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Trademark Law

What is a Trademark?

A trademark is “generally a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” – The United States Patent and Trademark Office, The Basic Facts About Trademarks, USPTO (2019).

What are my Trademarks?

Generally, the most common trademarks of business owners’ are their Business Name, Product Names, Services Names, Logos, and Slogans.

What does it Mean to File a Trademark?

  Filing your trademark in the US generally refers to registering your trademark with the United States Patent and Trademark Office (USPTO). Once your trademark has fully registered with the USPTO, you have federally superior rights to your trademark in the field of business that you use it in, for five years. After the fifth year of use, you have to do another filing to continue your rights in the mark.

Why file my Trademark?

When you register your trademark with the USPTO, you begin federal rights in the mark. Once registered, you can keep others from using your trademark and you can sue in federal court for three-times the profits someone incurs while intentionally trading under your mark.

Another reason to register your trademark is so that others do not begin to use it, and then turn around and try to make you stop using it. Failing to register your trademark leaves you open to lawsuits from other users over federal rights to the mark.

Trademark Research

  Before you Choose Your New Brand, Business, or Product Name, you must ensure it is available!

Trademark Research is research and evaluation of your potential trademark to see if anyone else has already made a claim to your mark or something confusingly similar in the same or similar field.

Our research includes review of USPTO Federal filings, US State filings, and World Intellectual Property Organization International Filings.

We review your exact mark and similar spellings, in your trademark class and similar classes, to give you a very comprehensive evaluation.

We also review your mark for “unregistered use” including social media, website, and internet use.

We provide you a summary of all research, and a comprehensive legal evaluation of your trademark.

Trademark Filings

After you have cleared your trademark through Trademark Research, you are ready to protect your mark. In the US, the person who has filed a trademark with the United States Patent and Trademark Office has federal rights to the trademark, nationwide, and can prevent others from using the mark in the same or similar field. In order to start your federal rights in your Brand, you need to file your marks.

We offer individual US state, US Federal (USPTO), and International Trademark Filings.

We review your exact mark and similar spellings, in your trademark class and similar classes, to give you a very comprehensive evaluation.

Protecting your Brand, including your business name, product names, logos, and slogans is important! This is your intellectual property, but you can lose rights in it if you fail to protect them.

USPTO Office Action Responses

That is an Office Action? After filing your trademark with the United States Patent and Trademark Office, a Trademark Examiner will review the filing. Often the examiner has questions or may require disclaimers, translations, or clarifications.Trademark examiners issue “Office Actions” to applicants to communicate open issues to the applicant. The applicant than has 6 months from the date of issuance of the Office Action to respond to the Trademark Examiner.

Some Office Actions are much easier to resolve than others. Simpler Office Actions include re-wording a description, refiling in a different class, translating the mark, or filing a disclaimer.

Other Office Actions are much more difficult. These include Rejections of the Trademark based on Use of the Same or a Similar Mark by a registrant in the same of similar field, and Rejections based on the mark being “generic” or “merely descriptive” and therefore not unique enough to protect.

Making the most persuasive response to an Office Action possible is the best chance any applicant has from overcoming a denial based on Likelihood of Confusion or Merely Descriptiveness.

Brand Advising

Choose your Brand wisely! The importance of vetting the mark that you choose as a Business or Product Name cannot be overstated. Working with a Trademark Attorney on Brand selection is critical. Through trademark research and consulting, we can help you find a trademark that is not only available, but that fits the essence of your product/business name and that meets your needs for the mark.

Amazon Brand Registry

Calling all Amazon Sellers. Did you know that you can join the Amazon Brand Registry to get access to enhanced brand protection and brand-building benefits not otherwise available. But there is a catch! You have to have your business and/or product name federally registered to qualify!

Take advantage of Amazon Brand Registry perks such as:

Accurate Brand Representation

Powerful Search and Report Tools

Additional Pro-Active Brand Protection

Brand Registry Support

Brand Building Benefits including Enhanced Brand Content, Stores, Sponsored Brands and the Brand Dashboard. See more at https://brandservices.amazon.com/benefits

Cease and Desist Letters

A Cease and Desist Letter is a letter, generally from a law firm representing a federally registered mark owner, telling a business owner to stop using their federally registered trademark. The letter tells the business owner to “Cease and Desist” use of the infringing mark or risk liability for three-times the profits earned under the infringing mark.

Do you need to send a Cease and Desist letter? We can do that for you.

Did you receive a Cease and Desist letter? We can help review the situation and respond appropriately.

Ready to Get Started? Contact us now.