Aurora, Colorado Businesses Use Cohn Legal for Trademark Services
Cohn Legal is a Trademark legal firm. Some of the biggest technology companies in the world depended on Cohn & Associates for legal services. Today, Cohn Legal is focused on providing clients in Aurora, Colorado, across the United States, and around the world with legal counsel and guidance on trademark and intellectual property rights and protections.
Top Questions Aurora Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Aurora, Colorado, 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 Aurora, Colorado, 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 helps distinguish and identify the source of goods or services in the marketplace. It can take the form of a word, phrase, symbol, design, or combination thereof, and serves as a unique identifier for a business or organization. Trademarks are important for establishing brand identity and building consumer recognition and trust.
When a trademark is registered, the owner gains exclusive rights to use that mark in connection with specific goods or services. This exclusivity allows the owner to prevent others from using a similar mark that may cause confusion among consumers. By protecting their trademark, businesses can maintain their brand reputation and prevent unauthorized use or imitation by competitors.
Trademarks play a crucial role in commerce by enabling consumers to make informed purchasing decisions. When consumers see a familiar trademark, they associate it with certain qualities, characteristics, or experiences they have come to expect from that brand. Trademarks can evoke emotions, convey messages, and create a distinct identity that sets a business apart from its competitors.
In addition to distinguishing goods or services, trademarks can also act as valuable assets for businesses. They can be licensed or assigned to other parties, allowing for collaborations or expansion into new markets. A strong trademark can become synonymous with quality, innovation, and customer loyalty, contributing to the overall value of a business.
To summarize, a trademark is a unique identifier that helps consumers recognize and differentiate the goods or services of one business from another. It represents the goodwill and reputation associated with a brand and provides legal protection to the owner against unauthorized use or infringement.
Should I register a trademark in my state or with the USPTO?
It is generally recommended to register a trademark with the United States Patent and Trademark Office (USPTO) rather than at the state level. While state trademark registration provides some level of protection within that specific state, it has limitations in terms of geographic scope.
Registering your trademark with the USPTO offers several advantages and comprehensive protection for your brand nationwide. Here are some key reasons to consider USPTO registration:
1. Nationwide Protection: A federal trademark registration provides exclusive rights to use your mark throughout the entire United States, regardless of state boundaries. This is especially important if you plan to expand your business beyond your current state or engage in e-commerce or online activities that reach customers across state lines.
2. Legal Presumption of Ownership: A federal registration creates a legal presumption of ownership and validity of your trademark, making it easier to enforce your rights in case of infringement. It puts others on notice that you have exclusive rights to the mark and can act as a deterrent against potential infringers.
3. Ability to Use the ® Symbol: Registered trademarks are entitled to use the ® symbol, which provides notice to the public that your mark is federally registered. This symbol can enhance your brand’s credibility and deter others from using a similar mark.
4. Federal Court Jurisdiction: With a federally registered trademark, you can bring a lawsuit for trademark infringement in federal court, which often provides more robust legal remedies and a wider range of damages.
5. Enhanced Trademark Search: The USPTO maintains a comprehensive database of registered trademarks, making it easier to conduct thorough searches before adopting and registering your mark. This helps you identify potential conflicts and avoid infringing on existing trademarks.
6. International Benefits: A USPTO registration can also facilitate protection of your trademark in other countries through international treaties and agreements, simplifying the process if you plan to expand your business globally.
While state registration may be suitable for businesses with purely local operations and limited ambitions, a federal trademark registration with the USPTO offers broader and more effective protection.
Should I hire a Trademark Attorney to help me register my trademark?
Hiring a Trademark Attorney to assist you with registering your trademark is highly recommended. While it is possible to navigate the trademark registration process on your own, an experienced attorney specializing in trademark law can provide valuable expertise and guidance throughout the process, increasing your chances of a successful registration. Here are some reasons why hiring a Trademark Attorney is beneficial:
1. Legal Expertise: Trademark law can be complex, and an attorney who specializes in this area has in-depth knowledge and understanding of the legal requirements and intricacies involved in the trademark registration process. They can provide you with accurate and up-to-date advice on the best strategies for protecting your trademark rights.
2. Comprehensive Search: Conducting a thorough trademark search is crucial before filing your application to ensure your desired mark is available and doesn’t infringe upon existing trademarks. Trademark Attorneys have access to advanced search tools and databases that can uncover potential conflicts more effectively than basic online searches. They can analyze search results, assess potential risks, and advise you on the availability and registrability of your mark.
