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Anchorage, Alaska Businesses Use Cohn Legal for Trademark Services
Cohn Legal started as a branch of an international Intellectual Property firm. Today, Cohn Legal is now its own firm, catering to clients in Anchorage, Alaska. Focusing on intellectual property rights and trademarks, Cohn Legal counsels national and international clients and helps ensure that their intellectual property is protected against infringement.
Top Questions Anchorage Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Anchorage, Alaska, Can I Still Obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Anchorage, Alaska, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a Trademark?
A trademark is a form of intellectual property that provides exclusive rights to the owner over a distinctive word, phrase, logo, design, symbol, or combination thereof used to identify and distinguish goods or services in the marketplace. It serves as a means of branding and helps consumers recognize the source of a particular product or service.
Here are key points regarding trademarks:
1. Identifying Source: A trademark serves as a source identifier, allowing consumers to associate specific qualities, reputation, and goodwill with a particular brand or business.
2. Distinctiveness: To qualify for trademark protection, a mark must be distinctive and not merely descriptive or generic. Distinctiveness can be inherent or acquired through extensive use and recognition in the marketplace.
3. Types of Trademarks:
a. Word Marks: These are trademarks consisting solely of words, letters, numbers, or a combination thereof. Examples include brand names like “Apple” or “Nike.”
b. Design Marks: These trademarks consist of logos, designs, or visual elements that serve as a brand identifier. Examples include the Nike “swoosh” or the McDonald’s golden arches.
c. Slogans and Taglines: Short phrases or slogans that are used to promote or advertise a product or service may also be eligible for trademark protection. Examples include Nike’s “Just Do It” or McDonald’s “I’m Lovin’ It.”
d. Trade Dress: Trade dress refers to the overall appearance and packaging of a product or service that distinguishes it from others in the marketplace. This can include features such as product shape, color schemes, or packaging design.
4. Trademark Rights: Trademark registration grants the owner exclusive rights to use the mark in connection with the specific goods or services covered by the registration. It allows the owner to prevent others from using similar marks that may cause confusion among consumers.
5. Enforcement and Protection: Trademark owners have the right to enforce their trademark against infringers and seek legal remedies such as injunctions, damages, and the destruction of infringing goods.
Should I register a trademark in my state or with the USPTO?
When considering trademark registration, it is generally advisable to register your trademark with the United States Patent and Trademark Office (USPTO) rather than just in your state. While state trademark registration provides some level of protection within the state’s borders, it has several limitations compared to federal registration:
1. Limited Geographic Scope: State registration only offers protection within the specific state where the mark is registered. If you plan to conduct business or expand your operations beyond your state’s borders, state registration will not provide the same level of protection as federal registration.
2. Priority Rights: Federal registration with the USPTO provides nationwide priority rights, meaning that you have exclusive rights to use the mark throughout the entire United States, regardless of whether someone else later starts using a similar mark in another state. This can help prevent others from adopting confusingly similar marks that could potentially infringe upon your rights.
3. Enhanced Legal Protection: Federal registration strengthens your legal position by providing a range of benefits, including the ability to bring a federal lawsuit against infringers, seek statutory damages, and potentially recover attorney’s fees. State registration may not offer the same level of legal protection and remedies.
4. Online Presence: If you plan to establish an online presence or engage in e-commerce, federal registration is particularly important. It provides broader protection and allows you to enforce your rights against online infringers, including those operating in different states.
5. Licensing and Assignment: Federal registration facilitates licensing and assignment opportunities. It adds value to your brand and makes it easier to attract investors, licensees, or business partners who may require federal protection for their investment.
How do I register a federal trademark?
In order to trademark a name, you need to become familiar with the United States Patent and Trademark Office, or USPTO. The first step is submitting a trademark application to them.
The trademark application should include your personal info, a photo of the name or logo or design you want trademarked, what type of product or service you want the trademark for, and a sample of how the logo will be used on packaging, a label, on a flyer etc. You should also indicate if the logo or name is “in commerce” which means you’re using it currently or if you are filing it with “intent to use” which means you’ll be using it in commercial activity in the near future.
An examining attorney at the USPTO will thoroughly evaluate the application and search the USPTO database. If no similar trademarks are found and everything else is in good order, then the examiner will likely approve your application and publish it in the USPTO’s Official Gazette for 30 days. If no oppositions from the public are filed during that time, then your trademark will go to final registration.
Should I hire a Trademark Attorney to help me register my trademark?
While it is not mandatory to hire a trademark attorney to register a trademark, it is highly recommended due to the complexities of the process. Here are some reasons why you should consider hiring a trademark attorney:
1. Expertise and Experience: Trademark attorneys specialize in trademark law and have extensive knowledge and experience in navigating the intricacies of the registration process. They can guide you through each step, ensuring that your application is properly prepared, filed, and managed.
2. Comprehensive Search and Analysis: A trademark attorney will conduct a thorough search of existing trademarks to identify potential conflicts and assess the availability of your proposed mark. This helps minimize the risk of infringing on someone else’s rights and increases the chances of a successful registration.
