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New York City Business Rely on Our Trademark Attorneys for Brand Protection and Trademark Filings
Cohn Legal, PLLC is located in Midtown-Manhattan and specializes in trademark law. Our New York trademark practice is robust and comprehensive, providing the following trademark services: trademark search, trademark application, trademark registration, trademark renewal, trademark oppositions, trademark office action responses, and a variety of other legal services integral to the practice of trademark law.
Trademark Attorney Services for New York City Businesses
Our trademark lawyers are often asked by prospective clients with only a tiny bit of cheeky mischief, “Are you the best trademark attorneys in New York?” Naturally, we are expected to say yes (and humbly, yes indeed we are!) but this question actually runs much deeper than the coy client suspects. More precisely, what does it actually mean to be a top new york trademark lawyer? Does it mean possessing the greatest understanding of trademark law? Filing the largest number of trademarks in the United States Patent and Trademark Office (USPTO)? Recognizing a client’s potential trademark infringement of a competing mark and developing a strategy to overcome this barrier?
On a technical level, an excellent New York trademark attorney will adeptly navigate through questions of trademark eligibility, the applicability of the Polaroid-consumer confusion test (don’t steal other people’s names!) and drafting compelling responses to USPTO office actions after initial trademark applications have been rejected. However, perhaps most importantly, the best trademark attorney will have a sufficiently advanced understanding of trademark law to effectively communicate the applicable legal doctrines to the client. Trademark law is challenging because of its subjectivity (does this mark looks too much like that mark?) and the devil is in the details.Trademark Registration can be easy with a an experienced Trademark Lawyer. Let’s dig in.
Trademark Lawyers: Back to the Basics
Trademarks are what make you, you.
First and foremost, what is a trademark? A trademark is ultimately, a source identifier – when a consumer sees a given trademark on a good, it is immediately apparent to the consumer which company produced the good. A trademark may, therefore, be viewed as a company’s signature. The trademark may be a word, symbol, phrase, or graphic design and if branded properly, distinguishes the given product from those of the company’s competitors. Consider for the moment your internal experience of viewing a shoe with a Nike Swoosh on it. If you are a fan of Nike, seeing the Swoosh will immediately conjure up positive assumptions about the shoe; You will likely think that the shoe is of high quality, that it is expensive, that it is “cool”, that it is durable, and that it will be comfortable when you wear it. Is any of this true (short of it being expensive)? Well, it doesn’t really matter. What counts is that you believe all of these things to be true simply by virtue of the fact that it has the Nike Swoosh on it.
Fundamentals of Filing Trademarks for NYC Based Businesses
Can Anything be Trademarked?
A common misconception is that any trademark (name, logo, design) is trademarkable. This is in fact not the case.
Marks are eligible for obtaining trademark rights according to their distinctiveness – the more distinct the mark, the more trademarkable and the less distinct, the less trademarkable. Indeed, the “strength” of the given mark (which is in large part a function of its distinctiveness) will both determine the likelihood of obtaining trademark protection in the USPTO and the probability of effectively stopping a future competitor from using the mark. So, what does it mean for a mark to be “distinct”?
Trademarked Law and the Spectrum of Distinctiveness
A cornerstone feature of trademark law is the legal doctrine of the Spectrum of Distinctiveness (and yes, the Best Trademark Attorney in New York should know this). The Spectrum of Distinctiveness is a conceptual tool, which allows the USPTO to evaluate a trademark’s uniqueness and individuality. At one end of the spectrum are fanciful marks (think NIKE – an otherwise made up and distinct word) and at the other end are “Generic” trademarks ( A lumber company calling itself “the lumber company). Fanciful marks are the most powerful of trademarks and are readily admissible to the USPTO while generic trademarks are the weakest and are inadmissible. Immediately next to Fanciful trademarks on this spectrum of distinctiveness are Arbitrary marks which are trademarks that use common, but otherwise irrelevant names to identify brand assets. For example, a Computer company calling itself “Apple”, despite the fact that its computers have nothing to do with the fruit, Apple, is a classic illustration of an Arbitrary mark and is eligible for trademark protection.