3. Application Preparation and Filing: Trademark Attorneys have experience in preparing and filing trademark applications correctly. They will ensure that all required information, documents, and specimens are accurately provided, increasing the likelihood of your application being accepted. They can also help you choose the appropriate trademark classes that best protect your goods or services.
4. Responding to Office Actions: If the USPTO issues an office action, which is a formal response or objection to your trademark application, an attorney can help you understand the issues raised and craft a strong response. They can navigate complex legal arguments, draft persuasive arguments, and provide the necessary evidence or legal authorities to overcome objections.
5. Trademark Portfolio Management: A Trademark Attorney can assist you in managing and protecting your trademark portfolio. They can advise on strategies to enforce and maintain your trademark rights, monitor potential infringements, and take appropriate legal actions to defend your brand.
6. Legal Representation: In case of trademark disputes or litigation, having a Trademark Attorney by your side is invaluable. They can represent you in negotiations, settlement discussions, or legal proceedings, ensuring that your rights are protected and advocating for your best interests.
Overall, engaging a Trademark Attorney not only streamlines the registration process but also helps safeguard your brand and trademark rights. They offer expertise, guidance, and legal representation to navigate the complexities of trademark law and maximize the chances of a successful registration.
Why should I conduct a trademark search before filing my application to the USPTO?
Conducting a trademark search before filing your application with the United States Patent and Trademark Office (USPTO) is essential for several important reasons. Here are the key reasons why conducting a trademark search is highly recommended:
1. Avoiding Likelihood of Confusion: The primary purpose of a trademark search is to identify existing trademarks that may conflict with yours. The USPTO examines trademark applications to ensure they do not create a likelihood of confusion with existing trademarks. By conducting a comprehensive search, you can assess the availability of your desired mark and identify potential conflicts that may lead to rejection or legal disputes. This helps you avoid investing time, effort, and resources into a trademark that cannot be registered or enforced.
2. Protecting Your Investment: Registering a trademark involves a significant investment of time, money, and branding efforts. Conducting a trademark search before filing your application helps mitigate the risk of infringing on someone else’s rights. Discovering conflicts early on allows you to make informed decisions about the viability of your chosen mark and avoid potential legal consequences in the future. It is better to invest in a comprehensive search upfront than to face legal disputes and potential rebranding costs later.
3. Enhancing the Strength of Your Trademark: A strong trademark is one that is distinctive and not likely to be confused with existing trademarks. By conducting a search, you can evaluate the strength of your mark and make informed decisions about its registrability. Identifying potential conflicts allows you to refine your mark, making it more unique and distinctive, which increases its chances of being registered and protected.
4. Maximizing Registration Success: Conducting a trademark search helps you understand the landscape of existing trademarks in your industry or field of business. This knowledge enables you to tailor your application to address any potential objections or conflicts that may arise during the USPTO examination process. By anticipating and addressing potential issues proactively, you can improve the chances of a successful registration and reduce the likelihood of receiving office actions or rejections.
5. Strategic Decision-Making: The information gathered during a trademark search can inform your overall branding and marketing strategies. It allows you to evaluate how your mark compares to others in the market, identify opportunities for differentiation, and ensure that your mark aligns with your business objectives and target audience.
In summary, conducting a trademark search before filing your application to the USPTO is crucial for avoiding conflicts, protecting your investment, enhancing the strength of your mark, maximizing registration success, and making strategic decisions about your branding efforts.
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.
On average, the trademark application process can take anywhere from several months to a few years to complete. Here is a breakdown of the typical stages and their respective timeframes:
1. Filing the Application: This step involves submitting your trademark application to the relevant trademark office. 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.
2. Examination: After you submit the trademark application, it undergoes a formal examination by the trademark office. 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.
3. 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.
4. Registration and Issuance: Once the opposition period has ended, and no valid oppositions have been raised, your trademark application moves towards registration. 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.
It’s important to note that these timeframes are approximate and can vary significantly based on the specific circumstances and the country or region in which you are applying for a trademark. Some countries may have faster or slower trademark registration processes compared to others.
Additionally, unexpected delays or complexities during the application process, such as objections or oppositions, can extend the overall timeframe.
Can I register my trademark before my business is up and running?
Yes, you can register your trademark before your business is up and running. The United States Patent and Trademark Office (USPTO) offers two types of trademark applications: “use-based” and “intent-to-use” (ITU) applications.
