If you just started a business, you might be wondering what legal services business owners need and how to find the right attorney. Business law might seem like a daunting subject. However, if you break it down into categories, it might be easier to understand.
The 4 main areas of business law are entity formation (like LLCs), contracts, copyrights, and trademarks. You can read more about these areas by clicking here.
In my opinion, trademarks are extremely important assets to small businesses. Please keep reading for a brief summary of the importance of trademark rights and trademark protection. I'll also explain how to find the best trademark attorney to protect you and your business.
What is the trademark process?
Trademarks, copyrights, and patents are all intellectual property matters. We will focus on federal trademark registration in this article.
The trademark process is two steps.
Step 1: Trademark Clearance Search
First, you need to have a trademark clearance search done. This is arguably the most important step. A thorough trademark clearance search involves reviewing federal trademark registrations, trademark applications, state business listings, and common law matters to determine whether there is a similar trademark to the trademark you want to use.
You need to analyze whether the marks will create a likelihood of confusion with consumers. In other words, you need to make sure that your trademark is not "too similar" to another mark. Or else you could be sued for trademark infringement. This step is your due diligence to avoid having to start over because you lost your brand protection and valuable intellectual property.
For example, if you wanted to have the business name "Starbuckz," we would conduct a trademark clearance search of all filings with The United States Patent and Trademark Office ("USPTO"), business listings, and common law searches. That search would reveal the famous "Starbucks" company. We would advise that you not file a trademark application, and also find a new business name. The fact that this company is "Starbuckz" with a "z" does not avoid an infringement suit. You could still be sued because your name is too similar to "Starbucks."
Our firm conducts a thorough trademark clearance search and then summarizes everything for you in a brief memo. We provide you with legal opinions on whether use of a mark could lead to trademark litigation or a trademark trial in the future. The best way to start or run a business is to make sure that your company's name, logo, and slogans are not already taken by someone else. Starting over could mean having to get new domain names, trade names, trade dress, advertisements, packagings, and more.
Step 2: Trademark Application
Next is the application process. You need to submit your application with the USPTO. The USPTO filing fee is $350 per international class. The trademark filing process might seem simple. The form is short. However it is intricate. Online trademark registration services often miss key items (especially the trademark clearance search) that cause applications to get rejected by the USPTO. A small business owner then has to hire an attorney to fix the problem. This costs way more than it would had the business owner hired an experienced trademark attorney in the first place. These legal matters and rejections could be avoided by having a trademark attorney with years of experience.
Another important consideration is using the correct international class. The USPTO uses international classes as indicators for products or services represented by marks. Everything that can be sold (both tangible and intangible) is assigned an International Class (IC). There are 45 international classes organized as follows: 34 categories for goods/products and 11 categories for services. Classes 1 to 34 are for goods and the remaining 11 classes are for services.
With just 45 classifications to categorize all goods and services, it is not uncommon for two seemingly unrelated things to be grouped together. For example, abrasive cleaners and cosmetics belong to the same class i.e., International Class 3. It is important to note that the IC is not indicative of whether there is a likelihood of confusion between two marks. The USPTO or court will look at whether the marks themselves, not the IC, are too similar and could cause customer confusion as to the source of the goods.
Trademark applicants can use the USPTO ID Manual to find the appropriate IC. If the product or service falls under more than one IC, the applicant must pay a registration fee for each class. For example, if you sell both food and clothing, you must register the trademarks in the appropriate class and pay the two registration fees.
Most clothing falls under trademark International Class 25. Footwear and headgear are also within IC 25.
If you register a trademark that is currently in commercial use, you are required to provide a sample/specimen of the trademark. The specimen must show the mark as used on or in connection with the goods/services in commerce. For clothing, the specimen should be a tag or label attached to the item. The stamping of a trademark on products, on the container or on labels or labels attached to products or containers is an appropriate method of affixing a trademark.
Clothing for humans is within class 25. Clothing for animals falls under class 18.
However, some clothing for humans, such as protective clothing (clothing for protection against fire, bullet-proof vests, clothing for protection against chemicals and radiation) are classified under International Class 9.
It is important to specify the type of clothing and verify the international class by checking the USTPO ID Manual when submitting your application. If done incorrectly, the USPTO could issue an initial refusal (office action). That would require more time and money to properly secure your trademark.
Overall, there are several benefits of being a registered trademark owner. One of the biggest benefits of having a registered trademark is that you have access to federal courts in the event that you have to pursue a trademark infringement suit. A registered trademark is also easier for others to find during trademark clearance searches. This can deter another company from having a name that is too similar to yours.
