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Trademarks are marks, designs, words, phrases, logos, and other things that distinguish a company or business as the commercial source for some particular goods and/or services. Once established, trademarks are valuable business assets. For example, famous trademarks like APPLE and its famous apple-shaped mark are generally considered to be worth millions of dollars — if not hundreds of millions.
In the United States, trademarks are legally protected by the common law and the Lanham Act. The Lanham Act creates a mechanism for registering trademarks through the U.S. Patent and Trademark Office (“USPTO”). Registration of a trademark provides nationwide coverage and protection for a trademark.
Trademarks can also be registered at the State level in the United States based on State-level statutes that are similar to the Lanham Act. Similar legal protections are provided by those statutes. There are also a dozen or so international treaties that protect trademarks in international trade.
So, what does a Michigan trademark lawyer do?
Among many tasks, a Michigan trademark lawyer assists with the legal requirements and filings necessary to register a trademark. This includes the evaluation of the eligibility of a proposed trademark. There are legal requirements for a trademark to be registered, such as being unique and distinctive. If a proposed trademark is not unique — that is, the trademark is the same as or too similar to an existing trademark — it will be rejected for registration. Likewise, if a trademark is not distinctive.
As part of evaluating the eligibility of a proposed trademark, a trademark lawyer conducts a trademark clearance search. This is done to see whether there are similar trademarks already in use and registered. If so, then the client must “return to the drawing board” for a new proposed trademark.
A trademark lawyer also provides legal services that shepherd the application through the registration process (at whatever level). Yes, there are internet services available for cheap, but a trademark lawyer will make sure the application is done correctly and done correctly the first time. Further, internet services do not provide assistance with Office Actions sent by the USPTO, with Opposition filings, and other matters related to the registration process.
Another important legal task conducted by trademark lawyers is litigation. This involves both prosecuting court and arbitration proceedings against persons and businesses that infringe on a trademark and also defending against claims of infringement. Among other things, a trademark gives the holder the right to prevent others from using the trademark or using a trademark that is confusingly similar. This is called infringement. Most trademark litigation is infringement litigation under various U.S. laws and State-level laws.
Trademark lawyers also provide other related services such as:
The USPTO trademark registration process is formally called “trademark prosecution,” and it is more complex than many business owners anticipate. A trademark application requires selecting the correct goods and services from the USPTO’s Acceptable Identification of Goods and Services (the “ID Manual”), specifying the filing basis (use in commerce under Section 1(a) or intent to use under Section 1(b)), submitting specimens showing the mark in actual commercial use, and paying filing fees that range from $250 to $350 per class of goods or services for TEAS Plus and TEAS Standard applications.
After filing, the application is examined by a USPTO trademark examiner, who may issue an Office Action raising substantive or procedural objections. Common substantive refusals include likelihood of confusion with a prior-registered mark, merely descriptive refusals, and refusals on grounds that the mark is primarily merely a surname. Office Actions must be responded to within three months (with a possible three-month extension upon payment of a fee). A Michigan trademark attorney monitors these deadlines and prepares the legal arguments necessary to overcome refusals.
A comprehensive trademark clearance search before filing a new application is one of the most important services a trademark lawyer provides. The consequences of launching a brand without clearance can be severe — a cease and desist letter from the owner of a confusingly similar mark, an opposition proceeding in the USPTO, or full-scale federal litigation. The cost of a clearance search and legal opinion is a fraction of the cost of rebranding after litigation.
A proper clearance search covers not just the USPTO’s TESS database but also state registrations, common law uses, domain names, social media handles, and trade directories. The attorney then applies the DuPont factors to assess the risk posed by any identified prior marks. This legal analysis — distinguishing between marks that are merely similar and marks that pose a real likelihood of confusion — is where the value of an experienced trademark attorney is clearest.
After registration, trademark owners face ongoing obligations and opportunities. A Michigan trademark attorney provides:
Trademark enforcement encompasses a spectrum of legal tools. At the earliest stage, an experienced trademark attorney drafts and sends cease and desist letters that are legally grounded, strategically effective, and appropriately calibrated to the severity of the infringement. Many infringement situations resolve at this stage without litigation.
Where litigation is required, trademark cases can be brought in federal district court under the Lanham Act or before the USPTO’s Trademark Trial and Appeal Board (“TTAB”). The TTAB handles inter partes proceedings — opposition proceedings (challenging applications), cancellation proceedings (challenging registrations), and concurrent use proceedings. TTAB practice is a specialized area that is distinct from federal court litigation, and attorneys who practice regularly before the TTAB are best positioned to handle these matters.
Michigan is home to a significant concentration of manufacturing, technology, automotive, and consumer goods companies, all of which have substantial trademark portfolios. A Michigan trademark attorney understands the local business environment, has relationships with Michigan courts and state-level trademark officials, and can provide the geographic and business context that national firms sometimes miss. Revision Legal, based in Michigan, has handled trademark matters for clients across the United States, providing the combination of local knowledge and national capabilities that growing businesses need.
If you have questions about trademark law, the experienced attorneys at Revision Legal can help. We represent businesses, entrepreneurs, and individuals across the country. Contact us through the form on this page, visit our trademark law practice page, or call us at (855) 473-8474.
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