Trademarks are words, symbols, logos, pictures, or packaging used to identify the source or origin of a product or service. In the United States, trademark protection arises from use of a mark in commerce; additional protections are afforded by registering a mark with the United States Patent and Trademark Office (“USPTO”). An application for registration with the USPTO may be based on actual use of a mark in commerce or a bona fide intention to use the mark in commerce at a later date.
Trademark Counseling, Clearance and Litigation – ™
Schiffrin & Longo counsels a wide variety of clients on all issues trademark owners confront in the course of their business. The first step in our counseling process is to quickly become familiar with the client’s business, its goals, and its place in the market. Doing so enables us to provide concrete, client-specific advice on trademark and brand protection.
It is extremely important to determine trademark rights prior to adopting and using a business name, trademark, slogan, logo, or other design. This is because prior users may object to the use of the same or confusingly similar mark through a cease and desist letter, opposition proceeding, or federal district court litigation. The better approach is to properly clear a mark before adoption and use.
At the clearance stage of the trademark process, our attorneys evaluate the availability of marks for adoption and use, analyze search reports, discuss potential registrability and use issues, and provide written clearance opinions.
After evaluating the availability of a trademark or service mark, the firm provides each client with practical advice regarding the adoption of the prospective mark. This may include the filing of a trademark application with the United States Patent and Trademark Office, evaluating whether protection should be obtained abroad, and advising as to the best way to obtain that protection. The firm further advises clients on all potential enforcement and litigation issues that may arise.
Trademark Prosecution and Registration – ®
The firm is well versed in preparing and prosecuting trademark and service mark applications for marks in all fields and International Classes. Our attorneys have extensive knowledge of the practices and procedures of the United States Patent and Trademark Office (“USPTO”) and have successfully obtained federal trademark registration for hundreds of marks throughout the course of their careers. Additionally, in his capacity as a former Trademark Examining Attorney with the USPTO, Mr. Schiffrin has reviewed thousands of trademark applications, giving him great insight into the inner workings of the USPTO examination process.
In addition to drafting and filing applications for registration, our attorneys will take all actions necessary to achieve registration, such as responding to USPTO refusals and requirements and preparing all required documentation.
Trademark Trial and Appeal Board Proceedings
Our firm handles all types of proceedings before the Trademark Trial and Appeal Board (“TTAB”). If a mark has been refused registration, our firm can handle the ex parte appeal to argue against a final refusal of the application. Our attorneys also have extensive experience handling inter partes proceedings before the TTAB, including oppositions to an application and defending an application that has been opposed by a third party. Our attorneys are also well versed in cancellation proceedings, whether the client is seeking to cancel a registration or defend against a cancellation action brought by a third party.
Choosing Not To Register a Trademark
Of course, a company or individual may choose not to register its mark and instead rely on its use to establish common law trademark rights in the mark. Those rights will establish priority for the owner over later-filed marks and later-used marks, but only in the geographic area in which the mark is used. Because of this limitation, it is always preferable to seek federal registration. Federal registration establishes nationwide priority in a mark as of the filing date of the application and a federal registration is presumed to be a valid trademark. In addition, after five years of federal registration, the mark can become incontestable to attack, assuming it has not been abandoned, procured by fraud, or become generic, among other reasons.