Trademarks: Interview with Michael D. Steger

by Mistina Picciano on September 9, 2010

I recently interviewed intellectual property attorney Michael D. Steger about trademarks. Specifically, the process and importance of trademark searches and securing trademarks for business names, product names and logos. And, since online legal services are gaining in popularity, I wanted to see if there are benefits to hiring a trademark attorney over using these services.

When clients engage us for a naming project, we always conduct an Internet search for URL availability for marketing purposes. What types of searches are involved in a full trademark search?

When I order a full trademark search, the search includes reviews of the Patent and Trademark Office’s database for related word marks and, if applicable, design marks. The search also includes reviews of newspapers, magazines, journals, trade publications, state corporation and secretary of state filings, and state trademark registrations. These searches can also include foreign trademark registrations if the client wants to do business overseas.

What is the process for securing a trademark for a business or product name? And how long does it typically take?

To obtain a federally registered trademark, the trademark owner or its representative must file an application with the U.S Patent and Trademark Office and pay the filing fee of $325 per class of goods and services. After 2-3 months, a trademark examiner will review the application and either approve it for publication, reject it, or ask for more information or clarification.

In the latter two situations, the applicant will have to respond within six months. If the application is approved for publication, it will be published in the Official Gazette for Trademarks, and any party wishing to oppose the application can file an opposition. Those proceedings can last years. I am working on an opposition proceeding now where the original trademark application was filed seven years ago. If the application process runs smoothly, you can obtain a federal registration in nine months to a year.

Why should a company trademark its name or logo?

A registered trademark can increase the value of a brand, especially for companies providing consumer goods and services, those that are in knowledge-based industries and businesses that may be looking to franchise. Trademarks can also be vital to businesses that are providing services and goods over the Internet or in more than one state. As knowledge-based and consumer-oriented businesses become more important to the economy, a valuable brand name and accompanying trademark can help you stand out from the crowd when much of the business’s value is in your head.

A federal registered trademark provides the only comprehensive nationwide protection for a mark. Federal registration can also entitle the registered owner to attorney’s fees and damages from an infringer.

From a business standpoint, obtaining a federal trademark registration often makes good business sense before investing substantial effort and resources in building brand awareness and equity. Do you really want to spend years and thousands or millions of dollars to promote a brand name only to find out that you cannot protect it or that it impermissibly conflicts with a deep-pocketed competitor’s trademark? In addition to those benefits, obtaining a federally registered trademark can enhance the trademark owner’s ability to gain control over some of the most valuable real estate on the web – domain names related to or containing that trademark.

What are the advantages of working with a trademark attorney instead of going the DIY route with a service like LegalZoom?

As their ads state, LegalZoom is not a law firm, so you do not have an attorney to work with or to represent you in any dispute. A search firm or filing service will not be able to represent a trademark applicant in any dispute, and it may not be able to provide the advice or expertise that an attorney will provide. Frequently, there are nuances to the application process, working with the trademark examiner and addressing parties who may oppose the application that an attorney can handle but a filing service may not be able to. In an opposition or cancellation proceeding, only a licensed attorney can represent the trademark owner or applicant.

Have you gone through the trademark search and registration process? Have you been considering doing so? Leave a comment and share your thoughts on trademarks.

Michael Steger has practiced law since 1993 and is the former in-house counsel for Fox’s “America’s Most Wanted.” His law practice focuses on intellectual property, entertainment, litigation, and corporate and other business matters.

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{ 3 comments… read them below or add one }

S.Pradeep Kumar September 22, 2010 at 2:56 am

Trademark or Registered Trademark is MUST for every company. Even if you are doing a small business, it is recommended to use the trademark for your logo, so that no one can misuse your brand. Nice interview. :)

Mistina Picciano September 24, 2010 at 10:01 am

Thanks for stopping by and reading. Have you tried the do-it-yourself route for trademarks? Or do you prefer to let a trained professional handle that for you? What has been your experience in either case?

Have a great weekend.

Attorney Shonda Holberg October 9, 2010 at 10:37 am

Fantastic post. I entirely agree. Well done.

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