around the bar
December 20, 2012

Trademark Law: A Primer, Part 2

Clients, even at the very earliest stages of developing a business, have a lot of slogans, logos and other things they would like to trademark, says Jonathan Rubens, partner, Javid Rubens LLP, in San Francisco. As a result, managing client expectations — and budgets — becomes key.

“They have the whole portfolio of branding,” Rubens says. “They also have copyright issues, they may also have patent issues or trade secret issues as well as a whole host of corporate things that we’re working on to get new companies structured. That means companies as we all know don’t always have the budget to do the legal work that they or we would like. With trademark work, sometimes this means looking at where we can protect and where we should wait. Part of our initial discussion with clients is usually whether to proceed with trademark registration for each and every mark they have.”

Rubens was a participant in the recent CLE “To Trademark or Not to Trademark: That Is the Question.” This article is the second in a two-part series on the basics of trademark law.

One of the first things Rubens talks about with clients is the first set of marks to register. That includes brand names, logos, product names and slogans the client will use or plans to use because “trademarks in the U.S. proceed both on the basis of currently being used as well as on an intent-to-use basis,” he says.

Once he and the client have loosely defined potential marks, “then we talk about what might be protectable and what might not be protectable,” Rubens says. That will require some searching on behalf of the client. “The first thing we can do is help the client with an internal search, if you will, a screening, or what someone would call a knockout search. This doesn’t require any outside fees, but it’s going to require some attorney time, and this involves simply taking a look at what’s out there in the universe to the extent that we can find out by … conducting some basic Internet searching to see who else might be using the same proposed mark, a similar form of it or something that might be close.”

Once he gets close to a definitive set of things the client wants to protect, he brings in a third party to conduct a search. “It’s quite important to get the client to agree to this outlay of cost so you can really have some conclusive and more solid support that this mark won’t be doomed by anything else out there,” Rubens says. “Or at the very least, it gives you a better sense of what the problems could be for the mark from third parties who are using similar marks or similar names.”

Part of the budgeting process with any client also involves what is going to be required for filing federal registrations, Rubens says. Some lawyers charge flat fees for the filing process, but he cautions that this fee structure may not account for postfiling work that comes up.

When the applications are prepared, you’re providing both an identification of the goods and services and you’re applying in a specific class, Rubens says. He suggests browsing other registrations on file to see how other parties have identified similar goods and services. “It’s really a free resource for forms for many ways that things can be identified,” he says.

Generally, the trademark examiners in the U.S. want more specificity than you might provide, Rubens says. “You want something specific enough in their view to identify the goods or services, whereas in other jurisdictions, much more general identification of goods and services — particularly in Europe — can be allowed,” he says. “There’s sometimes, even at the earliest stages, tension between how you’re going to describe the marks and prepare the applications from one jurisdiction to another. Interestingly, I find that this issue comes up at the very early stages of a company’s life sometimes because they’re looking to protect marks in multiple jurisdictions from the get-go.”

The next piece of information that’s critical in the application is on what basis the client is applying for registration. In the United States, there are two bases for registration. The first is called “in use,” Rubens says. That means the trademark is being used in interstate commerce. The second is an “intent to use” basis, meaning the party filing the application has a bona fide intent to use the mark at some time. “Sometimes, though, you might truly have an intent to use the thing, and it still hasn’t happened,” he says. “That can be OK because the trademark office allows you to renew your intent to use application multiple times.”

You can also extend a registration in the U.S. to other countries in two main ways. These are known as the Paris Convention and the Madrid Protocol. “If you file in a country that’s a member country in the Paris treaty, you get priority based on your U.S. filing,” Rubens says. “You have a period of time to do it: You have to do it within six months to get the priority based on the U.S. filing.”

Under the Madrid system, the international filing is really an extension of the U.S. registration, Rubens says, meaning that you have a U.S. registration and you can extend that protection to a member country of the Madrid Protocol. “One of the benefits of using the Madrid system is that the cost can be significantly less than a direct filing in another country under the Paris Convention,” he says. “However, on the negative side, there are fewer countries that are part of the Madrid Protocol system. It excludes most of the South American countries. It excludes Canada as well.

“Another negative is that because the Madrid system depends on your U.S. registration, it really limits your protection in that other country to the description of the goods and services that are in the U.S. registration,” he adds. “Because in the U.S. we might have a more narrow description of goods and services than would be allowed in a European country, this could be a drawback.”

Sherin Shakr, vice president and international counsel at Kahala Corp. in Scottsdale, Ariz., and Mary LaFrance, professor at the William S. Boyd School of Law at the University of Nevada, Las Vegas, also spoke during the CLE. To access the CLE, click here.

The CLE was sponsored by the ABA Business Law Section, Institute for the Young Business Lawyer, Young Lawyers Division, Section of Intellectual Property Law and the Center for Professional Development.

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