3. Proper Application Preparation: Trademark applications require careful attention to detail and accuracy. A trademark attorney can assist you in properly drafting the application, including selecting the appropriate trademark classes, providing a clear description of the goods or services, and presenting the mark in a way that maximizes its protectability.
4. Responding to Office Actions: If the USPTO issues an office action, which is a formal letter raising potential issues with your application, a trademark attorney can help craft a strong response that addresses the concerns and increases the likelihood of approval. They can navigate complex legal arguments and present your case effectively.
5. Legal Strategy and Brand Protection: A trademark attorney can develop a comprehensive legal strategy to protect your brand beyond the initial registration. They can advise you on trademark enforcement, licensing, monitoring, and defending your mark against infringement by others.
6. Cost and Time Efficiency: While hiring a trademark attorney involves an investment, it can save you time, money, and potential headaches in the long run. Attorneys are familiar with the process and can help streamline it, minimizing errors and avoiding unnecessary delays or refusals.
7. Maximizing Rights and Benefits: An experienced trademark attorney can provide valuable advice on maximizing the scope of your trademark rights, leveraging trademark protections for business growth, and exploring additional opportunities such as international trademark registration.
Why should I conduct a trademark search before filing my application to the USPTO?
Conducting a comprehensive trademark search before filing your application with the United States Patent and Trademark Office (USPTO) is crucial for several reasons:
1. Avoiding Likelihood of Confusion: The primary purpose of a trademark search is to identify existing trademarks that may conflict with your proposed mark. The USPTO examines trademark applications to determine if there is a likelihood of confusion between the proposed mark and existing marks. If a similar mark is already registered or pending registration, your application may be refused.
2. Minimizing Legal Risks: Failing to conduct a trademark search increases the risk of infringing on someone else’s trademark rights. Infringement can lead to legal disputes, cease-and-desist letters, costly litigation, and potential damages. By conducting a search, you can identify potential conflicts early on and avoid investing time and resources in a mark that may be difficult or impossible to protect.
3. Cost Savings: Conducting a thorough search before filing your application can save you money in the long run. It helps prevent the need for costly rebranding efforts, potential legal disputes, or the abandonment of a mark that infringes on someone else’s rights. Spending on a comprehensive search at the outset is a wise investment compared to the potential expenses associated with trademark disputes.
4. Time Efficiency: By conducting a trademark search before filing, you can assess the availability of your mark and identify potential obstacles in advance. This allows you to make informed decisions and potentially refine your mark or branding strategy if necessary. It saves time and avoids delays caused by responding to office actions or opposition proceedings.
5. Strategic Decision-Making: A trademark search provides valuable information about existing marks in your industry or related fields. It helps you understand the competitive landscape, identify market trends, and make strategic decisions regarding your brand positioning and differentiation. This knowledge can inform your marketing and branding strategies, helping you build a strong and distinctive brand.
When conducting a trademark search, it is recommended to engage a trademark attorney. They have access to specialized databases and search tools, as well as the expertise to interpret search results accurately. A thorough search should cover both registered trademarks and pending applications to assess potential conflicts.
Can I register my trademark before my business is up and running?
Yes, you can register your trademark with the United States Patent and Trademark Office (USPTO) before your business is fully operational or generating revenue. The USPTO allows applicants to file trademark applications on either an “in-use” basis or an “intent-to-use” basis.
1. In-Use Basis: If you are already using your trademark in commerce, you can file a trademark application based on your actual use of the mark. This requires providing evidence of the mark’s use in connection with the specified goods or services. Examples of acceptable evidence include labels, packaging, product photographs, website screenshots, advertising materials, or invoices.
2. Intent-to-Use Basis: If you have not yet used your mark in commerce but have a bona fide intent to use it in the future, you can file an “intent-to-use” (ITU) application. This allows you to secure a priority filing date for your mark while you are still in the planning or development stages of your business. However, it is important to note that you will need to demonstrate actual use of the mark before the USPTO will grant registration.
Here are key points regarding intent-to-use applications:
– Filing an ITU Application: When filing an ITU application, you must provide a sworn statement declaring your bona fide intent to use the mark in commerce. You do not need to submit evidence of use at the time of filing.
– Statement of Use (SOU): Once your ITU application is allowed, you must submit a Statement of Use (SOU) to demonstrate actual use of the mark in commerce. The SOU should include specimens (evidence) showing the mark’s use in connection with the specified goods or services. The USPTO typically provides a deadline to submit the SOU, which can be extended if needed.
– Extensions of Time: If you need additional time to commence use of the mark, you can file extensions of time to submit the SOU, up to a maximum of five extensions. Each extension extends the deadline by six months.
– Actual Use and Registration: Once you have commenced use of the mark in commerce and submitted the required proof of use, the USPTO will issue a registration for your mark. This grants you nationwide protection and exclusive rights to use the mark in connection with the specified goods or services.
