Trademark Services

Many people do not realize that trademark rights in the US are based on use. As soon as you begin using a trademark to indicate source of your goods and/or services, you typically begin to create legal trademark rights. Using the TM or SM symbol adjacent to the trademark that represents your goods and/or services is an effective way to let consumers and competitors know you’re claiming certain exclusive rights in the mark. It’s important to note that you can only use the ® symbol (Federally Registered Trademark) if you hold an active federal trademark registration issued by the United States Patent & Trademark Office (USPTO). Even though you are not required to hold a trademark registration issued by the USPTO to claim trademark rights, a USPTO trademark registration provides many benefits, including nationwide (and all US territories) trademark protection.  A USPTO trademark registration also creates a legal presumption that you own the trademark, how the exclusive right to use the trademark, and can resolve disputes before the Trademark Trial and Appeal Board (TTAB) and federal courts concerning the registered trademark.  A USPTO trademark registration also provides the basis for applying for trademark protection in certain foreign countries.

The following is a brief summary of the legal services our trademark attorneys handle.  It is important to note that the following list of legal services is only a list of trademark services requested most often.  If you have a federal trademark matter not listed below, please do not hesitate to contact us to see how we may assist.  If we cannot handle your trademark matter, it’s likely we can refer you to another intellectual property law firm that can.

Trademark Search & Federal Trademark Registration

It is important to conduct a trademark search before applying for trademark registration with the USPTO because it helps to ensure that the proposed trademark is not already in use by another party. If a similar trademark is already in use, the application may be rejected, and the applicant may risk infringing on the rights of the existing trademark holder. Additionally, conducting a trademark search can help the applicant to identify any potential legal issues or conflicts that may arise with the proposed trademark, such as the likelihood of confusion with another mark or descriptiveness of a term, which can help the applicant to make a more informed decision about whether to proceed with the trademark application.

If a trademark search is conducted and it is determined the that your proposed trademark is available for use in the marketplace, you should proceed to register the trademark with the USPTO as quickly as possible. There are several legal benefits to having a federal trademark registration issued by the USPTO, including:

• The ability to enroll in brand registry programs offered by most of the premier online retail platforms and web application platforms, such as Amazon, eBay, Walmart, Etsy, Apple, and Google, among others.
• The ability to apply for a Gmail authenticated brand logo.
• The ability to request a Verified Mark Certificate (VMC)
• Legal presumption of ownership and exclusive right to use the mark nationwide in connection with the goods or services listed in the registration.
• The ability to bring a legal action concerning the mark before the TTAB and in federal court.
• The ability to recover profits, damages, and attorney’s fees in a successful trademark infringement lawsuit.
• The ability to file a trademark opposition or trademark cancellation proceedings in the USPTO.
• The ability to file a complaint with the Federal Trade Commission (FTC) or seek relief through the courts under the Lanham Act for false advertising.
• The ability to record the registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
• The use of the registered trademark symbol (®).
• The ability to use the trademark registration as the basis for obtaining registration in foreign countries.

Overall, owning a federal trademark registration from the USPTO provides a legal framework for protecting and enforcing your trademark rights, and can give you a strategic advantage in the marketplace.  If you or your business would like our trademarks attorneys to perform a trademark search of your proposed mark to determine if it is available for trademark registration with the USPTO, we can assist!

Trademark Clearance Search

A trademark clearance search is an investigation conducted by our law firm to determine whether there are any existing (e.g., pending or registered) trademarks that may conflict with your proposed trademark. The purpose of the search is to identify any trademarks that are already registered or pending registration with the United States Patent and Trademark Office (USPTO) or state trademark offices (and US territory trademark offices), and sometimes to identify any common law marks that are in use in commerce, that may be similar or identical to your proposed mark.

The trademark clearance search typically includes a search of the USPTO’s database of registered and pending trademarks, as well as a search of all 50 state trademark databases (and US territory trademark databases), and, if required, common law sources such as business directories, internet search engines, and other relevant sources. The search results are then analyzed by our trademark attorneys to identify any potential conflicts, and a detailed report of the trademark search results is prepared and provided to you.

The trademark clearance search is an important step in the trademark registration process, as it can help identify any potential obstacles to registration and can help you avoid costly legal disputes later on. It also helps ensure the proposed trademark is available for use, and if not, what other options you may have moving forward. If you or your business would like our trademarks attorneys to perform a trademark search of your proposed mark to determine if it is available for use in the marketplace, we can assist!

USPTO Trademark Office Actions

A USPTO trademark office action is a formal letter issued by the United States Patent and Trademark Office (USPTO) to the applicant or their trademark attorney, outlining any legal issues or objections to a trademark application. These issues may include a likelihood of confusion with an existing trademark, a lack of distinctiveness, or failure to meet other requirements under Trademark Law. The USPTO office action will also explain the steps that need to be taken in order to overcome the legal issues or objections and move forward with the trademark registration process.

