Trademarks 101: The Basics
High-Caliber Trademark Attorneys
Strictly speaking, a trademark is a unique design, symbol, slogan, or word that marks certain goods as coming from a distinct source, while a service mark identifies the source of a specific service. However, the term trademark generally refers to both trademarks and service marks.
Trademarks are different from patents and copyrights. A patent protects an invention and a copyright protects an original artistic or literary work.
We understand how vital it is that you successfully register your trademark. Proper legal measures can prevent infringements and unauthorized uses of your creations. This is why we are focused on protecting our clients and their brands, personally working with them the entire way.
We are well equipped to help you in the trademark process . Don’t hesitate to call today to learn more.
Understanding the Trademark Process
Trademark law affords companies and individuals the ability to distinguish the source of their products, goods, and/or services from those of competing businesses. Trademarks also offer some level of consumer protection, because consumers can begin to expect and recognize a degree of quality or care from products associated with a particular brand.
In brief, here is a look at a few of the ways a trademark lawyer can help you:
- Trademark search: A trademark attorney can provide a catered search for a variety of unique end goals, it may not be enough to go through the U.S. Patent and Trademark Office. While this covers federal registrations, state registrations as well as “common law” unregistered trademarks could still affect your ability to use or register a mark.
- Trademark registration: Unless your application, and every step leading up to it, was error-free, you could be met with a refusal. Every part of the application is crucial, from selecting your goods and/or services to choosing the right basis for filing. As experienced trademark lawyers, you can trust that your application is in good hands.
- Trademark infringement: Your legal protections are not automatic. The owner of a trademark is
the one responsible for enforcing and monitoring the use of their trademark. If you have uncovered trademark infringement, you can find the legal counsel you need for anything from a cease and desist letter to a lawsuit with our legal team.
Many steps go into trademark registration, and a slip up at any point could endanger your ability to gain this legal protection. Do not risk losing what is yours. Protect your best interests by speaking with a knowledgeable trademark attorney.
Whether preparing to file an application for registration with the USPTO, policing your trademark registration, preparing for litigation, or looking for competitive intelligence, a well-tailored trademark search by an experienced trademark attorney can help you achieve your business goals. Searches range from direct match searches in the USPTO database to comprehensive global searches covering federal, state, common law, and international databases.
If you need assistance with conducting a trademark search, please complete this form and an experienced trademark attorney. will contact you.
A trademark registration on the USPTO’s Principal Register entitles the owner to exclude others from using confusingly similar trademarks. Although not required to register a trademark for some exclusion rights to inhere, registration with the USPTO affords greater trademark protections. A trademark registration with the USPTO gives constructive notice of the owner’s claim to the trademark to anyone operating within the United States. The registration also evidences ownership of the trademark and provides the owner with the option to invoke federal court jurisdiction. A United States trademark registration may also serve as a basis for filing an application in other countries for the same trademark. For enforcement purposes, a trademark with the USPTO enables the owner to record their registered trademark with the USCBP to stop infringing imitations and counterfeit imports. Also, a registration may be used to obtain priority rights to online domain names for existing and sunrise TLD’s. Lastly, registration of your trademark entitles the owner to use the ® symbol with their mark.
There are three standard formats for filing the required representation of your trademark with the USPTO: standard character, stylized character, and/or design. There are also six non-standard formats that may require an additional submission of example specimens, descriptive statements and/or proof of acquired distinctiveness for the mark’s color, sound, 3-D shape, texture, motion or scent. An experienced trademark attorney can help you develop a strategy to cover each element of your brand with maximum protection.
Trademarks can be valuable assets and an essential piece of a business plan. If you need assistance with obtaining trademark registration,please contact an experienced trademark attorney.
Statement of Use
If you filed a trademark application based on a bona fide Intent-to-use (ITU), an Amendment to Allege use or Statement of Use (SOU) must be filed before registration of your trademark on the Principal Register. An Amendment to Allege Use can be filed during examination before the USPTO Examining Attorney approves the mark for publication. Otherwise, a Statement of Use (SOU) should be filed within 6 months of a Notice of Allowance. To avoid abandonment when a sample specimen of use in US commerce is still not available and there is a continuing bona fide intent to use the trademark, applicant can file a Request for a 6 month Extension of Time to File a Statement of Use with a sworn statement asserting that additional time is needed with a fee of $150 per class. A total of 5 such Extension of Time Requests may be filed (i.e. up to 3 years from the Notice of Allowance).