Registering your trademark before your business is fully operational can be advantageous. It allows you to secure priority rights and protect your brand while you finalize your business plans and preparations.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain conditions. Trademarks are not limited to logos or individual words but can also include phrases, slogans, or taglines used to promote or identify goods or services. However, not all phrases are eligible for trademark protection. Here are some considerations:
1. Distinctiveness: To qualify for trademark protection, a phrase must be distinctive and not merely descriptive or generic. Distinctiveness is categorized on a spectrum, ranging from inherently distinctive to generic.
– Inherently Distinctive: Phrases that are creative, unique, or fanciful are considered inherently distinctive. These phrases have a stronger chance of being registered as trademarks. Examples include Nike’s “Just Do It” or Apple’s “Think Different.”
– Descriptive or Suggestive: Phrases that describe the goods or services, their characteristics, or their intended purpose may be considered descriptive. These phrases are less likely to be registered unless they have acquired distinctiveness through extensive use and recognition.
– Generic: Generic phrases that refer to the general category or class of goods or services cannot be registered as trademarks. For example, the phrase “Fast Food” cannot be trademarked for fast food restaurants.
2. Secondary Meaning: If a phrase is initially descriptive, it may become eligible for trademark protection if it acquires “secondary meaning” through extensive and exclusive use in commerce. Secondary meaning is when the phrase becomes uniquely associated with a specific source of goods or services in the minds of consumers.
3. Functionality and Ornamental Use: Phrases that are purely functional or merely decorative in nature are generally not eligible for trademark protection. Trademarks are intended to identify and distinguish the source of goods or services rather than serving functional or aesthetic purposes.
When considering trademarking a phrase, it is crucial to conduct a comprehensive search to ensure that the phrase is not already in use or registered by another party in a similar context. Additionally, consulting with a trademark attorney can help assess the distinctiveness of the phrase and guide you through the application process to maximize the chances of successful registration.
Can I trademark a logo?
Yes, you can trademark a logo. In fact, logos are one of the most common forms of trademarks. A logo serves as a visual representation of your brand and can effectively identify and distinguish your goods or services in the marketplace. Here are some important considerations when trademarking a logo:
1. Distinctiveness: Like any other trademark, a logo must be distinctive to qualify for trademark protection. Distinctiveness can be inherent or acquired through extensive use and recognition in the marketplace.
– Inherently Distinctive: Logos that are creative, unique, or fanciful have a higher chance of being considered inherently distinctive and registering as trademarks. Examples include iconic logos like Nike’s “swoosh” or Apple’s bitten apple logo.
– Descriptive or Generic: Logos that are merely descriptive or generic in nature may face challenges in obtaining trademark protection. However, if a logo has acquired distinctiveness through extensive use and has become associated with a specific source of goods or services, it may be eligible for trademark registration.
2. Design Elements: Logos often consist of a combination of design elements, including graphics, stylized text, colors, or other visual elements. The combination of these elements creates a distinctive logo that represents your brand. It is important to ensure that the logo is not confusingly similar to existing logos or trademarks in your industry.
3. Color: Logos can incorporate color, which can be protected as part of the trademark. However, trademark protection for color alone is more challenging. To obtain trademark protection for a color, it must be used in a distinctive and non-functional manner, and consumers must recognize the color as indicating the source of goods or services. Examples of successfully registered color trademarks include Tiffany & Co.’s distinctive blue and UPS’s brown for its delivery trucks.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances, although obtaining trademark protection for a color alone is generally more challenging than for other forms of trademarks. Here are key considerations when seeking to trademark a color:
1. Distinctiveness: To qualify for trademark protection, a color must be inherently distinctive or have acquired distinctiveness through extensive use and recognition in the marketplace. Inherently distinctive colors are rare, and acquiring distinctiveness often requires substantial evidence of consumer recognition and association with a particular source of goods or services.
2. Non-Functional: The color must be used in a non-functional manner, meaning it does not serve a practical purpose or provide a competitive advantage in the industry. If the color is essential to the product or service itself, it may be deemed functional and not eligible for trademark protection. For example, a specific color used on a fruit to indicate ripeness would likely be considered functional.
3. Secondary Meaning: A color that is initially descriptive or generic can acquire distinctiveness and become eligible for trademark protection if it develops secondary meaning. Secondary meaning is established when consumers associate the color with a particular source of goods or services. This usually requires evidence of long and exclusive use in commerce.
4. Trade Dress: Trademark protection for color is often pursued in the context of trade dress, which refers to the overall appearance and packaging of a product. If the color is used in combination with other design elements that create a distinctive overall trade dress, it may be more likely to receive trademark protection. Examples include the distinctive brown color used by UPS for its delivery trucks or the distinctive pink color used by Owens-Corning for fiberglass insulation.
5. Special Considerations: Certain industries, such as pharmaceuticals or medical devices, may have specific regulations or limitations on the use of color trademarks. It is important to consult with a trademark attorney to understand the specific requirements and restrictions in your industry.
Obtaining trademark protection for a color can be challenging, and it often requires substantial evidence and legal arguments to demonstrate distinctiveness. Consulting with a trademark attorney who has experience in color trademark matters is essential to navigate the complex process and maximize the chances of successful registration.
What is a trademark office action?