The most common reasons for a USPTO trademark office action to be issued by an examining attorney are:

• Likelihood of confusion with an existing trademark: This occurs when the examining attorney believes that the applied-for mark is too similar to an existing mark, and may cause confusion among consumers.
• Lack of distinctiveness: The applied-for mark is considered generic or descriptive and does not function as a trademark to identify and distinguish the applicant’s goods or services.
• Failure to meet other requirements: This includes issues with the specimen of use, the identification of goods and services, and the drawing of the mark.
• Descriptive or deceptively misdescriptive mark: The mark describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services.
• Ornamentation: The mark is used as a trade dress or packaging and does not function as a trademark.
• Misdescriptive mark: The mark misrepresents the nature, characteristics, qualities or geographic origin of the goods or services.
• Geographic designations: The mark is used to primarily to describe the location where the product is made or where the service is performed,.

Upon receipt of a USPTO office action, a trademark applicant must respond within the specified time frame, typically three (3) months for pre-registration office actions, to avoid abandonment of their trademark application. The applicant should carefully review the office action to understand the reasons for the trademark refusal and address any legal issues or objections raised by the examining attorney. This may involve amending the application or providing additional evidence to support their trademark claim. It is also possible to appeal the office action if the applicant believes it to be in error. It is generally recommended that the applicant consult with a trademark attorney to ensure a proper office action response is filed.  If you have received an office action, please contact us to see how we can assist!

It is important to note that these are common reasons, but not an exhaustive list, there are many other reasons that the office action may be issued for.

Trademark Monitoring

Trademark monitoring is the process of regularly checking for potential trademark infringements or unauthorized use of a trademark by third parties. This can help the trademark owner to take timely action to protect their trademark rights. There are several key steps in the trademark monitoring process:

• Identify the trademarks to be monitored: This includes the registered trademarks and any pending applications owned by the company.
• Set up a monitoring program: This includes deciding how frequently to check for potential infringements and where to look for them (e.g. trademark databases, online marketplaces, social media, search engines, etc.)
• Conduct regular searches: This includes searching for potential infringements in all 50 state trademark databases, US territory trademark databases, USPTO federal trademark database, and common law databases, and also searching online marketplaces, news articles, social media, etc., if necessary.
• Evaluate the results of the search: This includes determining whether any potential infringements have occurred, and if so, whether they are likely to cause confusion among consumers or dilute the registered trademark.
• Take appropriate legal action: If a trademark infringement is found, the trademark owner can take appropriate legal action, such as sending a cease and desist letter or filing a lawsuit to enforce their trademark rights.

If you have a trademark portfolio and need to develop a trademark monitoring program, our trademark attorneys can assist. Regular monitoring is important because it can help the trademark owner detect and prevent potential infringement early, which can save time and money in the long run.

Monitoring registered trademarks is important for several reasons:

• Protecting your brand: Trademarks are a valuable asset for a business and help to protect the company’s reputation and the value of its goods and services. Monitoring trademarks can help to ensure that the brand is not being diluted or tarnished by unauthorized use.
• Detecting infringement: Regular monitoring can help to detect potential infringement by third parties early, which can make it easier and less expensive to take action.
• Avoiding legal challenges: If a trademark owner does not take action to enforce their rights, they may be seen as “sitting on their rights” and may have a harder time enforcing them in court. Monitoring trademarks can help to prevent this from happening.
• Staying competitive: Monitoring trademarks can help a business stay informed about what other companies are doing in the marketplace, which can be important for making strategic business decisions.
• Fulfilling legal requirement: Monitoring trademarks is also a legal requirement, owners need to prove that they are actively using their trademark and that they are able to enforce their rights against any infringement.

In summary, monitoring registered trademarks is crucial for protecting a business’s valuable assets, ensuring its reputation, and staying competitive in the marketplace, as well as fulfilling the legal requirement to actively police for infringing uses.

Trademark Assignment

There are several circumstances where a trademark owner may be required to assign their trademark:

• Sale of a business: If a business is sold, the trademark is often included as part of the sale and will need to be assigned to the new owner.
• Merger or acquisition: If a company is acquired or merged with another company, the trademark may need to be assigned to the new entity.
• Licensing: If a trademark owner wants to allow another party to use their trademark (such as in a franchisor relationship), they will typically need to assign the trademark to the licensee.
• Secured lending: In some cases, a trademark owner may use their trademark as collateral for a loan. If they default on the loan, the lender may require the trademark to be assigned to them as part of the foreclosure process.
• Legal disputes: If a legal dispute arises over the ownership of a trademark, a court may order the trademark to be assigned to one of the parties as part of a settlement or judgement.
• Legal requirement: In some cases, government bodies may require the assignment of trademark as a condition for certain licenses or permits.

It’s important to note that an assignment of a trademark must be in writing, and it should be recorded with the relevant trademark office to ensure that the assignment is valid and enforceable. It’s also recommended to consult a trademark attorney to ensure that the assignment process is done correctly and that all legal requirements are met.  If you have a trademark assignment matter, our trademark attorneys can assist!