1. Use-Based Application: A use-based application is filed when you are already using the trademark in commerce, meaning it is associated with goods or services that are being offered to the public. This application requires you to provide evidence of your current use of the mark, such as sales invoices, packaging labels, or advertisements. With a use-based application, you can obtain immediate registration if your mark meets all the necessary requirements.
2. Intent-to-Use (ITU) Application: An ITU application allows you to secure rights to a mark you intend to use in the future but are not yet using in commerce at the time of filing. This option is particularly useful if you are in the planning or development stage of your business and want to protect your chosen mark before launching your products or services. By filing an ITU application, you reserve the right to use the mark in the future once you have started using it in commerce.
It’s important to note that filing an ITU application requires a bona fide intent to use the mark in commerce. You will need to submit a sworn statement affirming your intention to use the mark and specify the goods or services associated with it. Additionally, once the USPTO approves your ITU application, you will need to submit evidence of actual use within a specific timeframe to complete the registration process.
Registering your trademark before your business is operational provides several advantages. It allows you to secure exclusive rights to your chosen mark and prevent others from using a similar mark that may cause confusion among consumers. It also ensures that once your business is up and running, you have a registered trademark in place, providing a stronger foundation for building brand recognition and protecting your intellectual property rights.
What is a “specimen” and when do I need one?
A specimen is basically a sample of how you are or intend to actually use your trademark in commercial activity. A specimen is included as part of your trademark application and could be a product label, packaging, flyers, sell-sheets, or website screenshots, etc.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain conditions. In order to obtain a trademark registration for a phrase, the phrase must meet the criteria for trademark eligibility and fulfill the requirements set forth by the United States Patent and Trademark Office (USPTO). Here are some important considerations:
1. Distinctiveness: The phrase you wish to trademark must be distinctive or capable of acquiring distinctiveness through use. Distinctiveness refers to the phrase’s ability to identify and distinguish your goods or services from those of others in the marketplace. Phrases that are generic (e.g., “The Best Restaurant”) or merely descriptive of the goods or services (e.g., “Fast Food Delivery”) may face challenges in obtaining trademark protection. However, phrases that are inherently distinctive (e.g., “Nike: Just Do It”) or have acquired distinctiveness through extensive use and recognition (e.g., “I’m Lovin’ It” – McDonald’s) have a higher chance of being registered.
2. Functionality: Phrases that serve a purely functional purpose or are essential to the goods or services themselves cannot be registered as trademarks. Trademarks are meant to identify the source of goods or services, so if a phrase primarily describes a function, quality, or characteristic of the product or service, it may not be eligible for trademark protection.
3. Likelihood of Confusion: The USPTO examines trademark applications to ensure there is no likelihood of confusion with existing trademarks. Even if your phrase meets the distinctiveness requirement, it may still face rejection if it is confusingly similar to an already registered trademark for related goods or services. Conducting a thorough trademark search prior to filing your application can help identify potential conflicts.
4. Specimen of Use: When applying for a trademark registration, you will need to submit a specimen of use that demonstrates how the phrase is used in connection with the goods or services. For phrases, this can include examples such as product labels, packaging, advertising materials, or website screenshots that show the phrase in use.
Remember, trademark protection is territorial, so registering a phrase as a trademark provides protection within the jurisdiction where it is registered. If you require international protection, you may need to consider filing trademark applications in other countries or through international treaties and agreements.
Can I trademark a logo?
Yes, you can trademark a logo. In fact, logos are one of the most common types of trademarks registered with the United States Patent and Trademark Office (USPTO). A logo can serve as a powerful identifier for a brand and can be protected as intellectual property under trademark law. Here are some important considerations when seeking to trademark a logo:
1. Distinctiveness: Like any trademark, the logo must be distinctive or capable of acquiring distinctiveness through use. A distinctive logo helps consumers identify and distinguish the goods or services associated with a particular brand. Logos that are unique, creative, and visually distinctive are more likely to be registered as trademarks. Generic or common logos that do not differentiate the brand from others in the market may face challenges in obtaining trademark protection.
2. Design Elements: Logos typically consist of various design elements, including graphics, images, colors, shapes, and text. To qualify for trademark protection, the logo should have sufficient originality and creativity to make it distinguishable from other logos in the marketplace. Additionally, if the logo contains stylized text or lettering, it is advisable to separately consider protecting the textual element as a wordmark.