A trademark office action is a formal correspondence issued by the United States Patent and Trademark Office (USPTO) to communicate issues or objections regarding a trademark application. When an examining attorney at the USPTO reviews an application, they may identify potential grounds for refusal or require additional information or clarification.
The purpose of an office action is to provide the applicant with an opportunity to respond, address the examiner’s concerns, and present arguments or evidence in support of the trademark application. Office actions play a crucial role in the examination process and help ensure that trademarks meet the necessary requirements for registration.
There are two main types of office actions:
1. Non-Final Office Action: This is the initial office action issued by the examining attorney. It identifies any substantive issues with the application, such as conflicts with existing marks, deficiencies in the identification of goods or services, or problems with the specimen or drawing. The non-final office
action provides the applicant with a deadline to respond and address the issues raised.
2. Final Office Action: If the applicant’s response to the non-final office action does not fully resolve the examiner’s concerns or if the examiner believes that the issues are not adequately addressed, a final office action may be issued. The final office action restates the outstanding issues and gives the applicant a final opportunity to respond before the application is potentially abandoned. However, the applicant still has options to pursue further action, such as filing an appeal or requesting reconsideration.
It is important to carefully review and understand the office action, as it outlines the specific objections or requirements that must be addressed. The applicant has a limited time frame to respond, typically six months from the date of the office action. Failure to respond within the specified period can result in the abandonment of the application.
When responding to an office action, it is advisable to consult with a trademark attorney. They can provide guidance on the best course of action, help address the examiner’s concerns effectively, and increase the likelihood of a successful outcome.
How likely is it to receive a trademark application rejection?
The likelihood of receiving a trademark application rejection depends on various factors, including the distinctiveness of the mark, potential conflicts with existing marks, and compliance with the USPTO’s requirements. While it is challenging to provide an exact probability, understanding the common grounds for rejection can give you an idea of potential risks. Here are some common reasons for trademark application rejections:
1. Likelihood of Confusion: The USPTO may refuse registration if a mark is likely to cause confusion with a previously registered mark or a pending application. Factors considered include the similarity of the marks, the relatedness of the goods or services, and the similarity of the trade channels. If the examiner believes that consumers are likely to be confused or mistaken about the source of the goods or services, the mark may be rejected.
2. Descriptiveness or Genericness: Descriptive marks that merely describe the goods, services, or their characteristics are generally not eligible for trademark protection. Similarly, generic terms that refer to the general category of goods or services cannot be registered as trademarks. To be eligible, a mark should be inherently distinctive or have acquired distinctiveness through extensive use.
3. Ornamental Use: If a mark is used purely for decorative or ornamental purposes, it may be refused registration. Trademarks are intended to identify and distinguish the source of goods or services, so if the mark serves a purely aesthetic function, it may be considered unsuitable for trademark protection.
4. Merely Informational: Marks that consist of common or informational phrases without any distinctive elements may be refused registration. To be registrable, a mark should have a unique and distinctive character that sets it apart from common phrases.
5. Immorality or Scandalousness: The USPTO may refuse registration if a mark is deemed immoral, scandalous, or offensive to a significant portion of the public. This includes marks that contain profanity, obscenities, or hate speech.
6. Geographic Descriptiveness: Marks that primarily consist of geographic terms or names may face refusal if they describe the origin, location, or geographic significance of the goods or services. Exceptions can be made if the mark has acquired distinctiveness and is associated with a particular source.
It is important to note that these are general reasons for rejection, and each case is evaluated on its specific merits. By conducting a comprehensive trademark search, you can assess potential risks and address any potential grounds for refusal before filing your application, thus increasing the chances of successful registration.
How can I improve my chances of trademark application approval?
To improve your chances of trademark application approval, it is important to take proactive steps throughout the application process. Here are some key strategies:
1. Conduct a Comprehensive Trademark Search: Before filing your trademark application, conduct a thorough search to identify any existing marks that may conflict with your proposed mark. This includes searching the USPTO’s trademark database, as well as common law sources and online platforms. Identifying potential conflicts beforehand allows you to make informed decisions and avoid submitting applications that are likely to be rejected.
2. Choose a Distinctive and Strong Mark: Select a mark that is inherently distinctive or has acquired distinctiveness through extensive use. Inherently distinctive marks, such as fanciful or coined words, have a stronger chance of receiving approval. Avoid descriptive or generic marks, as they are less likely to be registrable without evidence of acquired distinctiveness.
3. Work with a Trademark Attorney: Hiring a trademark attorney can significantly increase your chances of approval. They have expertise in trademark law, understand the USPTO’s requirements, and can guide you through the application process. A trademark attorney can conduct a comprehensive search, help you develop a strong application, and respond to any office actions or rejections effectively.
4. Provide Accurate and Complete Information: Ensure that all information provided in your application is accurate and complete. This includes the identification of goods or services, the description of the mark, and the specimens or examples of use. Inaccurate or incomplete information can lead to rejection or delays in the examination process.
5. Submit a Well-Drafted Description of Goods or Services: Clearly define the goods or services associated with your mark in the application. Avoid broad or vague descriptions, as they may raise objections from the examiner. Be specific and provide detailed information that accurately reflects the nature and scope of your offerings.
