Interviews Articles

I first met Brian Winterfeldt when he came to Network Solutions last year to give a great presentation on trademarks and IP for small business when he was with a previous firm. He joined Steptoe and Johnson earlier this year as a Partner in the Intellectual Property (IP) Group. Steptoe and Johnson is a general practice law firm with offices around the world. Brian is based out of the Washington, DC office and the IP Group is focused on identifying, registering and protecting a company’s IP. His focus within that group is as trademark attorney and helps companies of all sizes create, protect and enforce their brand assets. I recently had the opportunity to sit down with him and discuss how and why small business should work hard on a brand and protect it as a critical company asset. Here is a transcript of that interview:

Steve: As a self-proclaimed Global Brand Enforcer (cape not included) what is the overall process for small business to trademark their business?

Brian: Trademark protection should be a priority for any business, large or small.  Ideally, the process should begin even before the business name and brand names are selected: potential trademark owners should conduct trademark clearance searches for the marks they may wish to register.  At a minimum, US searches should be conducted, but if the business’s goods and/or services are likely to be marketed internationally, the business may wish to conduct searches in other countries or global searches as well.  These searches, when conducted by experienced trademark attorneys, will indicate whether each mark should be registrable in each jurisdiction or whether there are any potential obstacles (for example, if another party has already registered the same or a very similar mark). The business may wish to select several potential marks and conduct searches for all of them to improve the chance that at least one will be cleared.

Once the desired marks are cleared, the business should proceed with filing trademark applications in the desired jurisdictions.  Potential trademark owners should keep in mind that in the US, they will only be able to obtain trademark registrations if they are able to show use of each mark in interstate commerce, although they can initially file on an intent-to-use basis.  After each application is filed, it will undergo an examination process, during which time the applicant may be required to revise the application and/or submit arguments justifying why the mark should be registered.  Once the application has been approved by the examiner, it will proceed to publication, and if no oppositions are filed during a 30-day window, will then proceed to registration for use-based applications.

In addition to filing applications and pursuing trademark registrations, a business should also develop an enforcement strategy.  Enforcement of trademarks – that is, putting a stop to infringing uses of a mark – is extremely important as a mark can be significantly weakened if its owner fails to enforce it – or in extreme cases rights can be lost entirely.  Enforcement essentially involves determining which marks and elements of marks are most important to the business, monitoring the marketplace for potentially infringing uses, and then addressing these uses as they arise.  A business’s trademark counsel can assist with all of these elements of enforcement.

The company should review its trademark portfolio periodically to ensure that the marks being protected and enforced remain in use and/or remain of value to the company.

Steve: What are the components or types of trademarks? How long does the process take to get a trademark?

Brian: The two basic types of trademarks are word marks, which protect only the verbal form of the mark, and design marks, which protect a graphic representation of a mark.  Design marks may or may not be in color.  Occasionally, businesses may wish to file for protection for non-traditional marks, such as colors, three-dimensional shapes, and sounds.  However, small businesses that are just beginning to develop their trademark portfolios will likely want to focus on the word marks for their major brands and possibly design applications for their logos.

In the US, and in most international jurisdictions, applicants can file for their marks in one or more of 45 classes, depending upon the goods and services for each mark.  The applicant will need to pay an additional fee for each class applied for in most jurisdictions.

The time needed to proceed from initial application to registration varies greatly, but can take anywhere from about one year to several years.  The time will depend upon whether the mark is already in use, whether any amendments are required to the application, and whether the application is opposed after publication.

Steve: Since trademarks are just a US think what other things should companies do if they are international or want to protect their brand on an international level now and for the future?

Brian: Trademarks are actually not exclusive to the US! Most countries allow brand owners to apply for registration and protection of marks.

Once again, if a brand owner is considering selling its goods and services internationally, I recommend starting with a trademark search in the desired markets or globally to ensure that the desired mark is likely to be registrable in each of the desired markets.  The company should also determine its major current and potential markets and should consider filing for trademarks in those countries.  Companies that have a market presence in Europe should keep in mind that the European Community offers something called a Community Trademark (CTM), which allows for protection in each of the 27 EU member countries.

As companies, especially small businesses, are likely to need assistance with navigating the intricacies of the trademark application process in each international jurisdiction, they should work with the company’s US trademark attorney to coordinate with international counsel in each jurisdiction.  Value is provided by experience working with the various international jurisdictions, in combination with knowing your company well and its goals.

Finally, companies filing for international applications should expand their enforcement efforts to include those jurisdictions as well, especially in key markets.  International counsel can also assist with monitoring those marketplaces and addressing instances of potential infringement.

Steve: For a small business who always has many things that it needs to select in which to spend its limited budget on, what is the level of importance they should place on trademarks?

Brian: A company’s trademarks are among its most valuable business assets, and thus any budget should allow for some degree of expenditures on trademark protection.  Each budget should have room for applications relating to the company’s core brands in its major markets or for maintaining existing registrations for such marks.  If possible, the budget should also include a provision for some enforcement efforts to ensure that incidences of direct infringement can be discovered and addressed.

The company’s trademark counsel should be able to work within its budgetary constraints in order to develop an efficient portfolio management program that will meet the company’s protection and enforcement goals.

Steve: To wrap up I always like to ask a “five things” questions. So for you, what are five things a small business should look for in a trademark attorney

Brian: First, a small business should look for an attorney who is specifically experienced in trademark portfolio management, and who can point to successes in this area.  The business should not hesitate to ask for references from the attorney’s current or past clients who have successfully obtained and maintained trademark registrations.

Similarly, the business should look for an attorney who is experienced with both prosecution (filing applications and obtaining registrations) and enforcement, with notable successes in the enforcement realm (which may include executed settlement agreements, abandonment of infringing marks, or favorable decisions in litigation).

In addition, a business should seek out an attorney who has a network of strong relationships within the trademark community.  Even if the practice is limited to the US, attorneys usually need to work with outside investigators and search vendors, and those who have strong relationships with these vendors are more likely to provide quality, efficient, and cost-effective work.  Also, businesses that are considering any international applications will want to ensure that their attorneys have strong relationships with international counsel.

As the landscape of the trademark field is changing rapidly these days, especially with the growth of the Internet, businesses should look for attorneys who are active in the trademark community, particularly through membership and leadership in the International Trademark Association (INTA) or other intellectual property organizations.  Evidence of recent speaking engagements or publications in the field also demonstrates the attorney’s commitment to staying on top of cutting-edge developments in the field.

Finally, a business should look for an attorney who provides excellent customer service, who will treat a small business’s trademarks and portfolio with as much attention and care as that of a Fortune 500 company.  Again, references from existing and past clients can provide useful information regarding the attorney’s commitment to service, as can evidence of pro bono trademark work for community organizations.