3. Likelihood of Confusion: During the trademark registration process, the USPTO examines logo applications to determine if there is a likelihood of confusion with existing trademarks. If your logo is too similar to a previously registered trademark for related goods or services, it may face rejection. Conducting a comprehensive trademark search prior to filing can help identify potential conflicts and allow you to make informed decisions about the registrability of your logo.
4. Specimen of Use: When applying for a trademark registration, you will need to submit a specimen of use that shows how the logo is used in commerce. This can include examples such as product labels, packaging, business cards, or advertisements that prominently display the logo in connection with the goods or services.
Remember, trademark rights are territorial, so registering your logo as a trademark provides protection within the jurisdiction where it is registered. If you intend to use your logo internationally, it may be necessary to consider filing trademark applications in other countries or through international agreements and treaties.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark for a color can be challenging because colors are typically considered to be more functional and less inherently distinctive than other types of trademarks like logos or words. Here are some important factors to consider when seeking to trademark a color:
1. Distinctiveness: To be eligible for trademark protection, a color must possess what is known as “secondary meaning” or “acquired distinctiveness.” This means that consumers have come to associate the specific color with a particular source of goods or services. To establish acquired distinctiveness, evidence must be provided to demonstrate that the color has become distinctive through extensive use and promotion in the marketplace.
2. Non-Functional: Colors that are functional or necessary to the nature of the goods or services cannot be registered as trademarks. For example, if a specific color is commonly used in an industry to indicate a particular function or characteristic of the product, it may be deemed functional and ineligible for trademark protection.
3. Source Identification: The color must serve as a distinctive identifier of the source of goods or services. It should be used in a consistent and recognizable manner to associate the color with a specific brand or company. The color alone should be capable of triggering a connection in consumers’ minds with a particular source.
4. Trade Dress: In some cases, a color may be registered as part of a broader trade dress, which refers to the overall visual appearance of a product or its packaging. Trade dress protection can extend to colors, shapes, designs, and other visual elements that create a distinctive look and feel of a product. However, trade dress protection requires a showing of acquired distinctiveness and non-functionality.
It is important to note that successfully registering a color as a trademark is rare and often requires strong evidence of acquired distinctiveness. In addition, when using a color as a trademark, it is advisable to use it consistently and prominently in association with the goods or services to enhance its distinctiveness and recognition.
Remember, trademark protection is jurisdiction-specific, so a color trademark registration provides protection within the jurisdiction where it is registered. If you require international protection, you may need to consider filing trademark applications in other countries or through international agreements and treaties.
What is a trademark office action?
A trademark office action is a communication issued by the examining attorney at the United States Patent and Trademark Office (USPTO) to the applicant of a trademark application. It serves as an official response to the application and typically contains issues, questions, or objections that need to be addressed before the trademark can be registered. The purpose of an office action is to ensure compliance with the legal requirements and to resolve any potential conflicts or deficiencies in the application. Here are some key points to understand about trademark office actions:
1. Content of Office Actions: Office actions can vary in their content and nature depending on the specifics of the application. They may include objections, requests for clarification or additional information, or rejections based on statutory grounds or conflicts with existing trademarks. The USPTO provides a detailed explanation of the issues raised in the office action and may cite relevant statutes, regulations, or prior registrations as the basis for their findings.
2. Types of Office Actions: Office actions can be divided into two main categories: non-substantive and substantive office actions.
a. Non-Substantive Office Actions: These typically relate to procedural or technical matters, such as correcting minor errors or clarifying the identification of goods or services. Non-substantive office actions are generally easier to resolve and do not involve substantial issues of trademark eligibility or conflicts.
b. Substantive Office Actions: These raise more significant issues related to the registrability of the trademark. They may include objections based on the descriptive nature of the mark, likelihood of confusion with existing trademarks, or other substantive grounds. Resolving substantive office actions may require more substantial arguments, evidence, or legal analysis to overcome the examiner’s concerns.
3. Response Deadline: Upon receiving an office action, the applicant is given a specific deadline to respond, typically six months from the date of issuance. It is crucial to meet this deadline to avoid abandonment of the application. Failing to respond within the given timeframe may result in the application being declared abandoned, requiring the applicant to start the process again.
4. Consultation with a Trademark Attorney: Office actions can be complex, and addressing the issues raised effectively often requires legal expertise. Engaging a Trademark Attorney is highly recommended, as they can review the office action, provide guidance on the best course of action, and assist in preparing a strong response. Their knowledge and experience can significantly increase the chances of overcoming the objections and successfully proceeding with the trademark registration process.