6. Respond Promptly to Office Actions: If you receive an office action from the USPTO, respond promptly within the given timeframe. Carefully review the office action and consult with your trademark attorney to develop a strong response. Address all objections raised by the examiner and provide supporting arguments or evidence when necessary.
7. Maintain Good Communication: Keep your contact information up to date and promptly respond to any communication from the USPTO. Failure to respond to correspondence can lead to the abandonment of your application.
8. Monitor your Trademark: After your mark is registered, monitor for potential infringements or unauthorized uses. Taking proactive measures to protect your mark can help maintain its enforceability and prevent dilution or confusion in the marketplace.
Remember that the trademark application process can be complex, and outcomes may vary depending on the specific circumstances. Working with a trademark attorney ensures that you have expert guidance throughout the process and maximizes your chances of approval.
How can I improve my chances after a trademark application rejection?
Receiving a trademark application rejection can be disheartening, but it doesn’t necessarily mean the end of the road. There are several strategies you can employ to improve your chances of success after a rejection. Here are some steps you can take:
1. Review the Rejection Carefully: Carefully analyze the rejection notice and understand the reasons for refusal. Identify the specific objections raised by the examining attorney and the grounds on which the rejection was based. This will help you develop a targeted response to address the examiner’s concerns effectively.
2. Consult with a Trademark Attorney: Seeking guidance from a trademark attorney is highly recommended after receiving a rejection. An attorney can review your case, assess the viability of overcoming the rejection, and provide valuable insights and strategies to improve your chances. They can help you navigate the complexities of the trademark application process and craft a strong response.
3. Analyze the Examiner’s Arguments: Understand the examiner’s arguments and objections thoroughly. This will allow you to evaluate their validity and develop counterarguments or present additional evidence to support your case. A careful analysis of the examiner’s position can help you identify potential weaknesses and formulate a persuasive response.
4. Provide Supporting Evidence: If the rejection is based on the lack of distinctiveness, likelihood of confusion, or other substantive grounds, gather and present additional evidence to strengthen your case. This may include evidence of acquired distinctiveness, consumer recognition, market surveys, or expert opinions. Providing compelling evidence can help demonstrate that your mark is eligible for registration.
5. Revise or Amend the Application: In some cases, amending or revising the application can address the examiner’s concerns. This may involve narrowing the identification of goods or services, clarifying the description of the mark, or modifying other elements of the application to overcome the objections. Working with a trademark attorney can help you determine the most appropriate amendments to make.
6. Request a Phone Interview or Examiner’s Amendment: In certain situations, requesting a phone interview with the examining attorney or proposing an examiner’s amendment can be beneficial. A phone interview allows for direct communication with the examiner to discuss the issues raised and potentially find a resolution. An examiner’s amendment is a proposed change to the application that the examiner may accept, bypassing the need for a formal response.
7. File an Appeal or Request Reconsideration: If you believe that the examiner’s decision was incorrect, you have the option to file an appeal or request reconsideration. An appeal involves presenting your case to the Trademark Trial and Appeal Board (TTAB) within a specified timeframe. Requesting reconsideration involves submitting a persuasive response to the examiner, addressing their objections and providing additional arguments or evidence.
8. Continuously Monitor the Process: Stay informed about the status of your application and respond promptly to any communication from the USPTO. Failure to meet deadlines or engage in the process can result in the abandonment of your application.
How likely is it to succeed in overturning a second trademark rejection?
Overturning a second trademark rejection can be more challenging than responding to the initial rejection. While it is difficult to provide an exact likelihood of success, understanding the factors at play can help you assess the situation. Here are some key considerations:
1. Strength of Arguments and Evidence: The strength of your arguments and supporting evidence will significantly impact your chances of success. It is important to carefully review the examiner’s objections, address them effectively, and present compelling arguments or evidence to support your position. If you can present new evidence or persuasive arguments that were not previously considered, it may improve your chances of success.
2. Examiner’s Discretion: The examining attorney has a certain level of discretion when reviewing trademark applications. The same examiner who issued the initial rejection may continue to handle your case during subsequent reviews. Their interpretation of the evidence and application of trademark law can influence the outcome. However, it is important to note that examiners are bound by the USPTO’s guidelines and precedents, and their decisions can be challenged through appeal or reconsideration.
3. Additional Information: In some cases, a second rejection may result from the need for further clarification or additional information. If the examiner’s objections are based on specific deficiencies in the application, addressing these issues thoroughly in your response can increase your chances of success. Providing clear and comprehensive information that resolves any lingering doubts or concerns may sway the examiner’s decision.
4. Legal Arguments and Precedents: If the second rejection involves substantive legal issues, such as a likelihood of confusion or inherent distinctiveness, legal arguments and precedents become critical. Analyzing relevant case law and precedent can help identify favorable arguments to support your case. A well-crafted legal argument backed by sound reasoning and precedents may improve your chances of overturning the rejection.
5. Professional Guidance: Working with a trademark attorney is highly recommended when facing a second rejection. They can assess the strengths and weaknesses of your case, help you understand the examiner’s position, and develop a strong response strategy. Attorneys experienced in trademark law can provide valuable insights, navigate the complexities of the process, and maximize your chances of success.
