It is extremely important when selecting a trademark to ensure it use unique enough to quality for trademark protection.

On one extreme, the most protectable type of trademark, often referred to as a “fanciful” mark, is a mark which is a completely made up word.  An example of such a mark is Kleenex, which not a word until it was invented by the company and thus has no dictionary meaning.   The value of a fanciful mark in particular is that nobody can really validate their use of the mark legally because the word did not even exist until you created it.  Another type of mark that is generally very strong is a mark which bears no obvious relation to the product it represents, such as Apple referring to computers.  Because these marks have no obvious relation to the product to which they refer, they are highly protectable trademarks.

The weakest trademarks, on the other hand, are marks which clearly relate to the products to which they refer.  For example “Flame-grilled Chicken” as a name for a restaurant that features flame-grilled chicken is clearly descriptive and lacking in creativity.  It would be virtually impossible to even register this trademark.

Your best bet as you create your mark is to be as creative as possible and stray away from anything that could be seen as describing the product or service you intend to offer under the trademark.  The more arbitrary the relation of the mark to the product is, the stronger your mark will be.  The originality of your mark proportionally increases its strength.

If you have any questions regarding the strength of your proposed trademark please call trademark attorney Josh Gerben at 1-877-350-6275.  You may also visit the US Government’s trademark Web site at www.uspto.gov for more information.

Word mark applications, or applications without any logo specifications, are generally preferable because they provide the word(s) you are attempting to protect with broader legal rights.  This is because the registration of a word by itself protects the word itself, whereas the registration of a word and logo together only protects the word in the context of the logo.

Moreover, registering your trademark as just words provides you with more flexibility in the future.  If you register a trademark as words and a logo today, you are married to that logo for life.  This is because there is a legal requirement to “use” a trademark exactly as it is registered.  If you register a trademark as a logo, you must always use that exact logo in commerce.  If you update the logo and stop using the logo you originally registered as a trademark you will run afoul of this requirement and potentially lose all rights in your trademark.   On the other hand, if you register a trademark as just the words, you can use those words in any logo you have now or develop in the future and be in compliance with the “use” requirement.

Granted, there are always situations when filing a trademark as a logo is beneficial (and sometimes it makes sense to make two filings: one for the words and one for the logo).  If you have any questions on this issue please give trademark attorney Josh Gerben a call at 1-877-350-6275.

The marks Jay-Z has for his nightclubs, “40/40” and “40/40 Club,” are US trademarks.  Also, Ortiz is not a citizen of the US, but rather he is a citizen of the Dominican Republic which further distances him from the jurisdiction of US trademark law.

The markets for nightclubs in the US and the Dominican Republic are clearly separate as they are at a vast distance from each other. Since direct competition is unlikely, Jay-Z’s most valid concern would be that Ortiz’s club is trading off of the prestige of his “40/40” trademark.  He can claim that Ortiz’s use of his trademark weakens its validity.  Also, a negative impression of Ortiz’s club could easily create a negative impression of Jay-Z’s club in the consciences of consumers due to the incredible similarity between the names.  That being said, as long as Ortiz is not marketing the club in the United States, it can make it very difficult for Jay-Z to enjoin his use of the mark.

You might be wondering how it could be that Ortiz and Jay-Z came up with the same idea for names of their nightclubs.  It may help to note that the “40/40 Club” is a reference to the club of elite baseball players who manages to steal 40 bases and hit 40 home runs in a single season (Ortiz is not a member of this club).  It makes sense, then, why both Ortiz and Jay-Z who obviously have interest in baseball would choose a name for their clubs that refers to an elite club within the game.

Perhaps the lesson to be learned from this dispute is that people can and do come up with the same ideas, and it pays to be the first to register a trademark with the USPTO.  Jay-Z may not be able to stop the use of “Forty Forty” in the Dominican Republic because of international limitations, but he will definitely be able to stop any infringement on his name within the US.

Once a trademark application is submitted to the U.S. Government for review and approval, it takes between 6-18 months to receive a trademark registration certificate.  There is no option to pay a rush or expedited fee to the USPTO to move the trademark registration process any faster.  To many of my clients, waiting to see if the USPTO will approve their trademark seems like an eternity.  A whole brand can be built in 6-18 months and to have the USPTO deny the trademark application at that time could be devastating.

The best solution to this problem is to hire a competent trademark attorney that can give you an opinion on the registerability of your proposed trademark.  A trademark attorney can conduct a trademark search and give you an opinion on whether or not a proposed trademark is capable of registration with the USPTO.

Another piece of good news is that the USPTO trademark application process is first come, first servce.  This means that your trademark carries all the weight of a registered trademark as of the date you file the trademark.  No one else can try to register a same or similar trademark after the date of your filing, so long as your trademark application is ultimately approved by the USPTO.

Therefore, having the combination of a trademark attorney’s opinion that your trademark will most likely be approved by the USPTO and the fact that you have priority on your trademark as of the filing date should provide some sense of ease to a trademark applicant.

For more information on conducting a trademark search or registering a trademark contact Attorney Josh Gerben at Trademark Armor.

Many of my clients find this troubling since they are unsure if they should make a large investment in marketing a trademark before the trademark registration process is completed and the trademark registration certificate is issued by the U.S. Government. However, even the largest companies must rely on their attorney’s advice as to whether their trademark will be approved by the United States Patent and Trademark Office during the trademark registration process. And sometimes that advice can lead to a trademark application being denied. For example, Google’s recent trademark application for “Android” for a cell phone browser was denied by the USPTO for being confusingly similar to an existing trademark. Since Google could not wait the 6-18 months for the trademark registration process to be completed, Google made a significant investment in marketing Android. The denial of the trademark application after such a significant investment was made no doubt causes difficulty for Google.

Due to the cold realities of the trademark registration process, I advise my clients that there is always risk involved with the trademark registration process. Much like any other legal proceeding, no trademark attorney can guarantee the success of a trademark application. However, I can provide my clients with very valuable advice as to whether a trademark application may be approved or denied. By conducting a thorough trademark search that only an experienced trademark attorney can conduct, I can help clients assess whether or not their trademark application is likely to be approved or denied.

The bottom line is that the trademark registration process is just another part of the risk of being in business. There is nothing any trademark attorney can do to take away all the risk in the trademark registration process, but a trademark attorney can certainly help minimize the risk businesses face in this daunting process.

However, one of the little known advantages to registering a trademark is the power that a federal trademark provides a business in dealing with other private companies.  For example, some clients have called me after finding that competitors are disparaging their good name in online pay-per click advertisements.  What surprises my clients is that a competitor can actually post an ad on GOOGLE or YAHOO that uses their un-registered trademark and criticizes their product or service right in the headline of the ad.  Moreover, without a federal trademark registration, GOOGLE will not help remove the advertisement.  After calling GOOGLE in an attempt to have the ad removed, I often find my soon-to-be client’s next call is my office (after being told by GOOGLE that there is nothing GOOGLE can do).  This is because GOOGLE advises my soon-to-be client to register their trademark with the United States Patent and Trademark Office since GOOGLE will only help a business remove an unauthorized use of it’s trademark if the trademark is registered with the United States Patent and Trademark Office.

I believe there will be an increased trend whereby private companies (such examples includes Facebook, Twitter, etc.) rely on a registered trademark to police the use of business and product names.  Those individuals who do not register a trademark with the United States Patent and Trademark Office will be left with no means to enjoin the use of their trademarks besides an expensive lawsuit against the private company.  This should make the cost of registering a trademark look much less expensive.

To get started on your trademark registration click here or call 1-877-350-6275.