Use of the ® indicia with a trademark requires a trademark owner to register the trademark with the United States Patent and Trademark Office (USPTO). The trademark registration process is not well understood, and the time associated with the process is frequently unexpected. In this interview with Donna Jones Daley, Esq., Managing Partner of a global leadership development and executive coaching firm in metro DC, we learn how a source identifier becomes a registered trademark.
Ms. Daley founded Noble Resource Associates because she “saw a need to support professionals to transform the way they navigated their careers in times of uncertainty and change.” Clients working with Noble Resource Associates are not satisfied with mere success; they strive to win. “Winning represents more than success. It is commitment and drive.” Indeed, “a majority of the Firm’s coaching clients are former athletes. Since these professionals have competed in sports activities at the university or WNBA level, the word ‘win’ resonates with them.” Ms. Daley’s trademark, Position You To Win®, reflects her winning-oriented approach. Position You To Win®, as a source identifier for Noble Resource Associates, makes sense.
Position You To Win® is a trademark registered with the USPTO (Registration No. 5,530,001). When asked why she registered her trademark, Ms. Daley explained that “the Firm’s brand is intellectual property. It’s an asset. It represents my efforts in generating content associated with the Firm’s brand.” She questioned whether businesses would fail to protect valuable assets, allowing unhindered theft. “My suggestion is you wouldn’t. Registering a trademark is the same as saying this asset has value and is legally protected.”
Trademark registration takes time. Ms. Daley filed an application to register Position You To Win® as a trademark with the USPTO on December 29, 2017. As part of the application, Ms. Daley provided ownership information, proof of use of Position You To Win® as a trademark in commerce, and identification of services associated with the Position You To Win® trademark. The time between the application filing date and the USPTO’s first action on the application was about four months. “In hindsight, the four-month trademark processing period didn’t seem unreasonable. In comparison, much more time was invested in developing the unique trademark statement that would best reflect the Firm’s brand promise – a commitment to strategically support our clients in navigating their careers.”
The USPTO found no confusingly similar, prior registered marks to challenge registration of Ms. Daley’s trademark and Position You To Win® satisfied legal requirements for trademark distinctiveness. The USPTO published the trademark for opposition in the Official Gazette on May 15, 2018. The mark was published for 30 days and no one raised oppositions to the potential registration of Ms. Daley’s trademark. The USPTO issued a Certificate of Registration for Position You To Win® on July 31, 2018. Altogether, the time between filing the application to register the trademark and receiving a Certificate of Registration was about seven months.
The Position You To Win® trademark registration process was relatively smooth. Not all trademark registration processes are as smooth, and many take longer. The USPTO commonly refuses registration because of confusingly similar, prior registered marks. An applicant may attempt to argue against the refusal or abandon the application. Ms. Daley was happy with the “win” – Registration.
I want to thank Donna Jones Daley for sharing her experience with trademark registration. To learn more about Ms. Daley’s Position You To Win® executive coaching and leadership development brand strategies, please visit Noble Resource Associates, LLC.
Hutchison Law, LLC has experience preparing and filing trademark applications to protect trademark rights. To learn more about our intellectual property practice, please contact us at 410-978-7287 or info@hutchisonpatents.com.
© 2020 Hutchison Law, LLC. All Rights Reserved. Content provided herein is for informational purposes only and should not be construed as legal advice.