Ultimately, the success of overturning a second rejection depends on the specific circumstances of your case and the strength of your arguments and evidence. By carefully evaluating the examiner’s objections, working with a trademark attorney, and presenting persuasive arguments and evidence, you can improve your chances of a favorable outcome.
Can I sell my products if I don’t have a registered trademark?
Yes, you can sell your products without having a registered trademark. Trademark registration is not a requirement for conducting business or selling goods or services. Trademarks serve to protect your brand identity and prevent others from using similar marks in a way that may cause confusion or dilute your brand’s distinctiveness. While having a registered trademark provides additional legal protection and advantages, it is not a prerequisite for selling products.
By using a trademark in commerce, you acquire certain common law rights. These rights arise from your actual use of the mark in connection with specific goods or services. Common law rights provide some level of protection within the geographic area where you are using the mark, even without registration.
However, relying solely on common law rights has limitations. Common law protection is generally limited to the specific geographic area where you are using the mark, which can make it challenging to enforce your rights in other regions. It also places the burden of proof on you to establish your ownership and prior use of the mark in case of disputes. This can be a complex and time-consuming process, requiring evidence and documentation to demonstrate your rights.
Registering your trademark with the USPTO offers several advantages:
1. Nationwide Protection: Trademark registration grants you exclusive rights to use the mark nationwide, regardless of whether you have used it in all states. This broader scope of protection helps prevent others from using similar marks that may cause confusion among consumers.
2. Legal Presumption of Ownership: Registering your trademark creates a legal presumption of ownership and validity, making it easier to enforce your rights and protect your brand. It also provides a legal basis for legal action against infringers.
3. Use of ® Symbol: Registered trademarks can use the ® symbol, signaling to others that the mark is protected and registered with the USPTO. This symbol can deter potential infringers and reinforce your brand’s credibility and value.
4. Enhanced Remedies: With a registered trademark, you have access to enhanced remedies, including statutory damages, attorneys’ fees, and the possibility of recovering profits from infringers. These remedies provide stronger incentives for others to respect your rights and can be essential in enforcement efforts.
5. Trademark Licensing and Brand Expansion: Registering your trademark facilitates licensing opportunities, allowing you to grant licenses to third parties for the use of your mark. It also paves the way for potential brand expansion, as a registered trademark enhances the value and marketability of your brand.
While registration offers these advantages, it is important to note that the decision to register your trademark depends on your specific business goals, budget, and the importance of brand protection.
How long does a trademark last?
Trademarks can last indefinitely as long as they are properly maintained and renewed. However, the duration of trademark rights varies depending on the type of mark and the jurisdiction in which it is registered. Here are the general guidelines for trademark duration in the United States:
1. Common Law Trademark Rights: Common law trademark rights arise from the actual use of a mark in commerce. As long as you continue to use the mark in connection with specific goods or services and maintain your rights, common law protection can last indefinitely. Common law rights are limited to the geographic area where you are actively using the mark.
2. Federal Trademark Registration: In the United States, a federal trademark registration obtained through the United States Patent and Trademark Office (USPTO) provides more extensive protection and has a duration of ten years. However, the registration can be renewed indefinitely, in ten-year increments, as long as the mark remains in use and renewal requirements are met.
3. Affidavit of Continued Use and Renewal: To maintain a federal trademark registration, you must file an Affidavit of Continued Use or Excusable Nonuse between the fifth and sixth year after registration. This affidavit confirms that the mark is still in use in connection with the registered goods or services. Failure to file this affidavit can result in the cancellation of the registration. Additionally, you must file subsequent renewal applications every ten years, providing evidence of continued use of the mark.
It’s important to note that the duration of trademark rights can vary in other countries. If you plan to expand your business internationally, it is crucial to understand the specific trademark laws and renewal requirements of each jurisdiction in which you seek protection.
To ensure the continued validity of your trademark, it is essential to actively use the mark in commerce, monitor for potential infringements, and comply with renewal requirements. Failing to maintain and renew your trademark can result in its cancellation or loss of protection. Consulting with a trademark attorney can provide guidance on maintaining and protecting your mark over time.
What’s the difference between a live trademark and a dead trademark?
In the context of trademark records, the terms “live trademark” and “dead trademark” refer to the current status of a registered trademark. Here’s an explanation of the differences between these terms:
1. Live Trademark: A live trademark refers to a registered trademark that is currently active and in use. It indicates that the mark is still valid and protected. Live trademarks are listed in the trademark database with their registration number, registration date, owner information, and details of the goods or services associated with the mark. These trademarks enjoy legal protection, and the owners have exclusive rights to use them in connection with the specified goods or services.
2. Dead Trademark: A dead trademark refers to a registered trademark that is no longer active or protected. This status can arise due to various reasons, such as abandonment, cancellation, or expiration. Dead trademarks are no longer enforceable, and the owners lose their exclusive rights to use the mark. They are removed from the trademark database or marked as “dead.” Dead trademarks can be listed with different status codes depending on the specific reason for their cancellation or abandonment.
