TRADEMARK

Trademark and service mark protection are often a vital aspects of the branding and success of a new business or product line. If you are currently using your mark in commerce, we will file and prosecute a use-based trademark or service mark application. If you are currently using your mark in commerce, but intend to do so, we will file and prosecute and intent to use application to establish a priority date for your trademark. During trademark prosecution, an attorney at the Patent and Trademark Office will “examine” your application. We will respond to the examining attorneys objections, if any, making legal arguments as to why your trademark or service mark application should be granted. We respond examiner objections with legal argument, including legal argument regarding descriptiveness, functionality, likelihood or marketplace confusion, deceptiveness, and all other objections. We counsel on trademark identification and disclaimers, and we assist with gathering evidence to support your trademark application.

A trademark identifies your business as the source of your product or service. With trademark rights, you can prevent others from using the valuable brand, that you have invested so heavily in, to sell their products and services. Contact us if you need to secure trademark protection to protect your valuable brand name.  


QUESTIONS AND ANSWERS ABOUT TRADEMARK

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How does someone get trademark rights?

Trademark rights (ownership) are acquired by using a name, logo, or symbol (we refer to either of these as a “mark”) in commerce to identify the company that is the source of the products to which the name, logo, or symbol applies. Trademark rights are acquired only in the local geographic area where the mark is used.

What does it mean to register a trademark with the patent and trademark office (the “PTO”)?

A trademark can be registered with the PTO by applying for registration on the form prescribed by the PTO for registration. The registration process includes an evaluation by a PTO examiner to determine if the mark meets the legal requirements for acquiring trademark rights and if the mark meets the legal requirements for registration.

What are the benefits of registration?

Although trademark rights (ownership) are acquired by using a mark in commerce, registration of a mark includes benefits beyond ownership, such as: (i) national ownership rights (rights acquired by use in commerce are only local); (ii) a legal presumption that the registrant is the owner of the mark; (iii) all infringers are deemed to be on notice of the registrant’s ownership of the mark; and (iv) the right to put the registration symbol (an “R” with a circle around it) after the mark;

How long does it take to register a trademark?

About 4-12 months.

Can a use the same trademark for different products?

You can, but you might be infringing someone else’s trademark rights. Trademark rights are acquired only for a specific product or product class. For example, if you have acquired trademark rights to the “Chevrolet” mark to identify the automobiles that you sell, you do not necessarily have trademark rights to identity luggage that you sell. If someone else has trademark rights to the “Chevrolet” mark to identify luggage, you would infringe their rights if you sold luggage under the “Chevrolet” mark. But if no one has trademark rights to the “Chevrolet” mark to sell luggage, you are free to do so, and you might even want to register the mark with the PTO under the luggage classification.

What is the difference between a trademark and a service mark?

A trademark is a mark that distinguishes one product from all other competing product, whereas a service mark is a mark that distinguishes one service from all other competing services.

What happens if I register my mark and later find out that someone else is using my mark?

Trademark rights are acquired by use in commerce for a specific product or product class. If the other person began using the mark in commerce for the same product class as you and began doing so before you began doing so, your mark is subject to cancellation. If the other person began doing so after you, he or she is infringing your mark and you might consider a lawsuit.

What is a common law trademark?

A common law trademark is a trademark that has not be registered with the PTO or with a state.

Can I get trademark rights in my internet address?

Yes, as long as it meets the requirements for any other trademark.

What is the difference between a state trademark and a federally registered trademark?

A state trademark gives you rights only within that state. A federally registered trademark gives you rights in all 50 states and the District of Columbia.

What is the Official Gazette?

The Official Gazette is a periodic publication of the PTO. It contains the latest PTO announcements and news, read mostly by attorneys. It also contains a listing of trademarks proposed for federal registration.

What requirements must I meet to get federal trademark registration?

In order to get federal trademark registration for your mark, you must demonstrate: (i) that you are the first to use the mark in commerce in a particular geographic region for a particular product or product class, and (ii) the mark is distinctive.

What are the two ways a mark can be distinctive?

A mark can be inherently distinctive or it can earn distinctiveness by acquiring secondary meaning. A mark is inherently distinctive if it is unique enough to earn customer recognition on its own without long-term use in commerce. For example, “Yahoo!” is unique enough that it earns customer recognition immediately without long-term use in commerce. A mark can also be distinctive by earning customer recognition through continued use in commerce over time (secondary meaning). For example, the mark “bufferin”, when used for buffering aspirin, is not distinctive because it simply describes the product. It would be like trying to trademark “auto” for cars. But, due to extensive and continued use of “buffering” for the buffered aspirin product, “bufferin” has become distinctive.

What factors tend to make a mark more or less distinctive?

A mark that describes the product is weak (and may not be registered by the PTO). For example, the mark “Jar” is descriptive and weak if the product you are selling is jars. On the other hand, if you are selling shoes under the mark “Jar”, it is distinctive and not unique, and relatively strong. Marks with geographic terms are also relatively weak. For example, “Western Automobile” is not terribly distinctive when used to sell automobiles. Marks using a personal name are also relatively weak, such as “Joe’s Pizza”. A mark that suggests the product, but does not describe it, is relatively strong. Examples are “Suave” for shampoo, and “Greyhound” for bus service. Fanciful (arbitrary) marks are also relatively strong. Examples are “Apple” for computers and “Camel” for cigarettes. Coined (words you will not find in a dictionary – completely made up words) marks are also relatively strong. Examples are “Nyquil” for medication and “Reebok” for shoes.

What are some reasons why a mark can be denied federal registration?

Reasons include: (i) some one else has previously used the mark in commerce; (ii) the mark is not distinctive; (iii) the mark is scandalous or immoral. On the final reason, the PTO denied registration for a mark used for lollipops when the mark was a word that described a certain sex act.

What are some examples of registrable marks?

The following are registrable types of marks: (i) word or words; (ii) graphic design (logo); (iii) sounds (jingle); (iv) slogan; (v) symbol; and (vi) colors.

What is the difference between trademark and trade dress?

Trademark protects a mark that identify the source of a product, whereas trade dress protects the product packaging, store décor (internal and external), and the look and feel of a website.

Trademark protects a mark that identify the source of a product, whereas copyright protects original works of authorship. To clarify this distinction, copyright protects the expression of ideas, not the ideas themselves. Ideas cannot be protected. For example, Einstein’s general theory of relativity is an idea. Because Einstein cannot and does not own the idea of general relativity, Author number 1 can write a textbook to express this idea and sell it to physics students. Author number 2 cannot copy author number 1’s textbook (the expression of Einstein’s idea in textbook number 1 is copyrighted), but he can write his own textbook expressing Einstein’s idea. Copyright law protects the works of writers, artists, musicians, software programmers, musicians, photographers, actors, sculptors, and others who create expressive works.

What is the difference between trademark and patent?

Trademark protects a mark that identify the source of a product, whereas patent protects useful and functional inventions. Patent law protects new machines, processes, and compositions of matter.