Responding to an office action is a crucial step in the trademark application process. It provides an opportunity to address the concerns raised by the examining attorney and present arguments, evidence, or amendments to support the registration of the trademark. Promptly and adequately addressing an office action is vital to ensure the smooth progress of the application and increase the likelihood of a favorable outcome.
How likely is it to receive a trademark application rejection?
The likelihood of receiving a trademark application rejection from the United States Patent and Trademark Office (USPTO) depends on several factors, including the specific details of your application, the distinctiveness of your mark, and potential conflicts with existing trademarks. While it is not possible to provide an exact percentage, understanding the common reasons for rejection and taking appropriate steps can improve your chances of a successful registration. Here are some factors to consider:
1. Trademark Eligibility: Not all marks are eligible for trademark protection. Generic terms, purely descriptive phrases, and marks that are functional or commonly used in the industry are typically ineligible. If your mark lacks distinctiveness, it may face rejection. However, if your mark is creative, unique, and capable of identifying the source of your goods or services, it has a higher likelihood of approval.
2. Likelihood of Confusion: One of the primary reasons for trademark rejection is the likelihood of confusion with existing trademarks. The USPTO examines applications to determine if the mark is similar to already registered marks for related goods or services. If your mark is too similar, it may create confusion among consumers, leading to rejection. Conducting a comprehensive trademark search before filing your application can help identify potential conflicts and avoid potential rejections.
3. Procedural and Technical Requirements: The USPTO has specific requirements regarding the application process, including proper classification of goods and services, correct identification of the mark, and appropriate filing fees. Failing to meet these procedural and technical requirements can result in rejection. It is important to carefully follow the USPTO’s guidelines and seek guidance from a Trademark Attorney to ensure compliance.
4. Response to Office Actions: If your application receives an office action, addressing the issues raised in a timely and comprehensive manner is crucial. Failure to respond adequately may lead to rejection. Working with a Trademark Attorney who can analyze the office action, prepare a strong response, and guide you through the process can significantly improve your chances of overcoming objections and obtaining registration.
5. Consultation with a Trademark Attorney: Engaging a Trademark Attorney is highly recommended throughout the trademark registration process. They can provide guidance, conduct thorough searches, assess the registrability of your mark, assist with application preparation, and help navigate potential challenges and rejections. Their expertise and knowledge of trademark law can significantly improve your chances of a successful registration.
While there is a possibility of rejection, being proactive, conducting comprehensive research, and seeking professional guidance can help mitigate potential issues and increase the likelihood of a successful trademark application.
How can I improve my chances of trademark application approval?
To improve your chances of trademark application approval, there are several steps you can take. While success cannot be guaranteed, following these strategies can increase the likelihood of a favorable outcome:
1. Conduct a Comprehensive Trademark Search: Before filing your application, conduct a thorough trademark search to identify any existing trademarks that may conflict with yours. This search helps uncover potential obstacles and allows you to make informed decisions about the registrability of your mark. Hiring a professional trademark search firm or consulting with a Trademark Attorney can ensure a comprehensive and accurate search.
2. Choose a Distinctive and Strong Mark: Selecting a distinctive mark that is creative, unique, and capable of identifying the source of your goods or services increases the chances of approval. Avoid generic or descriptive terms that lack distinctiveness. The stronger your mark, the easier it will be to obtain trademark protection.
3. Seek Professional Guidance: Consulting with a Trademark Attorney who specializes in intellectual property law can be invaluable. They can guide you through the application process, provide advice on selecting a strong mark, conduct a thorough search, and assist with drafting a solid application. Their expertise can help navigate potential pitfalls and increase your chances of success.
4. Ensure Proper Classification of Goods and Services: Accurately identify and classify your goods and services according to the USPTO’s guidelines. Proper classification ensures that your mark is protected for the specific products or services you offer. Misclassification can lead to rejection or inadequate protection.
5. Provide Sufficient Specimens of Use: If your mark is already in use in commerce, include proper specimens that show how the mark is being used in connection with the goods or services. Ensure the specimens meet the USPTO’s requirements for demonstrating actual use in commerce. Insufficient or improper specimens can result in rejection.
6. Respond Promptly to Office Actions: If you receive an office action, which is an official response from the USPTO raising issues or objections, address it promptly and thoroughly. Carefully analyze the issues raised, consult with a Trademark Attorney, and prepare a comprehensive response that addresses each concern. A well-crafted response can help overcome objections and increase the likelihood of approval.
