TRADEMARK PROTECTION FOR STARTUPS AND EARLY-STAGE

COMPANIES

Your trademark will be a key asset of your business, so it’s important to protect it properly. If you don’t start
with advice from experienced trademark counsel, you could face a costly infringement lawsuit, be forced to
rebrand just as you are gaining traction, be unable to stop infringers, or be blocked from key foreign markets.

1. Consult an expert in trademark law before choosing your brand.

 Start with a brief consultation with an experienced trademark lawyer. They will guide you on
selecting a mark that is defensible, help you avoid costly pitfalls, and map out a cost-effective
brand- protection strategy.

2. Don’t commit to a mark without a proper search.

 Too often we’ve seen companies launch a brand without properly vetting it – only to be hit with a
costly and disruptive infringement suit. What is “infringement” is notoriously subjective, and
trademark searching is an art. An experienced trademark lawyer won’t just give you a list of
trademarks that came up in a search – they should give you an assessment of the risk and, where
applicable, strategies for reducing it. Using a “low-cost,” cookie-cutter search service is false
economy, and often will cost more in the long run.

3. Filing isn’t enough – to have all the rights the law provides, you need to get
to registration.
 Federal registration gives you important legal rights that make it much easier to defend against
claims and stop infringers. But you don’t get those benefits until the registration issues. Good
trademark lawyers know it’s not enough to get an application on file – their goal is to get through
the examination process as quickly as possible. Your trademark lawyer should make every effort to
ensure the application meets the PTO’s requirements from the start, so it will sail through
examination. And if the PTO raises any issues, your lawyer should respond promptly, to push the
application to registration. A service that offers a low-ball price just for filing may end up costing
much more if the PTO refuses the application, and could delay the process.

4. Protect your brand abroad, sensibly.

 If you plan to expand to foreign markets, you’ll need to register your trademark in those
jurisdictions. Otherwise you could be at the mercy of trademark squatters, infringers, and
unscrupulous local distributors. International protection doesn’t have to break the bank. An
experienced trademark lawyer will work with you to create a plan that will give you good, basic
protection.

5. Have a well-thought out plan for policing your brand.

 It’s important to protect your brand against infringements. But taking on every perceived threat is
costly and can even damage your trademark rights. A good trademark lawyer will help you define
an appropriate trademark strategy and ensure that you pick your battles wisely.

6. Make sure your trademark protection keeps up with your growing and
evolving business.
 As you add new brands, products, and markets, let your trademark lawyer know, so they can
help ensure that your trademark portfolio gives you adequate coverage.
 U.S. TRADEMARK REGISTRATION PROCESS

Protecting your brand by trademark registration is not simply a matter of filing something and waiting for the
government to send a certificate. It’s a process that involves careful preparation, subjective analysis, and
knowledge of the substantive law and procedure.

1. Pre-filing searches.
 To make sure a mark is available for use and registration, it’s necessary to do appropriate searching.
We try to anticipate the Patent and Trademark Office’s search, and consider not just identical marks,
but sound-alikes, synonyms, and foreign equivalents. We also recommend a more thorough
comprehensive search, which also picks up unregistered marks that may enjoy common-law rights.
If a search reveals obstacles, your trademark lawyer can dig deeper to see whether they really do pose
problems, and whether there’s a workaround.

2. Preparing the application.

 Trademark rights don’t exist in a vacuum – they are tied to the goods and services on which the mark
is used. A good trademark lawyer will work with you to specify your products using the language the
PTO requires, broad enough to cover your current and future offerings, but tailored to reduce the
risk of conflict with a senior mark. If the mark is already in use, you will need to provide the dates of
first use, and your trademark lawyer or paralegal will work with you to get an appropriate specimen
of use (label or package for goods, website or ad for services) that complies with the PTO’s rules.

3. Filing.
 When you file a trademark application with the PTO, you are making a statement under penalty of
perjury to the federal government, so be sure you are satisfied that everything is true and correct.
Your lawyer will file it electronically, and the PTO will issue a serial number and a filing date,
which establishes the mark’s priority over later applications.

4. Examination.
 After about three months or so, the application will be assigned to a PTO examiner, who will review
it for compliance with technical requirements and do a search for senior conflicting marks. If the
examiner finds a problem, he or she will inform the contact listed on the application (typically your
lawyer). Sometimes problems can be resolved these over the phone; otherwise the PTO will send an
“Office Action” requiring a written response. Your trademark lawyer or paralegal will monitor the
process and periodically check its status.

5. Publication.
 If the examiner is satisfied with the application, it will be published for a 30 day (extendible)
period in which others can give notice that they oppose registration. If nobody opposes, the PTO
will allow the mark for registration.

6. Registration.
 If the application was filed on the basis of use, the registration will issue in a few weeks. If it was
filed on the basis of intent-to use, your lawyer will need to file proof of use and a specimen in order
for the registration to issue. The deadline for this filing is six months, but extendible to a total of
three years.