In the middle are marks that are “Suggestive” which are also trademarkable. These marks do not explicitly describe the good/service being sold but rather merely suggest the nature and/or purpose of the goods (“Bronzetinge for suntan lotion). However, as we move along the spectrum, marks that are “Descriptive” and quite literally describe the nature of the goods sold (ex. The Sweet Honey Company) ARE NOT trademarkable.
One can see that the difference between Descriptive and Suggestive is subtle but the standard boils down to the ease with which the consumer can tie the mark to the good. If the consumer must use his imagination to intuit the nature of the goods based on the name of the trademark, the trademark is considered to be suggestive, rather than descriptive, and therefore eligible for trademark protection. Understanding the nuances of the Spectrum of Distinctiveness is truly a hallmark feature of new york’s best trademark attorneys.
Someone is Using My Trademark. Now What?
Well, How Similar is the Other Trademark?
Once the New York trademark attorney determines that the trademark is at least theoretically eligible for admission to the USPTO, the trademark lawyer must next ascertain whether or not the mark is already taken. In the event that it becomes apparent that the trademark is in part already in use (for a similar set of goods/services), a crafty trademark attorney will consider the most fundamental question of trademark law; is the applicant’s new mark so similar to the existing mark as to lead to consumer confusion and cause a buyer to believe the product (bearing the mark) belongs to the later applicant, rather than the initial trademark holder? In order to make this determination, the trademark attorney will employ the Polaroid Factor Test (famously used in Polaroid Corp. v. Polarad Elect).
Let’s take the Polaroid Factor Test
The Polaroid factor test is used by Judges to determine whether or not trademark infringement has occurred and consists of eight points and while each factor is important, they do not all need to satisfied.
- The strength of the mark.
- The degree of similarity between the two marks.
- The proximity of the products/services.
- The likelihood that the prior owner will bridge the gap.
- Actual confusion.
- The defendant’s good faith in adopting its own mark.
- The quality of the defendant’s product.
- The sophistication of the buyers
Taken in its totality, the test signifies the meta-objective of ensuring a buyer will not experience confusion as to the source of the product bearing the mark. The more similar the prospective mark is to the original, the greater likelihood of confusion and therefore the less likely the mark may be registered.
Trademarks Services for New York City Businesses
- Trademark Search Services
- Trademark Application Filing
- Trademark Infringement Defense
- Trademark a Name
- Trademark a Phrase
- Trademark Cease and Desist Letters
- Trademark Office Action Response
- Trademark Abandonment
Why Trademark Registration Matters for New York City Businesses
New York City’s business sector is growing at an accelerated pace. That’s because entrepreneurs are eager to set up shops in this charming city that’s home to warm and friendly residents. However, one thing those pursuing new ventures need to keep in mind is to always register their trademarks with the USPTO.
Imagine the following: Jerry and Dana are college friends who love New York City-style barbecue. They spend a few months creating what they think is the perfect barbecue sauce and are eager to get it onto store shelves. They keep the name simple: JD’s Barbecue Sauce. They create a logo, a label for the bottles, and a website. What they forget to do, however, is register their trademark.
Within a few short months, Jerry and Dana are seeing some success. They have their sauce on the shelves of several local grocery stores, on the tables of local restaurants, and they are making sales across the country via their website.
Unfortunately, a barbecue sauce manufacturer out of Memphis, J&D Barbecue, finds out about Jerry and Dana’s sauce and sends a cease-and-desist letter to the two friends. J&D Barbecue registered their name more than 10 years ago and is well within their rights to ask Jerry and Dana to pull their product from store shelves and shut down their website. Now, the two friends must spend time and money creating a new brand.
If Jerry and Dana had partnered with a trademark attorney right from the beginning, that trademark attorney would have conducted a thorough trademark search. They would have known that a registered mark similar to the one they wanted was already out there.
Remember to always start the trademark registration process as soon as possible. If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
**Cohn Legal, PLLC is deeply committed to the startup community in the New York Metropolitan Area and provides regular legal guidance and counsel to some of New York’s most exciting and promising emerging businesses.
Submit Your Trademark
Now in 4 Easy Steps
Complete the Trademark Registration Form.
Our IP Attorneys will run a search of your trademark in the USPTO.
We draft your TM Application and send it to you for your Review.
We File the Application with the USPTO.