What is a Trademark?
According to the United States Trademark and Patent Office (commonly referred to as the USPTO), a trademark “can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services.” In essence, this is how customers recognize a company or brand in the marketplace and distinguish them from each other and competitors.
The word “trademark” can refer to both trademarks and service marks. A trademark is used for goods, while a service mark is used for services. Overall, a trademark “identifies the source of your goods or services, provides legal protection for your brand, and helps you guard against counterfeiting and fraud.”
Trademark law practice is divided into two main areas, prosecution and litigation but both areas are also involved in trademark examination. Trademark law is governed by the Lanham Act.
Trademark Prosecution
Trademark prosecution involves working directly with clients to develop brand strategies, conducting trademark searches, providing risk analysis, filing and overseeing trademark applications with the USPTO, and responding to office actions and addressing examiners’ concerns. This aspect of trademark law offers opportunities for creative brainstorming with clients and generally provides a more predictable workflow and timeline.
Developing brand strategies involves collaborating with clients to understand their business goals and target markets, advising on the selection of strong, distinctive marks, strategizing on the scope of goods and services to be covered, and considering international trademark protection needs. Conducting trademark searches requires performing comprehensive searches of federal and state trademark databases, analyzing common law usage, evaluating the strength and availability of proposed marks, and identifying potential conflicts with existing trademarks.
Risk analysis is a crucial part of the process, involving assessing the likelihood of confusion with existing marks, evaluating the distinctiveness and strength of proposed marks, advising on potential descriptiveness or genericness issues, and considering geographic, surname, or other statutory bars to registration. Filing and overseeing trademark applications includes preparing and filing applications with the USPTO, selecting appropriate filing bases, drafting clear descriptions of goods and services, and managing application timelines and deadlines.
Overall, trademark prosecution offers intellectual property attorneys a chance to blend legal acumen with creative problem-solving, while working closely with clients to build and protect valuable brand assets.
Trademark Litigation
Trademark litigation encompasses representing clients in disputes over trademark rights, preparing legal briefs and arguments for court presentations, conducting discovery, working with expert witnesses, and negotiating settlements or arguing cases before a judge or jury. Litigation offers exciting courtroom experiences and intellectual challenges, as well as the opportunity to shape trademark law through precedent-setting cases. However, it often comes with high stress levels and demanding workloads, especially as deadlines approach, and can involve unpredictable timelines and outcomes.
Case preparation and strategy involves analyzing the strength of the client’s trademark and potential infringement claims, developing comprehensive litigation strategies, researching relevant case law and precedents, and preparing legal briefs and motions. The excitement of trademark litigation often comes from the courtroom experiences, where attorneys have the opportunity to present complex arguments and cross-examine witnesses in high-stakes disputes. These cases can involve significant intellectual challenges, requiring attorneys to synthesize intricate legal concepts with factual evidence and present them persuasively to judges and juries. Moreover, trademark litigation offers the potential to shape trademark law through precedent-setting cases.
Trademark Examination
In addition to these two primary areas, there is another crucial role in trademark law, the trademark examiner. Trademark examiners work for the USPTO and play a vital role in the trademark registration process. Their responsibilities include reviewing trademark applications for compliance with federal regulations, conducting comprehensive searches to ensure the proposed mark doesn’t conflict with existing registrations, and issuing office actions to applicants when necessary. Examiners must have a deep understanding of trademark law and be able to apply it consistently across various industries and types of marks. They often interact with attorneys and applicants to clarify issues or request additional information. While this role offers stability and the opportunity to work with a wide variety of trademark applications, it also requires attention to detail, strong analytical skills, and the ability to make sound legal judgments.
For more information, consider reaching out either to the following list of ASU Law professors in this practice area or check out the below list of secondary resources:
ASU Law Professors
David Franklyn
Heather Sapp
Secondary Resources