Jonathan LA Phillips, Attorney at Law
Illinois IP Attorney

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A trademark clearance search could have saved some money for this applicant

There is nothing worse than wasting filing fees and driving your trademark application into a brick wall. Trademark attorneys can help you avoid that fate through clearance searches and analyses. Trademark attorneys, like Jonathan, are well versed in assessing the risk of adopting a mark, as its what they do day after day. As I tell my Intellectual Property Law for the Entrepreneur students, “You may be smarter than trademark attorneys, but they probably already closed whatever loophole you think you have on them.”

Here, the question was, can you register JUST SAY IT for "promoting healthy lifestyles encompassing physical, social, emotional and spiritual aspects of positive human oral communications.” You cannot. And one unlucky applicant found that out after applying for that mark and appealing to the Trademark Trial and Appeal Board after refusal.

The Trademark Trial and Appeal Board determined Nike’s slogan (and registered mark) JUST DO IT is “exceedingly famous.” In its recent case, the TTAB denied the applicant’s registration because of its confusing similarity to this famous mark.

Trademark attorneys can help you judge the degree of risk associated with adopting a brand. In doing so, you can mitigate your risk of wasting precious resources on trademark applications doomed to fail. Or, you may be able to avoid an infringement lawsuit you are doomed to lose