So you want to register a trademark ...

The practice of law is full of irony and surprise on many fronts. In about fifteen years of filing and prosecuting trademark applications, mostly in various areas of entertainment and many in the music industry, I have been surprised about the identity of those who want to trademark their goods or services. Many of those who seemed to be at an ideal stage of their career or business development were reluctant to spend the money necessary to protect their name and increase the value of their brand.

Those who needed to focus efforts elsewhere came to me and hired me. This hasn't happened every time and with every client, but it has been a trend in past years. Lawyers may not be the most prominent professionals in the business of music we love in Nashville, but industry players would do well to follow our advice and counsel in our areas of expertise.

For this blog post I decided to summarize my experience with trademark consultations and applications. Hopefully, it is something that helps you in your quest for success. 

What needs to happen for a trademark to be registered? A trademark or service mark is a word, stylized design logo, or combination of both, which distinguishes the goods or services of the applicant or mark owner from goods or services of others. Each application is for one or more named goods or services, i.e. t-shirts or other merchandise, entertainment music services, or restaurant/bar services. The World Intellectual Property Organization has established 45 international classes - 34 classes of goods and 11 classes of services.

While applications for registration may be filed in the individual states, including for a nominal $20 fee in Tennessee, it is my opinion that state trademark value is minimal given the national and even global nature of today's economy. With music acts at all stages of development traveling around the country to play their music and building an international brand, it is difficult to imagine that filing with the Tennessee Secretary of State would be of much use. The only exception to this is perhaps venues and other attractions whose presence is focused only on the Nashville tourist market.

And so we focus on the United States Patent and Trademark Office in Alexandria, Virginia ("USPTO"). Filing is easily accessed around the world via www.uspto.gov. The fee for a one-class application may be as low as $225 depending on what type of electronic filing system is utilized. I have utilize the TEAS Plus system, which is $225 per class. If a client is using a mark in multiple ways but only wishes to pay to apply in one class, I assist in determining which use is most prominent and which class would best serve the client.

Keep in mind that similar or even identical marks may both be registrable if they are in such different classes of goods or services to not cause confusion to a buyer. In other words, "Cadillac" may be just fine for perfume even though a line of cars carries this name. 

Section 2 of the Trademark Act of 1946 states that a mark that so resembles a mark already registered as to be likely to cause confusion, cause mistake, or deceive a buyer shall not be registered. Another common reason for refusing registration is "merely descriptive" a/k/a "deceptively misdescriptive". In other words, don't trademark a series of musical works as "Big Time Tunes" and don't apply for "Super Nashville Restaurant" for restaurant services. Descriptive terminology does not comprise a trademark. Ask your lawyer more about this.

Another item to consider is a reasonably-priced professional search of the federal trademark database to determine whether there are marks already registered that would prevent registration of the one you have in mind to apply for. These searches begin in price at $185 and have actually become more affordable in the era of Internet and automation than in the past.

Most of my clients have relied on my own informal search of the USPTO database, Internet search engines, and some social media browsing to survey the likelihood of confusion landscape. My experience in this arena is solid but not infallible, and I verify my clients' understanding of this in writing. I also do not guarantee the search results of a third-party company. However, these paid searches are normally reliable and helpful to those deciding whether to apply for their own registration.

Once your application is filed, it is placed in line to be reviewed for registrability by one of an army of examining attorneys who work in and around Northern Virginia. The examining attorney may issue a preliminary refusal to register, also known as an office action. Your attorney then may write a response in court brief style, presenting arguments for registration.

It is important to note that a mark MUST be in use before it will register. Although you may file based on a bona fide intent to use a certain mark in commerce, this is subject to demonstration of actual use in commerce by specimen - most often a photograph of use of your mark in commerce.