Where can I find a trademark lawyer?
There are trademark lawyers everywhere, from San Diego to Miami. Trademark law in The United States is federal law. Therefore, any licensed attorney can practice trademark law. Meaning you can hire our firm in Florida even if you are anywhere else, even Los Angeles / Orange County or out of the country. And if you are outside of Florida, you must have a trademark lawyer file your trademark application.
Furthermore, the best lawyers have a unique blend of experience experience with both the trademark registration process and civil litigation /commercial litigation (meaning trials in state courts and/or federal courts). Prior litigation experience (like mine!) is beneficial to responding to an office action(s), trademark opposition, or general trademark disputes.
I always remind people that trial experience is important to transaction matters, such as trademarks and contracts, because it gives you insight on how to properly prepare and avoid lawsuits and commercial litigation. I've seen the end process of trial so I know what protections are needed in the beginning to minimize risks for business owners.
Selecting a lawyer is an important decision. Don't go with any web-based trademark application service to protect your trademarks. A trademark is a valuable asset that you want to ensure is done correctly so that you can have exclusive rights to your intellectual property. Work with a lawyer that is in good standing with their local bar association, went to a reputable law school, continuously enrolls in legal education programs, and understands the value of trademarks. Like me!
The best trademark attorneys can often be found in private practice. And you don't need a huge global law firm to make sure that your business is protected. A small and reputable law firm can often times protect you better than a larger firm.
Most trademark attorneys have flat fee retainers. This means that you pay one fee up front for the trademark service instead of an hourly retainer.
How do I know which trademark attorney is right for me?
It is a good idea to have an attorney that specializes in trademarks and with trademarks as the main practice area of the firm. A patent attorney does not always equate to a trademark attorney-- just as a dentist does not always equate to a chiropractor.
I've practiced in several different law fields during my career. I've noticed that you really master a particular area once you focus mainly on that area. I've done this with trademarks. It has enabled me to keep informed of all the updates and be a better lawyer for my clients. I would not have been able to do this if I accepted all different kinds of cases, like personal injury or employment law.
If it is your first time hiring a lawyer, the best choice for you is to hire an attorney that makes you feel like you are in the right place. Have someone that can explain a comprehensive trademark search, trademark litigation, and intellectual property law to you in a way that you can understand. Important things should be explained in simple terms so that everyone can make sure that a company is best protected with all legal tools.
It might also be best to hire someone that has a similar cultural background as you. As an immigrant, I've noticed that cultural differences can make it hard for others to understand because of cultural barriers. Sometimes it takes explaining things in a different way so everyone can understand.
I've also noticed that I can be a better advocate for my Caribbean clients because I understand this culture. I recently overcame a USPTO denial of a trademark application for using a common Caribbean word by explaining that this word is common and one brand should not be entitled to use. My client has rights to use the word and I fought for her. A lawyer not from our background would not have had the same passion and fight to protect this brand.
It is also important to have an attorney that is responsive to your emails and calls. It might be hard to get a hold of an attorney in a very large firm because they are managing too many cases. However, an attorney in a smaller firm could have more time to make the experience more personal for you.
I make sure that I have dedicated office hours where I can respond to all my client emails. I also make sure that I send my clients updates every time I work on their case. My clients never have to wonder where they stand. I let them know and I also respond to their emails and calls. In my opinion, you are doing hard work on your business, so it's my job to keep you posted on the legal side so you do not have to wonder.
On a similar note, hire an attorney that uses updated information technology. For example, at our firm, everything is electronic and paperless. You do not need to come into my office to sign something. You can sign online and email it back to me. This is also important to me because we have international clients.
Moreover, hire a trademark attorney that can handle all areas of trademark law. Our firm handles trademark applications, trademark rejections (Office Actions), trademark litigation, trademark licensing, and trademark renewal. You shouldn't have to hire different lawyers because the firm you selected only handled the application process.
Remember use of a trademark should have a detailed clearance search and trademark registration!
Reach out to our office anytime at (754) 800-4481 or www.mdgrlaw.com.
Thank you for reading!
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes articles on West Indian history and politics to raise awareness of the past, and educate the Caribbean diaspora on the need for legal contracts and trademarks.
She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
Disclaimer: This post is for educational purposes only and does not constitute legal advice. If you need legal help, please reach out to our office for more information about our trademark services. Attorney Melissa D. Goolsarran Ramnauth has extensive experience on trademark matters.