7. Maintain Good Communication: Keep your contact information up to date with the USPTO and promptly respond to any correspondence or requests for information. Timely communication helps avoid delays or potential abandonment of your application.
Remember, the trademark application process can be complex, and success is not guaranteed. Working with a knowledgeable Trademark Attorney can greatly enhance your chances of approval by leveraging their expertise and experience in navigating the intricacies of trademark law.
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 steps you can take to improve your chances of success even after a rejection. Here are some strategies to consider:
1. Carefully Review the Rejection: Thoroughly analyze the reasons provided in the rejection letter from the United States Patent and Trademark Office (USPTO). Understand the specific grounds for rejection, whether they are procedural, substantive, or based on likelihood of confusion. This will help you develop a targeted plan to address the issues raised.
2. Consult with a Trademark Attorney: Engage the services of a knowledgeable Trademark Attorney who can review the rejection, assess the strength of your case, and advise you on the best course of action. They can help you understand the legal implications, develop a strong response, and guide you through the process of overcoming the rejection.
3. Seek Legal Arguments and Evidence: Based on the grounds of rejection, work with your Trademark Attorney to develop persuasive legal arguments and gather additional evidence to support your case. This could include demonstrating acquired distinctiveness, providing evidence of non-confusing coexistence with similar marks, or addressing any substantive or procedural deficiencies identified by the examiner.
4. Prepare a Comprehensive Response: Craft a well-structured, thorough, and persuasive response to the rejection. Address each issue raised by the examining attorney, provide clear explanations, and present evidence or legal arguments to support your position. A well-prepared response can significantly increase your chances of overcoming the rejection.
5. Consider an Appeal or Amendment: Depending on the specific circumstances, you may have the option to file an appeal or an amendment to your application. An appeal involves taking your case to the Trademark Trial and Appeal Board (TTAB) within the USPTO, where a panel of judges will review the rejection. Alternatively, you can amend your application to address the issues raised and resubmit it for further consideration.
6. Collaborate with the Examiner: In some cases, it may be beneficial to engage in a dialogue with the examining attorney to better understand their concerns and explore potential solutions. While not always possible, a constructive conversation can sometimes lead to a resolution that satisfies both parties.
7. Seek a Compromise: If the rejection is based on likelihood of confusion with an existing mark, you may consider negotiating with the owner of the conflicting mark to reach a coexistence agreement or consent agreement. These agreements outline the conditions under which both marks can coexist without causing consumer confusion.
How likely is it to succeed in overturning a second trademark rejection?
The likelihood of success in overturning a second trademark rejection depends on various factors, including the specific grounds for rejection, the strength of your arguments, the evidence presented, and the expertise of your legal representation. While success cannot be guaranteed, here are some considerations to keep in mind:
1. Grounds for Rejection: Understanding the reasons for the second rejection is crucial. Assess whether the grounds are similar to the first rejection or if new issues have arisen. If the issues are similar, it may require a reassessment of your arguments and evidence. If new issues have arisen, you will need to address them effectively.
2. Legal Arguments and Evidence: Collaborate with your Trademark Attorney to develop strong legal arguments and gather compelling evidence to support your case. Review the examiner’s concerns and provide clear explanations, additional evidence, or legal precedents that address the issues raised. It is essential to present a robust and persuasive response to counter the reasons for rejection.
3. Expert Guidance: Working with a skilled Trademark Attorney who has experience in responding to rejections is highly recommended. They can provide valuable insights, guide you through the process, and help develop a comprehensive response that addresses the examiner’s concerns. Their expertise can significantly increase your chances of success.
4. Changes and Amendments: Assess whether amendments or changes to your trademark application can help address the issues raised in the second rejection. If there are specific elements or claims that are causing concern, modifying them may help alleviate the examiner’s objections. Consult with your Trademark Attorney to determine the best approach.
5. Engagement with the Examiner: Depending on the circumstances, it may be beneficial to engage in a dialogue with the examining attorney to gain a deeper understanding of their concerns and explore potential solutions. This open communication can sometimes lead to a resolution that satisfies both parties.
6. Additional Evidence or Arguments: If new evidence or arguments have become available since the first rejection, consider incorporating them into your response. Demonstrating acquired distinctiveness, market recognition, or coexistence agreements with conflicting marks can strengthen your case. However, ensure that any new evidence or arguments align with the specific grounds for rejection.
7. Persistence and Patience: Overturning a second rejection can require persistence and patience. The process may involve multiple rounds of responses, negotiations, and potential appeals. It is crucial to remain committed to presenting a strong case and addressing the examiner’s concerns until a favorable outcome is achieved or all available options have been exhausted.
