Abe Cohn, Esq. is managing partner of Cohn Legal, PLLC, Head of the firm’s Intellectual Property and Transactional Group, and works in Manhattan. He has spent an extensive amount of time in Israel, speak Hebrew fluently, and presently has clients in the greater Tel Aviv area.
What is a trademark?
A trademark is branding asset which when used in conjunction with the sale of a particular good or service, enables a consumer to immediately identify the source company which produces/manufactures/sells the product upon which the trademark is affixed.
As an example, consider the iconic Apple logo; When a consumer sees a picture of an apple on a computer, he/she immediately understands that the computer is made by the Apple Corporation and depending on his/her opinion of the company and the quality of its products, will be more or less likely to proceed with a purchase.
The three most common types of trademarks are Names, Logos, and Slogans although one can even obtain trademark protection on sounds (think the sound of the lion roaring at the begging of an MGM produced movie).
What kind of businesses needs trademarks?
Trademarks are legal weapons which allow companies to protect their most valued brand assets, including their name and logo, by stopping competitors from marketing their products/services under the banner of the same name/logo.
Any company, big or small, that is serious about its business must protect its brand by obtaining trademark protection.
The fundamental purpose of a trademark is to secure the sole right to use a particular name/logo in conjunction with the sale of a particular good or service.
The relevant nuance here is that a trademark applies to specifically designated goods and services and therefore, the extent to which a trademark provides protection is a function of the goods/services with which it is used.
Companies must strive to identify not only the products services which they currently sell but also those products/services which they intend to sell in the future when applying for a federal trademark in the United States Patent and Trademark Office (USPTO).
What is the trademark process?
Conceptually, the trademark process is rather straightforward although like most legal matters, can get messy at the level of real-world application. The first step is to identify what precisely the applicant would like to trademark and then determine if the desired brand asset is actually trademarkable. Trademarks must be sufficiently “distinct”, given the good/service sold under the mark. So, a lumber company would not be able to trademark the name “wood” because the word “lumber” is simply a generic word which describes the product this particular company sells. Instead, this company would need to be a bit more creative and develop a name that is distinct for its product.
Next, a trademark search must be done in the USPTO to ensure that this prospective name has not already been applied for by a different applicant. Critically, the test is not whether an identical mark has already been applied for but rather if there already exists a trademark that is sufficiently similar to the prospective mark, given the respective goods/services of each company. Assuming the trademark search yields no negative results, the applicant may proceed with filing the application which will consist of both administrative information concerning the applicant and specific information about the mark itself. Of course, the process can become a bit involved and I would encourage anyone interested in pursuing a trademark to first speak with a trademark attorney.
How long does it take?
Including the trademark search, the entire filing process should not take more than a couple of days. Once the application is filed, an applicant can expect to hear back from the USPTO no sooner than 3-5 months from the day of filing with either an approval of the application or a rejection. Again, depending on the complexities of the case (some applications are rejected for readily surmountable reasons while other applications are nearly impossible to overcome), one can expect several more months until registration.
Is a trademark good for only one country, or is it international?
In the United States, a business seeking national protection should apply for a trademark with the USPTO. While a registered trademark with the USPTO entitles one to protection throughout the entire USA, it does not extend to other countries. Ambitious individuals and business with aspirations of global domination (just kidding ☺) must apply for trademark protection in the specific country in which they seek trademark rights. To expedite this process, an applicant may submit one international application, commonly referred to as the Madrid Protocol Trademark Application, and select any number of countries to apply to in one fell swoop.