If you need assistance with filing a Statement of Use or Extension Request, please contact an experienced trademark attorney.
Office Action Response
An office action mailed by the USPTO presents any issues preventing your mark from registering. The issues raised in an Office Action may range from simple formalities and procedural requirements to substantive legal issues (e.g. lack of distinctiveness or likelihood of confusion with other marks). Office Actions are either “Non-final” or “Final.” Regardless of the issues raised, an applicant must respond to all of the cited reasons for rejection within 6 months in order to avoid abandonment. If the response does not overcome each outstanding issue, a Final Office Action will be issued. Upon receiving a Final Office Action, the applicant can file a response to the examiner and/or file an appeal to the Trademark Trial and Appeal Board. Having an experienced trademark attorney who is well versed in the various objections raised by trademark examiners greatly increases the chance of successfully overcoming an Office Action.
If you need assistance with responding to an Office Action from the USPTO, please contact an experienced trademark attorney.
Monitoring and Policing
Registration of your trademark on the USPTO’s Principal Register is only the first step toward protecting your brand. Owning a trademark registration entitles the owner to exclude others from using confusingly similar marks for related goods or services. In fact, failure to police the use of confusingly similar marks may result in the loss of your registration. Allowing others to use confusingly similar marks can result in dilution and weakening of the mark, which can limit a trademark owner’s ability to later enforce the mark. In fact, a mark can even become in-distinctive, descriptive, or generic, resulting in a complete loss of trademark rights.
If you need assistance with policing your trademark, please contact an experienced trademark attorney.
International Trademark Filings
It is important to seek protection for your trademark in all countries where you may conduct business. International filing options are determined by the countries where you are interested in seeking protection. Understanding the web of treaties affecting international trademark rights is crucial to minimizing costs and maximizing protection. Two main international treaties affecting trademark rights are the Paris Convention and the Madrid Protocol.
Under the Paris Convention, an applicant for a trademark in a member country is able to claim priority to that filing date for applications filed in other member countries so long as they are filed within six months of the original filing date. The Paris Convention allows a trademark applicant of a member state to apply for the same trademark protection directly in other member countries. However, the various filing and language requirements must be fulfilled in each jurisdiction.
The Madrid Protocol offers a centralized filing system for its member states provided by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Though member states can still reject a Madrid Protocol Request for Extension of Protection to their country, the filing requirements are governed by the treaty. This can greatly simplify the international trademark application process and amount to significant savings, particularly if applicant intends to apply to many jurisdictions. There are numerous advantages and disadvantages to international registration under the Madrid Protocol and each should be weighed when determining how to protect your mark internationally.
If you need assistance with protecting your mark internationally, please contact an experienced trademark attorney.
A trademark assignment is a transfer of rights, title, and interest in a trademark application or registered trademark. It is advised to record all assignments with the USPTO. Seeking the assistance of an experienced trademark attorney to draft, review, and record an assignment is recommended to avoid dangerous pitfalls.
If you need assistance with an assignment, please contact an experienced trademark attorney.
Trademark Maintenance and Renewal
a. Section 8 Declaration of Use or Excusable Non- Use
Once a trademark is registered with the USPTO, it must be continuously used (or meet the requirements of excusable nonuse). A Section 8 Declaration of Use must be filed for all trademarks between the 5th and 6th year after registration and between every 9th and 10th years thereafter. There is a 6-month grace period after the deadlines within which a Section 8 Declaration will be accepted for an additional grace period fee. A trademark will be cancelled if a Section 8 Declaration of Use is not filed at the proper time. The Declaration of Use must affirm that the mark is in use for all of the goods and/or services for which the mark was registered. A proper specimen showing the mark in use must accompany the statement of use for each class of goods or services.
b. Section 15 Declaration of Incontestable Rights
For trademarks registered on the principal register, a declaration of incontestability may be filed within one year after five years of continuous use for the goods/services listed on the registration. Once accepted the mark will be designated by the USPTO as “incontestable.” Such “incontestable” status serves as conclusive evidence that the registration of the mark is valid and of the owner’s exclusive right to use the mark. Although not required, the “incontestable” status creates a much stronger enforcement position. To apply for incontestability of a mark, applicant must state that the mark has been in use for five consecutive years, that there have been no adverse final decisions against the mark and that there are no ongoing proceedings challenging the owner’s rights to the mark. Section 15 Declarations are often filed in combination with the Section 8 Declaration filed between the 5th and 6th years of registration.