Can I sell my products if I don’t have a registered trademark?
Yes, you can sell your products even if you don’t have a registered trademark. Trademark registration is not a requirement for conducting business or selling products. Trademarks serve as identifiers of the source of goods or services and provide certain legal protections, but they are not mandatory for engaging in commercial activities.
When you sell products without a registered trademark, you are relying on what is known as common law trademark rights. Common law trademark rights are based on actual use of the mark in commerce, and they provide you with some level of protection in the geographic area where your products are sold and where your mark has acquired recognition.
By using a specific mark consistently and prominently in connection with your goods or services, you can establish common law rights in that mark. These rights generally arise from the moment you start using the mark in commerce, although the scope and enforceability of common law rights may vary depending on the jurisdiction.
However, it’s important to note that relying solely on common law rights has limitations compared to having a registered trademark. Without registration, it may be more difficult to enforce your rights and protect your mark against potential infringement by others. Registration provides several benefits, such as a legal presumption of ownership, nationwide protection, and enhanced enforcement options.
Therefore, while you can sell products without a registered trademark, it is generally advisable to pursue trademark registration if you plan to build a strong brand and want to have the maximum level of protection for your mark. Registering your trademark with the United States Patent and Trademark Office (USPTO) or the relevant trademark authority in your jurisdiction can provide you with greater legal certainty and enforceability.
Consulting with a Trademark Attorney can help you understand the benefits of trademark registration and guide you through the application process, ensuring that your mark receives the appropriate protection and positioning your business for long-term success in the marketplace.
How long does a trademark last?
Once a trademark is registered with the United States Patent and Trademark Office (USPTO), it can last indefinitely as long as it continues to be used in commerce and renewal requirements are met. Trademarks do not have an expiration date like patents or copyrights.
Initially, trademark registration provides protection for ten years from the date of registration. However, to maintain the trademark’s validity, the registrant must file periodic renewal applications with the USPTO. The first renewal is due between the fifth and sixth year after the registration date, and subsequent renewals are required every ten years thereafter.
To keep the trademark registration active, the registrant must demonstrate that the mark is still in use in commerce for the goods or services specified in the registration. Failure to file the necessary renewal documents or demonstrate ongoing use may result in the cancellation or abandonment of the trademark registration.
It’s important to note that maintaining a trademark requires ongoing vigilance and active use. Additionally, trademarks can be canceled or invalidated if they become generic, if they are abandoned, or if they are not properly enforced against infringing use.
Therefore, as long as the trademark continues to be used in commerce and the renewal requirements are fulfilled, the trademark can last indefinitely, providing ongoing protection for the registered mark and the associated brand.
What’s the difference between a live trademark and a dead trademark?
In trademark terminology, a “live” trademark refers to a trademark that is currently active and valid, meaning it has been registered with the United States Patent and Trademark Office (USPTO) or the relevant trademark authority and is in good standing. A live trademark is still enforceable and provides legal protection to the trademark owner.
On the other hand, a “dead” trademark refers to a trademark that is no longer active or valid. A trademark can become dead due to various reasons, including abandonment, non-renewal, cancellation, or expiration. A dead trademark is no longer protected and cannot be used as a basis for asserting trademark rights or initiating legal actions for infringement.
When a trademark is considered dead, it means that it has lost its legal status and the associated rights granted by registration. The trademark owner may no longer use the dead mark to claim exclusive rights to the mark or prevent others from using a similar mark in commerce.
It is important to note that a dead trademark does not necessarily mean that the mark is available for others to use without any restrictions. Trademark rights can still exist based on common law rights or other registrations. Additionally, a dead trademark can potentially be revived or re-registered if certain requirements are met.
To determine the status of a trademark, it is advisable to conduct a search through the USPTO’s trademark database or consult with a Trademark Attorney who can provide accurate and up-to-date information about the status of a particular mark.
Understanding the difference between live and dead trademarks is essential for assessing the availability of a mark for new applications, conducting clearance searches, and making informed decisions regarding trademark protection and enforcement.
What is an Intent to Use application?
An Intent to Use (ITU) application, also known as a Section 1(b) application, is a type of trademark application filed with the United States Patent and Trademark Office (USPTO). It is used when an applicant has a bona fide intention to use a trademark in commerce but has not yet started using it at the time of filing the application.
