While it may come as a surprise from a firm registering new marks all the time, delayed registration is common for brands consisting primarily of someone’s last name. The USPTO generally refuses registration of surname marks on the Principal Register until the owner has conducted business nationally under the name for about five years.
(The Supplemental Register option is available from day one; however, it offers more limited protection and is saddled with the implicit concession that a mark is “weak.” As such, reasonable minds differ on the utility of early filing.)
The policy reason behind the five-year delay for a mark to “acquire” distinctiveness makes sense — it is unfair to immediately grant *this* Moskowitz a limited monopoly over the use of the word Moskowitz in the field of law. It’s the same reasoning for any mark that primarily uses descriptive words. (You may recall Cleveland Croissant is too Flaky— an article where Suzann explained why descriptive and generic terms make weak brands.)
So why choose a “bad” brand in the first place, Moskowitz? In many states, regulations dictate that law firms may only include attorneys’ names combined with words like “firm” or “group.” (So “Team Brand Aid,” catchy though it may be, was never really on the table for us.) With no way around this no-fun-at-all rule, we decided to sneak in some creative wordplay through design, where “THE MOSKOWITZ” (T and M) is distinguished from “Firm” (F).
While we’ve never been only a trademark firm, we love protecting brands and we are so happy to cross the five-year threshold and finally obtain the full protection of US Trademark law. (As of this writing, the mark has been approved and is entering its 30 day “public opposition window.”) Barring an unforeseen challenge, the frame for our official trademark registration is ready and our new swag will be proudly emblazoned with a nice ® symbol!
[Update: The Moskowitz Firm® has been registered since 2018]