LIFE CYCLE OF A TRADEMARK A trademark is a word, symbol, design, combination of letters or numbers, or other device that identifies and distinguishes products and services in the marketplace. The process of creating, registering, protecting and exploiting your trademark -- "The Life Cycle of a Trademark" -- is complex and can be somewhat confusing. In this article, Thomson & Thomson breaks this cycle into nine stages, providing you with a basic framework for understanding the process. STAGE 1 -- CREATION Creation is the initial stage when a trademark, name, symbol or other device identifying your product or service is developed for use in the marketplace. There are guidelines to consider when creating a trademark such as avoiding descriptive or misleading terms and watching for foreign translations. (For example, the car name Nova translates as "no go" in Spanish.) Legal counsel can provide helpful guidelines as to how to make your trademark distinctive and increase its registrability. Trademarks are often developed in brainstorming sessions, using name creation software or by hiring a name creation company. The result of Creation process is a list of several potential trademarks that you will take on Stage 2, Screening. STAGE 2 -- SCREENING Once your list of potential trademarks has been created, the next step is to narrow the list. The ideal way to do this is to take a quick look and eliminate proposed trademarks that are obviously unavailable due to the existence of prior U.S. federal, state or international trademark registrations or applications. This can easily be done by "screening." Screening is inexpensive and normally done as preliminary research before investing in a more extensive trademark search. It is usually accomplished by researching trademark directories or online trademark research systems. Screening tools are available to search U.S. federal, state or international records. This process can be conducted by a trained individual or through a trademark research company. Warning: A serious error sometimes made at this point is skipping to Stage 5 -- developing an opinion based on information obtained from a screening search. Screening searches are insufficient for opinion purposes. Stage 3, Clearance and Stage 4, Investigation are crucial for making an informed decision. At the end of the Screening Stage, your list of proposed trademarks should be smaller, as those conflicting with existing trademarks will have been eliminated. STAGE 3 -- CLEARANCE Trademarks surviving the screening process are now ready for more exhaustive research. Typically a comprehensive search is conducted on each trademark by a company specializing in trademark research. The resulting research report is used by legal counsel to determine if your intended trademark stands a good chance of being registered. This type of research locates not only trademarks identical to your trademark in all classes of goods and services, but also confusingly similar marks in classes pertinent to your product, service or industry. These similar marks can include phonetic equivalents, synonyms, homonyms, marks incorporating the same or similar prefix, suffix or root word, and if applicable, foreign translations. International, company name, design/logo, corporate name or other specialized clearance searches may also be necessary. Clearance research reports done in preparation for U.S. federal registration usually contain U.S. federal, state and common law trademarks. The result of the Clearance Stage is an in-depth report that will assist in determining whether your trademark is available for use and registration. Warning: A serious error sometimes made at this point is skipping to Stage 5 -- developing an opinion based on information obtained from a screening search. Screening searches are insufficient for opinion purposes. Stage 3, Clearance and Stage 4, Investigation are crucial for making an informed decision. At the end of the Screening Stage, your list of proposed trademarks should be smaller, as those conflicting with existing trademarks will have been eliminated. STAGE 4 -- INVESTIGATION Most trademark investigations are conducted to locate additional information on potentially conflicting trademarks cited on your clearance search report. The most common purpose of an investigation is to determine if the conflicting registered or common law trademarks located are still in use in the marketplace. And if so, to determine if they will present a problem if you use or register your trademark. The result of the Investigation Stage is a collection of all necessary information needed to make an informed opinion about the availability of your trademark. STAGE 5 -- OPINION It is the job of an experienced attorney, using comprehensive trademark research reports and other related research, to render an opinion as to the availability of your potential trademark for use and registration. The result of the Opinion Stage is the decision whether your trademark should proceed to the next stage: the filing and registration process. STAGE 6 -- FILING AND REGISTRATION Once an application is filled out and filed at the United States Patent and Trademark Office (USPTO), an Examiner conducts research to determine if your proposed trademark is confusingly similar to any trademarks already registered. If no conflicting trademarks are found, and if your trademark is found to otherwise qualify for registration, your trademark is published for opposition in the USPTO's Official Gazette. The Official Gazette provides anyone who believes they would be damaged by the registration of your published mark an opportunity to challenge your proposed registration. If an owner makes a claim that your trademark is confusingly similar to his or hers, opposition proceedings are instituted and a decision is rendered by the Trademark Trial and Appeals Board. If no oppositions are filed, or if any opposition is successfully overcome, the application will proceed to registration. In the case of "Intent-to-Use" applications, documented use of your trademark must exist before registration can take place. The result of the Filing/Registration Stage determines whether or not your trademark is registered. STAGE 7 -- PROTECTION This stage is an on-going program designed to protect, maintain and enhance the value of your trademark. Protection commonly includes a "watching" program to find trademarks being applied for or used in the marketplace that may infringe or dilute the uniqueness and value of your trademark property. Watching can be done by searching through Official Gazettes, trademark journals and industry publications. Trained experts from trademark service companies use these tools as well as sophisticated databases to perform watching for you. If a conflicting mark is found, you would work with your attorney to prepare a plan of attack. Protection can also include standards and guidelines for proper use of your trademark by your company and the public in any marketing, promotional and journalistic activities. These steps may even prevent your trademark from becoming generic. This happened to "elevator," "aspirin" and "thermos." Protection services for word and design trademarks are available on U.S. federal, state, common law and international levels. The purpose of this stage is to make sure an asset as important as a trademark is protected by keeping it competitive and unique. STAGE 8 -- MAINTENANCE Maintenance keeps you up-to-date on any affidavit or other document that must be filed to keep your registration active. Affidavit, proving continual use, must be filed between the fifth and sixth year of registration to prevent the registration from being canceled. This applies to the Section 9 renewal application, which allows the owner of a registration to renew his or her registration every 10 years, once the initial term of registration is complete. Failure to file will result in the expiration of the registration. Maintenance can be handled by you, your attorney or a trademark service company. The purpose of a maintenance program is to ensure that no trademark registrations are canceled for failure to file necessary and time sensitive documents. STAGE 9 -- COMMERCIAL EXPLOITATION Once your trademark is well known, steps can be taken to capitalize on its popularity. A common avenue is through licensing programs. They can strengthen your trademark's recognition in the marketplace, thereby enhancing its value. Licensing programs involve using your trademark, trade name or logo on merchandise not related to your original product -- clothing, toys, food, collectibles (mugs/key chains) or publications. The purpose of Commercial Exploitation is to make the most from your investment in your trademark and to further expand and capitalize upon its visibility and popularity.