The ITU application allows applicants to secure priority for their mark while they are in the process of preparing to use it in connection with specific goods or services. This provides a way to protect a mark before it is actually used in commerce, allowing applicants to reserve their rights and prevent others from adopting a similar mark during the application process.
When filing an ITU application, the applicant must provide a sworn statement or declaration asserting a genuine intention to use the mark in commerce for the specified goods or services. However, unlike a regular use-based application, the applicant does not need to submit evidence of actual use of the mark at the time of filing. Instead, they must demonstrate use in commerce at a later stage of the application process.
Once the ITU application is filed, it goes through the regular examination process at the USPTO, including a review of the application for compliance with formalities and a substantive examination to determine the registrability of the mark. If the application is approved, the mark will be published in the Official Gazette for a period of time, allowing others to oppose the registration if they believe it may cause confusion with their own marks.
To proceed towards registration, the applicant must eventually file a Statement of Use (SOU) to demonstrate actual use of the mark in commerce. The SOU must be filed within a specified timeframe after the USPTO issues a Notice of Allowance. If the applicant is unable to demonstrate use within the required timeframe, they may request extensions of time to file the SOU.
Overall, the ITU application provides a way for applicants to secure priority for their marks while allowing them time to finalize their business plans, production, or marketing strategies before actual use in commerce. It offers flexibility and protection for marks that are not yet in use but are intended to be used in the future.
Is my U.S. trademark registration valid outside of the United States?
No, your U.S. trademark is only valid within the United States. If you want to bring your products or services to markets outside the United States, then you’ll need to seek trademark protection in those locations. If looking for trademark protection outside of the United States, then it’s best to consult with a trademark attorney.
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.
What is TEAS?
The USPTO allows you to submit a trademark application and required fees online through the Trademark Electronic Application System (TEAS). TEAS is relatively easy to use, but be aware that you have a 60-minutes to complete your application, which should be more than enough time. You will receive a warning at the 54-minute mark that you have a few minutes left.
What is the fee to submit a trademark application through TEAS?
The USPTO offers three different types of applications to choose from when registering your trademarks. Each has its own fee:
- The TEAS Plus Filing option is $225 per class of goods or services
- The TEAS Reduced Fee option is $275 per class of goods or services
- The TEAS Regular Filing option is $400 per class of goods or services
What is an examining attorney?
An examining attorney (a.k.a., examiner) is the person at the USPTO who receives and reviews trademark applications. After receiving the application, the examining attorney will search the USPTO database to identify any trademarks that may be too similar to the trademark you’re attempting to register and would cause confusion in the market. If a similar trademark is found, then your application may be rejected.
If your mark is considered to be unique and your application gets approved, the examining attorney will have it printed in the USPTO’s Official Gazette for a 30-day period. During that time any third party can oppose the application if they can prove that your trademark infringes upon theirs.
Why Trademark Registration Matters for Aurora Businesses
Sometimes referred to as “Northern Lights” Aurora has a long history of being a center of manufacturing and commerce. Generations of Aurora residents recognized the opportunities the city afforded them to work hard and build a life for themselves. That entrepreneurial spirit lives on today in the many business owners that call Aurora home.
Indeed, many new Aurora business owners are smart, resourceful, and ready to take on any challenge. However, they need to remember to reach out to a trademark attorney who can help them register their marks with the USPTO.
Imagine the following: Jerry is a master glass blower known among his friends and family for making wonderful and gorgeous creations out of glass. They encourage him to open up his own glass blowing studio.
Jerry decides to take the plunge. He calls his new business Aurora Glassworks and leases a small commercial space in downtown Aurora. He converts the space into a workroom and a storefront. For his next tasks, he creates a website, orders signage, and hires an assistant. Jerry’s friend recommends that he register the name of his studio, but Jerry doesn’t want to invest the time and money right now. He’s too eager to open his shop.
Aurora Glassworks finally has its grand opening. The weeks following the opening are quite successful. Residents and tourists come to admire Jerry’s work and make plenty of purchases. Unfortunately, Jerry is about to get some bad news.
There’s an auto glass manufacturer across town who owns the trademark to the name Aurora Glassworks. They send a cease-and-desist letter to Jerry. They are well within their rights to ask him to close his shop and stop using the name.
Jerry is upset by this turn of events. Now he must spend time and money rebranding his business. If he had approached a trademark attorney right from the beginning, he could have avoided this scenario.
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 Aurora and yet it can assist businesses from Colorado in registering a federal Trademark because trademarks are governed under federal law.
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