"And don't waste money (as an early startup) on filing for trademark protection - because US trademark law respects common law use (ie, if you used it first, you are protected, even if you didn't file for protection). Registering your trademark does nothing if someone else (with more expensive lawyers) was using it first and can demonstrate that use."
Agree with most of what you are saying.
But with respect to the above paragraph doesn't incorporate the strategy
of why you might want to register a trademark even if protected by common law. Some animals
are more equal than others.
First, the cost. This can be done without a lawyer by just paying
the USPTO fees. So we are talking about $375 (or $325 in the case of certain marks) per category. I've both hired lawyers and I've done this myself as well.
Anyway back to strategy. It gives you a leg to stand on. That's very important
in terms of how the other side views you. You have taken the time to register
and therefore the other attorneys will give that some thought when they
are confering with their client as far as how to proceed. [2] Enough that,
in my opinion, and from my experience [1], it is worth the trademark filing
fees. (There are attorneys that will do this for $1000 all in by the say
if you don't want to diy.)
[1] The leg to stand on principle is something that I have used before
several times. In one case I was able to hold off the NCAA (they have big
lawyers, right?) and in another case a billion dollar defense contractor.
And in lots of small cases. Now this doesn't mean that you will execute
as well as I do when doing this but I'd like to point out that it is certainly
possible. (My expertise is strategy to the point where I can usually get
lawyers that are working for me to agree with my way of doing things that
contradicts even with legal precedent.)
[2] Meaning you could potentially extract a pound of flesh or concessions
(see NCAA in [1]) just from that leg you lean on.
Comments
"And don't waste money (as an early startup) on filing for trademark protection - because US trademark law respects common law use (ie, if you used it first, you are protected, even if you didn't file for protection). Registering your trademark does nothing if someone else (with more expensive lawyers) was using it first and can demonstrate that use."
Agree with most of what you are saying.
But with respect to the above paragraph doesn't incorporate the strategy of why you might want to register a trademark even if protected by common law. Some animals are more equal than others.
First, the cost. This can be done without a lawyer by just paying the USPTO fees. So we are talking about $375 (or $325 in the case of certain marks) per category. I've both hired lawyers and I've done this myself as well.
Anyway back to strategy. It gives you a leg to stand on. That's very important in terms of how the other side views you. You have taken the time to register and therefore the other attorneys will give that some thought when they are confering with their client as far as how to proceed. [2] Enough that, in my opinion, and from my experience [1], it is worth the trademark filing fees. (There are attorneys that will do this for $1000 all in by the say if you don't want to diy.)
[1] The leg to stand on principle is something that I have used before several times. In one case I was able to hold off the NCAA (they have big lawyers, right?) and in another case a billion dollar defense contractor. And in lots of small cases. Now this doesn't mean that you will execute as well as I do when doing this but I'd like to point out that it is certainly possible. (My expertise is strategy to the point where I can usually get lawyers that are working for me to agree with my way of doing things that contradicts even with legal precedent.)
[2] Meaning you could potentially extract a pound of flesh or concessions (see NCAA in [1]) just from that leg you lean on.