accomplish their scams. The ones I have seen will have cost thousands to get out of, because their trademark use had started. A pre-filing search without watching for unusual USPTO activity in the area can turn into a tragedy. 5. The best application format. A registration can be filed as a use-based or intent-to-use application. The choice between one or the other is not as obvious as it may appear. A belief that the trademark has been used can be incorrect. Whether the kind of 'use' required has been realized should be checked to confirm the conclusion is correct. If it is wrong, even innocently, the whole registration process can be wasted. And there may be advantages to using one format over the other when the option is available. 6. Which products and/or services should be claimed. The registration process can well become more costly if the issues of what is being sold now, and what might be sold in the future, are not considered before the registration application is filed.
Catching the problem areas before they become a
problem can be uncomplicated other topics - naming and branding, oppositions, trademark searches, trademark registrations, domain names, slogans, trademark or patent it questions, inquiries - contact the firm (all modes) or call 312.419.8055
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