Trademarks

Intellectual Property

Search before you commit, not after the signage is printed.

A clearance search before launch is inexpensive; rebranding after a cease and desist is not. The search looks at federal registrations, pending applications, state registrations and common law use, and it evaluates similarity in sound, appearance and meaning across related goods and services — not just identical names.

What can be registered, and what cannot

• Word marks, design marks and combined word-and-design marks are filed separately, and the word mark is usually the one to secure first because it protects the name in any styling.
• Strong marks are fanciful, arbitrary or suggestive — invented words, or ordinary words used in a way unrelated to the product.
• Descriptive marks describe the goods or services and can only be registered after acquiring distinctiveness through substantial use.
• Generic terms can never be registered by anyone, however much is spent promoting them.
• Surnames, geographic terms and laudatory phrases face additional hurdles.
• Marks are registered for specific goods and services in defined classes, and the description you file determines the scope of what you own.

The application process

A federal application is filed on the basis of actual use, or of a genuine intent to use with a later statement of use. Examination takes months and frequently produces an office action — a refusal or a request that has to be answered on time and on the merits. Once approved, the mark is published for opposition. After registration, maintenance filings are required at set intervals, and missing them cancels the registration regardless of how long you have used the mark.

State and common law

Texas offers state registration, which is faster and cheaper but limited to Texas and considerably weaker than federal registration. Common law rights arise from use alone and are limited to the geographic area of actual use. For a business that intends to operate beyond one market, federal registration is the one worth having.

Why a registration is worth the trouble

• It builds customer trust and recognition — the mark becomes an asset rather than a name you happen to use.
• It adds value to the business, and it is one of the first things a buyer or investor asks about.
• It creates an official public record of ownership, with a priority date.
• It gives you the standing to enforce your rights in court if it comes to that.
• It protects digital assets: domains, handles, marketplace listings and app store presence.

Office actions, refusals and oppositions

A refusal is not the end of an application. Answering one is legal analysis and evidence: showing acquired distinctiveness, distinguishing the cited mark, narrowing the goods and services, or arguing that confusion is unlikely on the facts. The response has to be filed on time and argued on the merits. Oppositions after publication work the same way, with the added dimension of a party on the other side who can usually be negotiated with.

Keeping the registration alive

Registrations require maintenance filings at set intervals — a declaration of continued use, an optional declaration of incontestability once the mark has been in continuous use long enough, and periodic renewals. Ownership and business information have to be kept current, and a change of entity or an assignment that is never recorded causes problems years later. Missing a maintenance deadline cancels the registration outright, however long you have used the mark.

Trademarks inside other agreements

Marks show up in franchise agreements, partnership and joint venture agreements, licensing deals and asset sales. Who owns the mark, who may use it, on what terms and what happens when the relationship ends are questions to settle in the contract rather than in litigation afterwards.

Enforcement

Monitoring for conflicting applications and uses. Negotiation with an infringing party, which resolves most conflicts, including coexistence and settlement agreements that define who uses what and where. Opposition and cancellation proceedings before the Trademark Trial and Appeal Board. Demand letters, platform and marketplace takedowns, and domain name complaints under the UDRP. Infringement suits where the use is likely to cause confusion, with injunctive relief, an accounting of profits and, in exceptional cases, fees. Rights can also be lost by failing to enforce them, which is why a monitoring habit matters.

Common questions