SWB names Abigail Christmann as Senior Associate

Saunders, Walsh & Beard is pleased to announce the promotion of Abigail Christmann to Senior Associate.

Since joining the firm in early 2017, Ms. Christmann has continued expanding her legal expertise in areas such as civil litigation, real estate, construction law, appellate advocacy, and insurance law (coverage and defense).

Ms. Christmann is licensed to practice law in Texas and has added the ability to handle matters in St. Louis and St. Charles Counties in Missouri. We are very proud of the attorney Ms. Christmann has become and look forward to her continued success.

SWB Names Chapman Bauerlein as Senior Associate

Saunders, Walsh & Beard is pleased to announce the promotion of Chapman Bauerlein to Senior Associate.

Mr. Bauerlein joined the firm in 2019. During that time, we have witnessed Mr. Bauerlein develop into an exceptional attorney through his dedication, diligence, and solution-oriented approach. In 2023, he was named a Texas Rising Star in Business Litigation by Super Lawyers magazine—an honor bestowed upon only the top up-and-coming lawyers in the state.

Mr. Bauerlein focuses his practice on Business and Commercial Litigation as well as Construction Law. His judgment, preparation, and client-centered representation have proven invaluable to our clients. We are delighted to recognize Mr. Bauerlein’s many contributions to the firm with his well-deserved promotion.

Attorney Chapman Bauerlein

Protecting Your Brand with a Trademark

With a business, branding is everything. From McDonald’s iconic “Golden Arches” to Nike’s catchphrase “Just do it!”, any savvy company is best served in protecting its intellectual property, and there’s no better way to protect your brand than to register a trademark with the United States Patent and Trademark Office (USPTO). Registering a trademark provides federal protection from infringement and entitles you to statutory damages. Trademarks can be images, names, or phrases, so long as they represent your business.


Getting Started

Since the application is a sunken cost that is non-refundable, regardless of whether the mark is approved, it is advisable to perform a search on the USPTO trademark search engine, to see what possible “competition” you might have for your mark. The link is here – Trademark Search Trademark Search (uspto.gov). The 45 International Classes cover any goods or services that a business might provide. It is advised to only be concerned with the International Class(es) that would apply to your mark. It’s why Dove Soap and Dove Ice Cream can co-exist. Trademarks exist to prevent consumer confusion, so ideally an individual wouldn’t take a bite out of a bar of soap, nor would they rub a chocolate-covered ice cream bar under their arms in the shower.

5 Levels of Distinction

Also, even if your mark is not found in the search engine, we will need to make sure that it has a certain level of distinctiveness. There are five levels of distinction for trademarks with the stronger the distinctiveness is, the more likely you’ll be approved for registration.

I. Fanciful

The highest level is “Fanciful.” This is a mark that has no relation whatsoever to the goods or services being offered and is also created solely to represent the good or service. Things like “Adidas” or “Xerox” are examples, as those words did not “exist” before the companies created them.

II. Arbitrary

The next level is “Arbitrary.” This mark is a word that has been known to the populace before the application/use of it as a mark, but it is wholly unrelated to the goods or services provided. Things like “Apple” or “Starbucks,” as if you’d never known of the computer company or the coffee chain, you’d be hard-pressed to assume what the companies do.

III. Suggestive

The third level is “Suggestive.” These marks suggest the product or service offered, without explicitly saying it. For example, even if you’d never heard of the chain, if I asked you if you wanted something from “Burger King,” you’d assume that it was a restaurant of some sort, probably selling hamburgers.

The next two levels are difficult, in terms of justifying federal protection.

IV. Descriptive

The “stronger” of the two is “Descriptive.” These marks describe the purpose, nature, or attribute of the product or service and are not considered to be eligible for registration. However, in exceptional circumstances, a descriptive mark could be registerable if it has acquired distinctiveness—through long-term usage in the eyes of consumers. When possible, you always want to argue that your mark is “Suggestive,” rather than “Descriptive,” and this is a common area where you’ll receive an office action from the USPTO, where they’ll claim it is the latter, and you’ll want to argue that the former applies.

V. Generic

Finally, the weakest mark is “Generic,” and it will never be protected, as it is too commonly used to have any distinctiveness. For example, I couldn’t trademark “Computer” or “Phone,” by themselves, as they are the names of the products they represent. (That being said, “iPhone” is a Suggestive mark, through the use of the letter “i” at the front of the name.) Also, a brand can be a victim of its success, in that it has come to dominate the market and as such, the brand name represents not just the particular product line, but the type of product in general. (Think of “Kleenex” being interchangeable with “facial tissue.”)

Even if you do get a refusal or opposition to the mark, once you’ve applied (an “Office Action”), you will have the ability to respond to that office action to state your case why their refusal is not well-reasoned, so know that you can always fight back against a refusal.

At some point in the application process, you must show that the mark is in use in commerce. If you have an idea for a slogan or a logo, but don’t have it currently used to represent your business, you can still file to register the trademark, but at some point, you will need to show that it is being used by your goods or services.

Give Us a Call

The experts at Saunders, Walsh & Beard are more than happy to assist you with any questions or needs in registering a trademark, renewing a trademark registration, or defending against an Office Action. The trademark process is a lengthy one, where applications submitted aren’t reviewed for ten months, as of 2023. You want to make sure you have a professional on your side to save you the time and stress of undergoing this process alone.

Private Businesses in Texas Can No Longer Require Vaccines Under New Law

On November 10, 2023, Texas Governor Greg Abbott signed a law banning COVID-19 vaccine mandates by private employers passed during Special Session #3 of the 88th Legislature. This new law prohibits private employers from requiring employees or contractors to receive a COVID-19 vaccination as a condition of employment. Employers that violate this law are subject to a potential $50,000 fine as well as a lawsuit and injunctive relief from the Texas Attorney General. The bill empowers the Texas Workforce Commission to investigate complaints by employees, contractors, or prospective employees or contractors alleging their employer or prospective employer has taken adverse action against them for not receiving a COVID-19 vaccine.

If you have questions about this new Texas law please contact Mr. Robert J. Garrey at [email protected] or by phone at 214-919-3555.