Schiffrin & Longo advises businesses of all sizes, from start-up and small businesses to large, well-established firms, concerning intellectual property rights and strategies regarding branding, house marks, trademarks, slogans, logos, and designs. We assist our clients with trademark clearance, registration, assignments, portfolio management, oppositions, cancellations and other trademark enforcement.
We understand that every business is unique. Our job is to learn each of our clients’ distinctive business cultures, goals, and needs, and to provide bespoke advice, custom tailored to meet these needs and goals.
Our experienced trademark attorneys provide the customized advice needed for your business to succeed.
Here are some common questions our attorneys help businesses address:
When do I register?
Even if a trademark or design is not yet in use, a company or individual can register for trademark protection with the United States Patent and Trademark Office (“USPTO”) by filing an intent-to-use application. As long as the company or individual has a bona fide intent to use the mark in commerce, this option is available.
It is generally preferable to seek a federal registration prior to use so that the business’ trademarks and logos are presumed valid, and to establish priority over later-filed and later-used trademarks nationally. If a mark is not federally registered, it only receives protection in the geographic area in which it has actually been used.
What are the steps for registration?
The first step to registering a trademark is choosing a marketable, protectable name and/or logo design. The more unique the mark is, the more protection it is likely to receive. If the mark brings to mind the products or services offered under it, or even describes those goods and services, the trademark would likely receive minimal protection. In the case of a mark that describes the goods and/or services with which it is used, the owner would have to prove that consumers do not view the mark as a mere descriptor, but rather understand that those products/services come from a single source, in order to receive trademark protection.
Once the mark is chosen, it is imperative to make sure that the trademark or logo design is not likely to cause confusion with a trademark or logo design which is already in use. The last thing any business wants is to begin using a mark and establishing goodwill with customers based on that mark only to receive a cease and desist letter from a prior user with superior rights.
A full search of the PTO database, state registrations, domain name registries, the Internet, social media, and other common law sources is advisable before the adoption of a trademark, because it shows that the mark user has engaged in due diligence in choosing the mark, and has not acted in bad faith by using a mark which may have already been in use by another entity.
Our attorneys obtain and analyze trademark clearance searches. Based on the analysis of these searches they provide opinions as to whether the proposed mark is available for use and registration. If the mark is available based on the search, our trademark attorneys provide a written opinion letter discussing the availability of the mark. Such a letter can be very useful in defending against a trademark infringement action because it allows the defense that the mark was chosen in good faith and pursuant to advice from counsel.
If the company or individual desires federal trademark registration, the next step after clearing the mark is to file a trademark application with the USPTO. The application will undergo an extensive examination by a Trademark Examining Attorney at the USPTO. During this examination, the Trademark Examining Attorney evaluates the application for procedural issues, and also determine whether a substantive refusal is warranted based on: a likelihood of confusion with an earlier-filed mark, descriptiveness, deceptiveness, or an association with a particular geographic region, among other things. If there are any procedural issues or substantive grounds that would prevent the application from registering, the Trademark Examining Attorney will issue an Office Action setting forth the grounds for refusal. Applicants have 6 months from the issuance of an Office Action to file a Response addressing each issue raised.
If there are no procedural or substantive issues with an application, or if the Applicant submits amendments and arguments to overcome any issues, then the application will be approved for publication
The application is then published in the Official Gazette. Once a mark is published, anyone who will be injured by the registration of the mark may file an opposition to the registration, or request an extension of time to oppose. If the mark passes through the publication period without opposition, it will be ready for registration once use of the mark in commerce has been proven to the USPTO.
Once the mark is registered, the registrant must continue to use the mark, and will have to file an affidavit to show continued use of the mark between the fifth and sixth year anniversaries of registration. The Registrant must also renew the registration between the ninth and tenth year anniversaries of registration. After the first ten-year period of registration, registrations must be renewed every ten years to remain valid.