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Forbes Legal Council
Experienced chief legal officers & law firm partners from Forbes Legal Council offer firsthand insights on legal issues.
You’ve submitted an application for a trademark. But that doesn’t necessarily mean you should sit back and relax. Other companies may be applying for trademarks that are strikingly similar to yours — or worse — your mark could be infringing on someone else’s. So how do you go about preventing concerning situations like these?
Below, five experienced chief legal officers and law firm partners from Forbes Legal Council discuss the various steps you can take to proactively protect your trademark.
From top left to right: David Nied, Brian Igel, Victor Cardona, Doug Bend, Matthew Moisan. All photos courtesy of the individual member.
1. Hire A Trademark Lawyer
The first step is to identify and retain an experienced intellectual property attorney specializing in trademarks and trade dress. You can file your own trademark application online, but it might be a waste of your time and money if you don’t do it right. Or worse, your self-filed application could alert other trademark owners that your mark infringes on theirs. Protecting your brand is worth it! – David Nied, Ad Astra Law Group, LLP
2. Set A Watch Notice On Your Trademark
Set up a watch notice. It’s the best way to become aware of potentially confusingly similar trademarks that are filed with the United States Patent and Trademark Office. This way, you can then deal with the owners of such marks accordingly. – Brian Igel, Bellizio + Igel PLLC
3. Register And Police Your Mark
The first step is to do a trademark search and a more general internet search. Assuming that no similar marks come up for your desired goods or services, you should then apply to register the mark with the USPTO. Any registrations will need to be monitored to ensure no others are using the mark. – Victor Cardona, Heslin Rothenberg Farley & Mesiti PC
4. Monitor For Competing Trademarks
A competing trademark may fall through the cracks of the USPTO’s application process and still be registered even though it is confusingly similar to your trademark. You can proactively protect your trademark by monitoring the Official Gazette and oppose the applications of any competing trademarks to ensure that competing trademarks do not get registered. – Doug Bend, Bend Law Group, PC