The status of a trademark can change over time based on the actions of the trademark owner or decisions made by the United States Patent and Trademark Office (USPTO). For example, a trademark may become dead if the owner fails to file required maintenance documents, such as an Affidavit of Continued Use or Excusable Nonuse, or fails to renew the registration within the specified timeframes. Trademarks can also become dead if they are canceled or abandoned due to a successful opposition or a determination of invalidity.
It’s important to note that the term “dead trademark” does not necessarily mean that the mark is available for use by others. In some cases, a dead trademark
may still have common law rights or be subject to other legal restrictions. Before using a trademark that appears to be dead, it is advisable to consult with a trademark attorney to understand the potential risks and legal implications.
What is a “specimen” and when do I need one?
In the context of trademark registration, a “specimen” refers to a sample or evidence submitted to the United States Patent and Trademark Office (USPTO) to demonstrate how you are using your mark in commerce. The purpose of submitting a specimen is to show that the mark is being used as a source identifier for the specified goods or services.
When filing a trademark application with the USPTO, you are required to provide a specimen if your mark is already in use in commerce or if you are filing under the basis of “use in commerce” or “intent to use.” The type of specimen required depends on whether your mark is associated with goods or services.
If your mark is used to identify tangible goods, acceptable specimens may include:
1. Labels or Tags: A label or tag affixed to the goods or their packaging, displaying the mark in actual use.
2. Packaging: The packaging itself, showing the mark in use. This can include boxes, containers, wrappers, or any other packaging material that bears the mark.
3. Product Displays: Photographs or digital images showing the mark displayed on product shelves, showcases, or any other point of sale display.
4. Product Catalogs or Brochures: Printed or online catalogs, brochures, or similar marketing materials displaying the mark in connection with the goods.
5. Website Images: Screenshots or printouts of web pages displaying the mark in use on a website where the goods are offered for sale.
If your mark is used to identify services, acceptable specimens may include:
1. Advertising Materials: Brochures, flyers, newspaper or magazine advertisements, or other printed materials promoting the services and displaying the mark.
2. Website Screenshots: Printouts or screenshots of web pages featuring the mark in connection with the services offered.
3. Invoices or Letterhead: Invoices, receipts, letterhead, or other documents showing the mark in use in connection with the services rendered.
It’s important to choose specimens that clearly demonstrate how the mark is used as a source identifier for the associated goods or services. The specimens should display the mark prominently and be representative of the actual use in commerce.
Providing appropriate specimens is crucial for a successful trademark registration. Failure to submit acceptable specimens can result in a refusal or delay in the application process. Consulting with a trademark attorney can help ensure that you submit the correct specimens and meet the USPTO’s requirements.
What is an Intent to Use application?
An Intent to Use (ITU) application refers to a type of trademark application filed with the United States Patent and Trademark Office (USPTO) when the applicant has not yet commenced use of the mark in commerce but has a bona fide intention to do so in the future. The ITU application allows applicants to secure a priority filing date for their mark before it is actually used in commerce.
Here’s an overview of the key aspects of an Intent to Use application:
1. Bona Fide Intention: To file an ITU application, the applicant must have a genuine intention to use the mark in commerce. This means that there must be a concrete plan to use the mark on the specified goods or services in the near future. The USPTO requires applicants to sign a declaration affirming this intention.
2. Specimen Requirement: Unlike a traditional use-based application, an ITU application does not require immediate submission of a specimen demonstrating use of the mark. However, a specimen must be provided before the USPTO will issue a registration certificate. This requirement ensures that the mark is actually used in commerce and serves as a source identifier.
3. Notice of Allowance: After the ITU application is filed, the USPTO will review it for compliance. If all requirements are met, the USPTO will issue a Notice of Allowance, which signifies that the mark is allowed for registration but is not yet registered. The applicant then has six months to submit a statement of use, along with the required specimen, or request additional time for filing.
4. Statement of Use: The statement of use is a document filed with the USPTO to demonstrate that the mark has been used in commerce. It includes a specimen showing the mark’s use and details of the goods or services associated with the mark. The statement of use must be filed within the designated timeframe to proceed with the registration process.
5. Extension Requests: If the applicant is unable to provide a statement of use within the initial six-month period, they can request extensions of time to file the statement of use. Each extension allows an additional six months, and a maximum of five extensions can be requested, resulting in a total of 36 months from the issuance of the Notice of Allowance.
6. Examination and Registration: Once the USPTO approves the statement of use, the mark will proceed to examination, and if no issues arise, it will be registered and a registration certificate will be issued. At this stage, the mark becomes a registered trademark, provided all registration fees are paid.
Filing an ITU application can be advantageous for applicants who have a genuine intention to use a mark but have not yet launched their goods or services in commerce. It allows for early priority filing, securing the applicant’s rights and establishing a filing date. However, it is important to diligently follow up with the USPTO’s requirements and deadlines to maintain the application’s progress and achieve registration.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on several factors, including the country or region in which you are applying for a trademark. However, I can provide you with a general overview of the timeline involved in the trademark application process.
