The obvious service a trademark attorney provides is to evaluate the availability of prospective names and taglines as trademarks or service marks. After the prospective name is searched and the trademark attorney has delivered the opinion on its availability, then the focus turns to filing and prosecuting the trademark application. Leaving the trademark attorney to focus only on the prosecution of the trademark application could lead to a costly mistake.
Trademark owners should involve their trademark attorneys in reviewing advertising copy especially when that copy includes a reference to the trademark. This is a lesson that one trademark owner learned too late.
Talyoni, LLC applied to register the mark EL PATRON (in standard characters) for “perfumes and colognes.” The Trademark Office refused registration of Talyoni’s mark on the ground that it was likely to cause confusion with a prior registered mark BOSS (in stylized form) for, among other goods, “perfumery for personal use, namely, perfumes, eau de parfum.”
The Trademark Office offered numerous translations of the wording comprising EL PATRON, which translates in Spanish to “the boss.” However, the most damning evidence was Talyoni’s advertising copy. On its website, Tayloni wrote:
The boss knows that looking his best starts with the best. From a lush, verdant shampoo enriched with eucalyptus and aloe to an intensely hydrating conditioner with algae, sea minerals, and Moroccan oil, El Patron delivers luxury and refinement to your regimen.
Be the boss. This is the spirit of El Patron. Born out of the desire to bring out the best in a man’s personal style.
These statements in Talyoni’s advertising copy left no room for arguing that El Patron conveyed a meaning to consumers other than “the boss.” This limitation was completely avoidable if Talyoni’s trademark attorney reviewed the advertising copy. But this is not an isolated incident and happens more frequently than it should. Therefore, have a trademark attorney briefly review advertising copy before using it.