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Registering a Trademark

Where to start?

What is a Trademark?

A “trademark” is a word, phrase, symbol, color, design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others. A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods. A Trademark provides exclusive right to use a mark that serves to distinguish the goods of one person from another. However, features of a product that confer a functional or competitive advantage or words or symbols that directly describes the product or underlying category of product cannot serve as a trademark.

Do I Need a Trademark Lawyer?

Filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice. Once you hire an attorney, the USPTO will only communicate with your attorney about your application. A private trademark attorney can help you before, during, and after the trademark application process, including helping you police and enforce the trademark registration that may issue from your application.

While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks—all done before you file your application. Comprehensive searches are important because other trademark owners may have stronger protected legal rights in trademarks similar to yours even though they are not federally registered. Therefore, those unregistered trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent you from using your mark even if the USPTO registers your mark.

In addition, trademark lawyers can help you navigate the application process to provide optimal protection of your trademark rights, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue. Further, a Trademark attorney can help you understand the scope of your trademarks rights and advise you on the best way to police and enforce those rights, including what to do if other trademark owners allege that you are infringing their mark. Remember, enforcement of trademark rights is your responsibility, not that of the USPTO

Trademark Registration Pricing

*USPTO Fees not included

Other Pricing Option

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Response to Trademark Office Action

Response to Non-Final Office Action* – $1,000
Additional Trademark Application/IP Strategy Session * – $1,950
*Strongly recommend using a Trademark Attorney for office actions regarding likelihood of confusion and/or descriptiveness.

Understanding Trademarks

Do trademarks, copyrights and patents protect the same things? How do I select a trademark?

Do trademarks, copyrights, and patents protect the same things?

No. Trademarks, copyrights, and patents protect different types of intellectual property.

1) A trademark typically protects brand names and logos used on goods and services.

2) A copyright protects an original artistic or literary work.

3) A patent protects an invention.

Example: Assume you invent a new kind of vacuum cleaner. You may do each of the following:

a) Apply for a patent to protect the invention itself.

b) Apply to register a trademark to protect the brand name of the vacuum cleaner

c) Register a copyright for the TV commercial that you use to market the product.

Trademark = Asset ($$)

A trademark is used to identify the source of a particular product such as Coca Cola®, Apple®, or even Google®. A service mark is similar to a trademark except the service mark is used to identify the source of services. Consumers identify trademarks with a particular quality of goods or services. Trademarks may be considered as an asset of a business. The trademark may also increase in value as the products or services with increased brand recognition and consumer recognition and loyalty.

Trademark law protects both trademark owners and consumers. It protects trademark owners by preventing competitors from using a trademark to which they have no rights and to which they are owed no good will. Consumer goodwill is earned by a business over a period of time and trademark law recognizes that it is unfair for a competitor to take advantage of this goodwill without permission. Trademark law is also concerned with protecting the source and quality expectations of consumers. By preventing anyone other than the trademark owner from using the mark as a source identifier, the law protects consumers from deception. Not only can a trademark owner prevent someone from using its exact mark, but marks that are “confusingly similar” to a trademark can also be enjoined.

Unlike rights in a patent or a copyright, a company’s rights in a trademark can last indefinitely as long as the mark is still in use and the registration is renewed regularly.

Trade Names (Trade name vs. TradeMark)

A registered trade name is NOT a registered trademark. Registration of a trade name with the Secretary of State does not mean that the trade name is not infringing on another trademark. To obtain nationwide trademark protection, the mark should also be registered with the U.S. Patent and Trademark Office.

Trademark law protects both trademark owners and consumers. It protects trademark owners by preventing competitors from using a trademark to which they have no rights and to which they are owed no good will. Consumer goodwill is earned by a business over a period of time and trademark law recognizes that it is unfair for a competitor to take advantage of this goodwill without permission. Trademark law is also concerned with protecting the source and quality expectations of consumers. By preventing anyone other than the trademark owner from using the mark as a source identifier, the law protects consumers from deception. Not only can a trademark owner prevent someone from using its exact mark, but marks that are “confusingly similar” to a trademark can also be enjoined.

Unlike rights in a patent or a copyright, a company’s rights in a trademark can last indefinitely as long as the mark is still in use and the registration is renewed regularly.

Likelihood of Confusion with Other Marks

The USPTO examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the mark of the applicant and a mark already registered or in a prior-filed pending application owned by another party. The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods and/or services of the parties are related such that consumers would mistakenly believe they come from the same source.

Similar marks or related goods/services by themselves are not enough to support a finding of a likelihood of confusion, unless a court has held that the mark is actually a famous mark. That is, generally two identical marks can co-exist, so long as the goods and services are not related. Each application is decided on its own facts and no simple mechanical test is used to determine whether a likelihood of confusion exists. Therefore, before filing your non-refundable application, it is very important for you to determine whether your proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a thorough trademark search, as discussed below.

Don't Know What TradeMark to Select?

It is important to select a mark that can be registered as a Federal Trademark prior to introducing the business or product name into the marketplace….

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