Brett: As you know, my audience is mostly CEOs, investors, and some Chief Marketing Officers. I want to sort of build a story here. I want to talk about trademarks. I want to talk about tactics versus strategies. I want to talk about it being a one-and-done checkmark thing versus it being an ongoing proactive strategy. Let's start with the basics. When should a person file a trademark?
Tamara: A person should file a trademark yesterday! Basically, as soon as you have a brand name, a service name, or a company name that you want to move forward with, you should do a comprehensive search to make sure that it's available for use and registration. The “use” part is actually more important than the registration.
I know that might sound funny coming from a trademark attorney, but you can always use a mark and you have “common law rights” in that mark. Meaning, that even if you don't have a registration, you do have use but the other side of that is that these other companies that are revealed by a comprehensive search have rights in their marks beginning on the date of first use in whatever geographic area they've been using their marks.
So the first step is to do a comprehensive search and make sure that this brand that you want to use is available and not used by someone else. I say “Do it yesterday” because the process takes a long time. The search itself is pretty quick, as is the application itself and working with the client to figure out the description of goods and services. Those stages can be completed in a week or two unless they're dragging their feet, which usually they don't. The part that takes the longest is actually getting assigned to an Examining Attorney at the Patent and Trademark Office. Right now, it's taking over eight and a half months between when you file an application, and when it gets reviewed at the USPTO. That really long delay can be a bit problematic for companies that are ready to launch a product immediately. That's why we spend so much time doing these searches.
We should have a pretty good idea, based on our analysis, of whether a mark is registrable. Of course, sometimes issues arise that we don't anticipate with the U.S. Patent and Trademark Office. Sometimes they'll cite something that we thought was totally irrelevant, as a bar to registration, and you need to respond to it so there's really no guarantee. My point is, it just takes a while and the sooner you can get started the better.