How Trademarks are like Houses and Cars

Posted by | February 08, 2011 | General | 2 Comments

My friend, Tim Greene, recently launched a company called Fizzlaw, whose mission is to connect small businesses with cost-effective lawyers who understand small businesses and align their goals with those of their clients.  I recently wrote an article for Fizzlaw comparing trademarks to houses and cars, well kinda. . .

My Fizzlaw article posits that it is impossible to answer the question, “How much does it cost to register a trademark,” just as it’s impossible to answer “How much does a house cost,” or “How much for a car,” without more information.

I often joke that there are 27 variables that go into determining the cost of a trademark registration; this isn’t too far removed from reality.  To determine the cost of a trademark registration, one must know the following:

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(1) Is the mark in use?

(2) If not, how soon will it be in use?

(3) If so, how long has it been in use?

(4) On what goods and services is/will the mark be used?

(5) Does the brand owner have suitable evidence of use (“specimens” that the USPTO will deem acceptable)

(6) If not, how soon until he brand owner has acceptable specimens of use?

(7) Was the mark searched before adoption?

(8) If the mark was searched, what did the search reveal?

(9) If not, will a search be conducted before applying for federal registration?

(10) Who/what is the owner of the mark (ideally, the answer to this should be some form of corporate entity to insulate the brand owner from liability).

(11)Was the trademark always owned by the current owner?

(12) If not, who/what owned it previously and is there a proper written assignment between the prior and current owner?

(13) Is the mark always used in the same form, or does are there their variations on the mark?  (14) Does the mark contain descriptive or generic terms that will need to be disclaimed?

(15) Is the mark itself descriptive relative to the goods/services on or in connection with which the mark is used?

(16) If so, has the mark acquired the requisite secondary meaning & how will that be proven if required by the PTO?

(17) Does the client have the budget necessary to meet its goals?

18) If not (as often is the case), what can be done to help the client meet its goals within its budget)?[/framed_box]

Now you may think that I am 9 variables short, but often times the responses to the prior 18 questions lead to even more questions, which quickly add up to 17.

BEWARE OF TRADEMARK MILLS (those who treat everyone alike), which often result in HIDDEN FEES!  Avoid any person or organization that quotes you a flat fee to register your trademark without asking any questions about your circumstances.  Trademark prosecution (drafting and filing of applications and seeing them through to registration) may not be rocket science, but it often requires a great deal of factual analysis.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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