SHOULD A BUSINESS REGISTER ITS BRAND NAME AND LOGO?
Illinois attorneys explain the benefits of applying for a federal trademark
on January 28, 2022
Updated on February 2, 2022
Businesses with unregistered trademarks may not be in breach of Illinois or federal law, but Illinois attorneys agree there are benefits to successfully filing an application with the U.S. Patent and Trademark Office (PTO).
And the sooner the application is filed, the better, says Ashley Rovner-Watson, associate trademark attorney with Amin Talati Wasserman in Chicago. “I am a big proponent of filing early,” she says. “That helps when someone else comes along and says, ‘I have this mark, please stop [using it].’ You can then demonstrate, ‘No, I predate you.’ That’s important. You want to be able to predate anybody in your market.”
Michele S. Katz, founder of intellectual property law firm Advitam IP in Chicago, agrees: “When you’re looking at the flowchart, say, of starting a business, the trademark [step] should actually be at the very top,” especially before investing in advertising and a web presence.
Brett Manchel, also an associate trademark attorney with Amin Talati Wasserman, adds: “Think of me as somebody on your marketing team and your business-development team, because we want to be solid on what the mark is going to be [and] what it’s going to cover now and in the future.
“By knowing how you’re going to use the mark, we know what specimens we’re going to need to submit to the PTO to prove that the mark is in use so that we can get a registration.”
What are the benefits of registration? Enforcement of brand, for one thing, says Katz. Federal registration offers “much bigger, broader protection,” she adds, as compared to common law rights.
It also builds business credibility and shows investment in your brand, Katz continues. “Only federal registration holders can use the ‘R’ in a circle—that is a notice symbol to the public that you have a federally registered trademark.”
Registration also demonstrates savviness, Manchel says, “because a trademark is valuable intellectual property.”
Securing and maintaining trademark registration is important for businesses at all stages of the life cycle, including those preparing to sell. “It’s best to make sure that your portfolio is in a good place, and by that I mean that you’ve renewed all your trademarks,” Katz says.
Before taking steps toward filing, Katz recommends calling a trademark lawyer to discuss short- and long-term business goals. “The business owner and the lawyer can make an educated decision as to their trademark strategy,” she says.
Manchel agrees. “The lawyer can explain everything to you.” An applicant likely won’t be able to glean the same knowledge from online research alone. Legal guidance can help clinch application success, which is good, because, as Manchel notes, “it can get pretty complicated.”
The process can take from six months to years, depending on the application’s complexity and current processing times at the PTO, the attorneys say. Actions from trademark examiners may need to be addressed, third-party blockage attempts might arise, or similar trademarks could be discovered. All of the above can be confusing.
That’s why, before filing, it’s good to work with an attorney on a risk assessment: searching the market and existing brands to clear a mark. This will help avoid trouble down the road, notes Rovner-Watson, such as receiving a cease-and-desist letter or a refusal from the PTO.
“A bad place to be is on the receiving end of a cease-and-desist letter and then going to the lawyer,” Manchel says.
A lawyer also can go over the patent office’s fees, and recommend whether to seek word or design mark registration, or both. The PTO website (uspto.gov) is a great resource for more information—especially for a basic explanation of trademark law—but “it’s best to bring in a lawyer,” Katz adds. “I do not recommend filing an application on your own, even though the form can be found online. There are a lot of nuances.”