c. Section 9 Renewal
All trademark registrations must be renewed for each class of goods/services between every 9th and 10th year after the mark issues. A Section 8 Declaration is also required at the times for filing a Section 9 Renewal and therefore they are often filed in combination. Although paying renewal fees is primarily an administrative function, failure to timely renew a trademark will result in cancellation of the mark.
d. Section 71 Declaration of Use or Excusable Non-Use
Section 71 Declarations are required to maintain the extension of an international registration in the U.S. Failure to file a Section 71 Declaration results in cancellation of the U.S. registration. Similar to a Section 8 Declaration, a Section 71 Declaration must be filed between the 5th and 6th year after registration and between every 9th and 10th years thereafter. There is a 6-month grace period after the deadlines within which a Section 71 Declaration will be accepted for an additional grace period fee.
The USPTO does not issue reminders of maintenance deadlines. However, experienced trademark attorneys utilize powerful docketing tools to ensure their clients’ deadlines do not pass unnoticed.
If you need assistance maintaining your trademark registration, please contact an experienced trademark attorney.
Opposition of a Trademark Application
All trademark applications undergo a 30-day opposition period prior to registration. During this period, any party who believes it may be damaged by the registration may file a Notice of Opposition with the TTAB in an attempt to prevent the registration. A party may also file a request for an extension of time to file a Notice of Opposition. The time to file a Notice of Opposition will not be extended beyond 180 days. Once a Notice of Opposition is filed, a proceeding in front of the TTAB involving both the opposer and the applicant is triggered. An applicant must respond to a Notice of Opposition to avoid cancelation of the application.
Whether you have received a Notice of Opposition against your application or if you wish to initiate an opposition proceeding, having an experienced trademark attorney to represent you through the proceeding or to negotiate a settlement is imperative.
If you need assistance filing or defending an opposition, please contact an experienced trademark attorney.
Cancellation of a Trademark Registration
Similar to an Opposition of a Trademark Application, Cancellation is the avenue for a third party to challenge an existing trademark registration. A proceeding to cancel a trademark registration can be initiated by any person or entity that believes it will be damaged by the registration. There are many grounds on which a cancellation proceeding may be brought, for example, that the mark causes a likelihood of dilution by blurring or by tarnishment, that the mark has become generic, that the mark has been abandoned, or that the registration was obtained fraudulently. Strict timelines may apply for filing a cancellation proceeding, depending on the grounds for which it is brought.
If you need assistance filing or defending a cancellation, please contact an experienced trademark attorney.
Trademark litigation includes maintaining or defending infringement actions. Understanding the strength of the trademark at issue is paramount for both trademark owners and defendants at every stage of litigation. An experienced trademark attorney can effectively advise and represent plaintiffs and defendants during all stages of litigation.
Trademark litigation is a highly complex undertaking. To bring understanding and confidence to your trademark position an experienced trademark lawyer may offer a suite of pre-litigation, on-going litigation and post litigation counseling services.
If you have been sued or wish to initiate trademark litigation and would like to consult an experienced trademark attorney, please contact an experienced trademark attorney.
Cease and Desist Letters
Cease and desist letters are used by trademark owners to alert actual or would-be infringer(s) and/or diluters of their rights and to demand that unauthorized use of the trademark is stopped. Cease and desist letters can be an effective tool for a trademark owner to police their trademark, incentivize negotiations and/or license agreements. Cease and desist letters often precede licensing negotiations, TTAB Oppositions and U.S. District Court litigation.
Whether you have received a cease and desist letter or wish to enforce your rights through a cease and desist letter, it is important to consult an experienced trademark attorney to understand the serious implications involved.
If you have received a cease and desist letter or are contemplating sending a cease and desist letter, please contact an experienced trademark attorney.
We are U.S. trademark attorneys, to protect your best interests. Call now.
As an internationally revered and respected team, we are confident in our ability to help you through any trademark issue. We work with our clients personally, providing them with careful and effective guidance every step of the way. Despite the many frustrations and delays you may face in the trademark process, working with a skilled attorney can give you confidence that you are making the right choices.
We can help you initiate the proper legal protections for your intellectual property. To learn more about what each step entails, we have provided a FAQ page. If you have more questions, you can learn more about the specifics for your case when you contact our team.
Discuss your trademark case with our legal professionals. Feel free to contact an attorney at your earliest convenience.