What is a trademark?

Trademarks are terms, phrases, logos, colors or sounds whose purpose is to inform consumers of the source of particular goods or services. For example, the PEPSI® term and the red and blue circle logo are each trademarks that identify the brand of cola a consumer is purchasing. Trademark law has two important functions.  First, it is intended to prevent others from exploiting the goodwill of the trademark owner by passing their products off as those of the trademark owner. This protects the brand owner from infringement.  The second function is to protect consumers from being duped by the use of confusingly similar trademarks on related goods or services.  This protects the consumer by ensuring that the source of the purchased goods or services is indeed what it seems.

How do I protect a trademark?

Federal trademark registration provides a convenient path for trademark owners to protect their rights. Federal registration of a trademark will allow the mark owner to place the ® next to the mark and provide notice to others that the mark is an existing registered trademark.

Our services are designed to first determine if a particular trademark is eligible for federal registration.  In order to make this determination we perform a trademark search, wherein we search for similar pending and registered federal trademarks, registered state trademarks, registered business names and registered domain names. The results of this search are then used to prepare a trademark opinion letter in which we determine what marks are most closely related to the proposed trademark and apply the law and our knowledge of the USPTO to form an opinion regarding its registrability.

If we believe trademark registration is available, we pursue registration of the trademark.  We prepare and trademark application, and after the client reviews and signs the application, we file the application.  In most cases, this is all that is required for a trademark to become registered, however, many applications require more interaction with the USPTO. For example, an Examiner may require more information about the product or service identified by the trademark, or the examiner may feel that the proposed trademark is too close to an existing trademark.  In either case, the examiner will issue a document known as an “Office Action” which must be responded to in order for the application to be allowed.  You can request these services and many others by calling us at (866) 768-5672.

How do I maintain a trademark registration?

Generally, once a trademark becomes registered, continued registration requires that the owner continues to use the trademark in commerce.  Additionally, the registration must be renewed to avoid cancellation.  Renewal is required between the fifth and sixth year after a trademark becomes registered.  An affidavit must be filed along with proof that the mark is still being used in commerce. Additionally, trademarks must be renewed every ten years.

How do I enforce a trademark?

When others use an existing trademark or a confusingly similar trademark to identify related goods or services without the permission of the trademark owner they are subject to civil litigation. These situations can be handled in many ways depending on the extent of the infringement and the willingness of the parties to cooperate.  Similarly, trademark owners are also allowed to contest federal applications for similar trademarks if they believe that those marks are confusingly similar to the existing marks.  The first step is to discover any potential infringement.  Our firm provides trademark monitoring services designed to detect unauthorized uses of our clients’ trademarks as well as identify pending applications at the USPTO that may become registered if not Opposed.