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It is beneficial to hire a Michigan trademark lawyer when creating and attempting to register a trademark. But, it will become essential if you are facing trademark litigation, want to buy or sell a trademark, want to “go international,” protect your trademark pre-litigation, and in other circumstances. At Revision Legal, we are Michigan trademark attorneys. Call us for a consultation on your trademarking and branding needs. In our experience, starting with an experienced trademark lawyer on your trademarking and branding team saves time and money in the long term.
As noted, it is helpful to hire a Michigan trademark lawyer at the initial creative and registration stages. All prospective trademarks should go through the “search and clearance” stage before too much time, effort, and money is spent developing the trademark. At a minimum, a brief preliminary trademark clearance search must be done for various options being considered. Then, once a definitive choice is made, a comprehensive trademark search should be done. The purpose of the search is to confirm that the proposed trademark is not already in use AND is not otherwise “confusingly similar” to a trademark that is already in use. A Michigan trademark law firm can offer legal guidance as to what might be considered “confusingly similar.” If your trademark is the same as or confusingly similar to another trademark, your trademark registration application will be denied by the U.S. Trademark Office and there is a risk that you will be sued for trademark infringement. Michigan trademark lawyers can also help with other aspects of the creation and registration process. These include:
Once your trademark/brand is in use, hiring a Michigan trademark law firm will help ensure that your trademark is protected from infringement. This involves monitoring your trademark for potential infringement by others, sending cease and desist letters, etc. Further, legal advice is important for consistent and proper use of the trademark so there is no unintentional weakening, abandonment, or loss of the trademark through misuse.
At some point, you may want to consider licensing your trademark or engage in co-branding with another trademarked product or service. Licensing can be very complex legally and practically, so obtaining legal services from a Michigan trademark attorney is important.
As noted, if you are facing a threat of litigation or need to use litigation to enforce your trademark rights, hiring trademark litigators is necessary. Companies and corporate entities cannot self-litigate, so hiring courtroom-proven trademark litigators is necessary.
Contact the Michigan Trademark Attorneys at Revision Legal For more information, contact the experienced Michigan Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
When trademark disputes cannot be resolved through cease and desist correspondence or licensing negotiations, litigation becomes necessary. Federal trademark infringement claims under the Lanham Act are heard in U.S. District Courts, with the U.S. District Court for the Eastern District of Michigan (Detroit) and the Western District of Michigan (Grand Rapids) serving Michigan businesses. A Michigan trademark litigator brings familiarity with local rules, judicial preferences, and the specific case law that has developed in these districts — advantages that matter in practice.
In federal trademark litigation, the plaintiff must establish: (1) ownership of a valid, protectable mark; (2) use of that mark in commerce; and (3) that the defendant’s use of the same or a confusingly similar mark in connection with goods or services is likely to cause consumer confusion. The Sixth Circuit — which governs Michigan federal courts — applies a multi-factor likelihood of confusion test derived from Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982). The eight Frisch’s factors include the strength of the plaintiff’s mark, the degree of similarity between the marks, the proximity of the goods or services, evidence of actual confusion, the marketing channels used, and the sophistication of the likely purchasers.
Successful trademark plaintiffs in federal court can recover: the defendant’s profits attributable to the infringement, the plaintiff’s actual damages, attorneys’ fees in exceptional cases (15 U.S.C. § 1117(a)), and in cases of willful infringement, up to three times actual damages. Preliminary and permanent injunctions are also routinely available to stop ongoing infringement.
Trademarks can be bought and sold like other property interests. The legal instrument used for the transfer is called a trademark assignment. Under the Lanham Act and USPTO rules, a valid assignment of a trademark must transfer the mark together with the goodwill of the business with which the mark is associated. An assignment of a trademark “in gross” — without the associated goodwill — is legally invalid and renders the mark unenforceable by the new owner. This means that when you purchase a trademark, you must also acquire the relevant business assets, product lines, or other commercial interests that carry the goodwill the mark represents.
Trademark assignments must be recorded with the USPTO within three months of execution to protect the assignee against claims by subsequent purchasers. A Michigan trademark attorney can draft the assignment agreement, conduct due diligence to confirm the mark’s validity and enforceability, and handle the USPTO recordation. Before purchasing any trademark, a comprehensive clearance search and audit of the mark’s prosecution history, maintenance status, and any pending proceedings is essential.
Michigan business owners who have built strong brands are often approached about licensing opportunities — allowing another company to use the brand in connection with its own goods or services in exchange for royalty payments. Trademark licensing can generate significant passive revenue, but only if the license is properly structured to avoid the legal risks discussed in the existing content above (naked licenses, genericide, tarnishment).
A comprehensive trademark license agreement should address: the specific rights granted (which marks, in what territory, for what goods and services); whether the license is exclusive or non-exclusive; the royalty structure and payment terms; quality control standards and the licensor’s right to inspect and enforce them; approval rights over advertising and promotional materials; term and termination provisions; and dispute resolution. Michigan trademark attorneys can also advise on the tax treatment of royalty income from trademark licenses, which may qualify for preferential treatment under certain structures.
Michigan-based businesses that sell or plan to sell internationally should think carefully about trademark protection beyond U.S. borders. Trademark rights are territorial — a U.S. federal registration provides no protection in Canada, the European Union, or any other foreign market. To obtain protection abroad, you must file separate applications in each country or region of interest, or use the Madrid Protocol system administered by WIPO to file international applications in multiple countries simultaneously through a single filing.
The urgency of international trademark protection is heightened by the fact that many countries operate on a first-to-file basis rather than the first-to-use basis that governs U.S. trademark law. In China, in particular, trademark squatting is a well-documented problem: third parties register well-known foreign brands as trademarks in China and then demand payment from the legitimate brand owner for use of the mark in the Chinese market. Michigan businesses that have any international sales, or that plan to source products from international manufacturers, should evaluate their international trademark strategy early. A Michigan trademark attorney with experience in international matters can advise on the most cost-effective approach to building an international trademark portfolio.
Revision Legal’s Michigan trademark attorneys handle the full spectrum of trademark legal services — from initial search and clearance through registration, licensing, enforcement, litigation, and international protection. We have helped Michigan businesses build and defend some of the strongest brands in their industries. Contact us through the form on this page or call (855) 473-8474 for a consultation on your trademarking and branding strategy.
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