1. Preliminary Research: Before filing a trademark application, it is advisable to conduct a comprehensive search to ensure your proposed trademark is not already registered or being used by someone else. This step can be done independently or with the assistance of a trademark attorney. The duration of this research phase can vary depending on the complexity of the search and the availability of resources.
2. Filing the Application: Once you have conducted the preliminary research and are confident in proceeding, you can file the trademark application with the relevant trademark office. The application typically includes details about the mark, its intended use, and the classes of goods or services it will cover. The duration for completing and submitting the application can range from a few hours to a few weeks, depending on your preparation and the requirements of the trademark office.
3. Examination: After you submit the trademark application, it undergoes a formal examination by the trademark office. During this phase, the office checks for compliance with formalities, reviews the distinctiveness of the mark, and assesses any potential conflicts with existing trademarks. The examination period can take several months to a year or more, depending on the backlog of applications and the efficiency of the trademark office.
4. Publication and Opposition: If your trademark application passes the examination, it is usually published in an official gazette or trademark journal to provide an opportunity for third parties to oppose the registration of your mark. The duration of this publication period varies by jurisdiction but can range from 30 days to several months. If no oppositions are filed within the specified timeframe, your application can proceed to the next step.
5. Registration and Issuance: Once the opposition period has ended, and no valid oppositions have been raised, your trademark application moves towards registration. The trademark office will issue a registration certificate or a notice of allowance, depending on the jurisdiction. The time taken to receive the registration certificate can vary from a few weeks to several months, depending on the administrative processes of the trademark office.
Overall, the trademark application process can take anywhere from several months to a few years, depending on the factors mentioned above. It’s important to note that this timeline is a general estimate and can vary significantly based on the specific circumstances and the country or region in which you are applying for a trademark. It is advisable to consult with a qualified trademark attorney or seek guidance from the relevant trademark office for accurate information regarding your specific situation.
Can I request an expedited approval of my trademark application?
Yes, in some cases, it is possible to request expedited or accelerated processing of your trademark registration. However, the availability and criteria for expedited approval can vary depending on the country or region where you are applying for a trademark. Here are a few common scenarios where expedited processing may be available:
1. Fast-Track Programs: Some trademark offices offer fast-track or accelerated examination programs for certain types of trademarks. These programs are typically designed to expedite the examination and registration process for trademarks that meet specific criteria, such as trademarks related to emerging technologies, green technologies, or trademarks filed by small businesses or startups. These programs aim to support innovation and economic growth by providing quicker registration for certain types of marks.
2. Prioritized Examination: In certain jurisdictions, you may have the option to request prioritized examination of your trademark application by paying an additional fee. This prioritized examination can result in a faster review and decision on your application compared to the standard processing times.
3. National or Regional Programs: Some countries or regional trademark systems have specific programs or initiatives in place to expedite the registration of trademarks. These programs may be applicable to certain industries, geographical areas, or trademark types.
It’s important to note that expedited processing is not guaranteed and may be subject to additional fees or specific eligibility requirements set by the trademark office. The availability and specific procedures for requesting expedited approval can vary, so it is advisable to consult with a qualified trademark attorney or contact the relevant trademark office for guidance on the options available in your jurisdiction.
Remember that even with expedited processing, the trademark registration process may still take some time, although it is generally faster than the standard processing times.
Why Trademark Registration Matters for Anchorage Businesses
If you’re in the Anchorage area and you’re ready to start a business of your own, you likely have a lot of questions: Where should I set up shop? What type of marketing plan is most effective? Do I need a registered trademark?
All of those questions are important, but the question around trademark registration may be the most important as you start your new venture. Neglecting to register your trademark with the USPTO could have devastating consequences.
Imagine the following: Suzette is an excellent baker and loves tea. She wants to open a little tea shop in downtown Anchorage where she can serve her delectable pastries, sandwiches, salads, and a wide variety of tea. She thinks her tea café would be an excellent addition to the shops and restaurants that are already there.
She calls her shop Tea for Two and spends the next few months renovating her store. She invests in an expensive custom-made sign for the front. She also orders menus, plates, tea cups, and aprons with her logo on everything. Finally, she populates her social media accounts with pictures of the café and advertises in local papers.
She has heard of trademark registration but doesn’t think that’s something small businesses like hers need to worry about. She figures she can inquire about it later on.
It’s a year after her grand opening and Tea for Two is a hit with tourists and locals alike. Suzette is thrilled with her success, but she’s about to get some devastating news. She receives a cease-and-desist letter from an online tea retailer called Tea for Two. They own the trademark to the name so they are well within their rights to ask Suzette to close her shop and rebrand her business.
Suzette can contact an attorney and fight back or spend time and money rebranding. Neither option is ideal. Suzette could have avoided all of this hassle if she registered her mark right from the start.
When it comes to trademark registration, there’s no such thing as a business that’s too big or too small. If you have a business that you believe in, then you need to pursue trademark registration.
If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
* *Cohn Legal, PLLC is not located in Anchorage and yet it can assist businesses from Alaska in registering a federal Trademark because trademarks are governed under federal law.
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