Why You Should Consult a Trademark Attorney

15 mrt 2021

Q: The name of my startup is really important to me. I chose it because it is modern. It reflects the online, real-time experience that I want to build – and for every generation to feel welcome on it. Given that I am about to invest in tech development of the platform, I want to file a trademark to protect the name. Can I just file the trademark myself with the USPTO?

A: It would be better if you consult with a trademark attorney before filing a trademark on your own with the United States Patent and Trademark Office (USPTO). The reason is that your name may already be used by another company in your market. But, more importantly, a good trademark lawyer may help you select a name, e.g., a “suggestive” name rather than a “descriptive” name, that will afford you more protection in the marketplace. 

The rules for trademarks are different than patents (protective of innovation) or copyrights (protective of expressive works). They derive from the Commerce Clause of the U.S. Constitution, and their goal is to facilitate the buying and selling of (i) tangible products (consumer products or digital media on a CD) or (ii) intangible service (streaming service) so that the consumer knows what they are getting just based on the brand name. Also, a trademark is very fact
specific. The context in which it is used matters. For instance, if a name is generic, it cannot be a trademark because everyone needs to use it when they communicate concerning buying and selling. Instead, a trademark tells the consumer who makes the product or service, as well as representations about quality or other important attributes.

Then, with regard to a new package or design, a trademark lawyer will look at designs of competitors in the same market and analyze (i) the source identifier (e.g., the name of the maker), (ii) whether there is anything generic about it, and (iii) any functional aspects of it, among other fact-specific factors. A good trademark lawyer will point out the risks and advise on ways to change the design to lower the risks of using it in the marketplace. Then you can make an informed decision about your company name and minimize a rejection by the USPTO.