Boise, Idaho Businesses Use Cohn Legal for Trademark Services
Cohn Legal, PLLC is a trademark law firm that focuses on providing excellence in intellectual property protection for startups and entrepreneurs in Boise, Idaho, and all 50 states. On the most fundamental level, our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates. While excellence in trademark protection is expected, we take greater pride in our ability to create lasting relationships with our clients.
Top Questions Boise Businesses Have About Obtaining a Trademark
What is a Trademark?
A trademark is a form of intellectual property that is used to identify and distinguish goods or services of one party from those of others. It can take various forms, such as words, logos, slogans, designs, colors, sounds, or even product packaging. Essentially, a trademark serves as a distinctive sign that helps consumers recognize and associate certain goods or services with a particular source.
Trademarks play a crucial role in commerce by enabling businesses to build brand recognition, establish goodwill, and differentiate themselves in the marketplace. When consumers see a trademark they are familiar with, they can make informed decisions based on their previous experiences with the goods or services associated with that mark.
To obtain legal protection for a trademark, it is important to register it with the appropriate trademark office, such as the USPTO in the United States. Once registered, the trademark owner has exclusive rights to use the mark in connection with the specified goods or services, and can take legal action against others who infringe upon those rights.
It’s worth noting that trademarks are distinct from patents and copyrights, which protect inventions and creative works respectively. While patents and copyrights grant exclusive rights to inventors and creators, trademarks focus on the branding and identification aspects of business.
What does the USPTO do?
The United States Patent and Trademark Office (USPTO) reviews trademark applications and determines if they meet the requirements to be federally registered. They also maintain the database of all approved and pending trademarks.
What does the USPTO not do?
It’s important to know what the USPTO does NOT do. The USPTO will not:
- Decide if you have the right to use a trademark.
- Alert you to another entity infringing on your mark.
- Bring legal action against anyone infringing on your mark.
- Conduct trademark searches that are not part of their review of a submitted application.
- Give legal advice.
- Answer questions about the eligibility of a mark before an application is submitted.
For all legal questions about your trademark, you should work with a trademark attorney.
Should I register a trademark in my state or with the USPTO?
When it comes to trademark registration, it is generally recommended to seek registration with the United States Patent and Trademark Office (USPTO) rather than just registering your trademark in your state. Registering with the USPTO provides several advantages and protections that state registration does not offer.
One key advantage of federal registration is nationwide protection for your trademark. By obtaining a federal trademark registration, you gain exclusive rights to use your mark in connection with your goods or services throughout the entire United States. This means that even if someone in a different state uses a similar mark for related goods or services, your federal registration gives you the ability to enforce your rights and potentially prevent them from using the mark.
Additionally, a federal trademark registration provides a presumption of ownership and validity of your mark, which can make it easier to enforce your rights in case of infringement. It also allows you to use the ® symbol to indicate that your mark is registered, which can deter potential infringers.
Overall, registering your trademark with the USPTO offers greater protection, nationwide recognition, and legal advantages over state registration. It is advisable to consult with a trademark attorney who can guide you through the process and help ensure that your trademark registration is handled properly.
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 a crucial step in the trademark registration process. It helps you assess the availability and potential conflicts of your desired trademark, reducing the risk of rejection and potential legal issues down the line.
Here are some key reasons why conducting a trademark search is important:
1. Identifying Conflicting Trademarks: A comprehensive trademark search allows you to identify existing trademarks that are similar or identical to yours in relation to the goods or services you plan to offer. If there are conflicting marks already registered or pending, it may be necessary to adjust your mark or choose a different one to avoid potential legal disputes.
2. Avoiding Likelihood of Confusion: Trademark law aims to prevent consumer confusion between different sources of goods or services. Conducting a search helps determine whether your mark is likely to cause confusion with an existing trademark. If your mark is too similar to another mark in the same industry or related field, the USPTO may reject your application.
3. Assessing the Strength of Your Mark: A trademark search also helps evaluate the strength and distinctiveness of your mark. If your proposed mark is generic or descriptive, it may face challenges during registration. Conducting a search allows you to assess the availability and potential risks associated with using a particular mark.
4. Reducing Legal Risks: Filing an application for a trademark that conflicts with an existing mark can lead to legal disputes, such as opposition proceedings or trademark infringement claims. Conducting a thorough search helps minimize the risk of encountering such issues, potentially saving you time, money, and the need for rebranding.
5. Maximizing Registration Success: By conducting a comprehensive search and addressing any potential conflicts or issues before filing, you increase the chances of a successful trademark registration. It allows you to make informed decisions regarding your mark and potentially make necessary adjustments to enhance registrability.
It is advisable to consult a trademark attorney or use professional trademark search services to ensure a thorough and accurate search. They have access to specialized databases and knowledge of trademark law to provide comprehensive search results and guidance for your specific situation.
Should I hire a Trademark Attorney to help me register my trademark?
While it is not legally required to hire a trademark attorney to register a trademark, it is highly recommended to seek professional assistance from a qualified attorney specializing in trademark law. Trademark registration can be a complex process, and the guidance and expertise of a trademark attorney can greatly increase the likelihood of success and help you avoid potential pitfalls.
Here are a few reasons why hiring a trademark attorney is beneficial:
1. Expertise and Knowledge: Trademark attorneys possess in-depth knowledge of trademark law and the registration process. They can guide you through the various stages, including conducting a comprehensive trademark search, preparing and filing the application, responding to office actions, and handling any potential disputes.
2. Comprehensive Trademark Search: Conducting a thorough trademark search is crucial before filing a trademark application. A trademark attorney can perform a comprehensive search to identify potential conflicts with existing trademarks and advise you on the strength and registrability of your mark.
3. Application Preparation and Filing: A trademark attorney can help you prepare a strong application that meets all legal requirements. They can ensure that your trademark is properly classified, describe the goods or services accurately, and submit the necessary documentation to support your application.
4. Office Action Responses: If the USPTO issues an office action, which is a response requesting additional information or addressing potential issues with your application, a trademark attorney can guide you in preparing a persuasive response to increase the chances of approval.
5. Trademark Monitoring and Enforcement: After registration, a trademark attorney can help you monitor and enforce your trademark rights. They can assist in detecting potential infringements, sending cease-and-desist letters, and taking legal action if necessary.
By working with a trademark attorney, you can navigate the trademark registration process more efficiently and effectively, ensuring the best possible protection for your mark and reducing the risk of encountering legal obstacles.
Can I register my trademark before my business is up and running?
Yes, you can register a trademark before your business is fully operational. In the United States, the trademark registration process allows for two different types of applications: Use-Based and Intent-to-Use.
1. Use-Based Application: If you are currently using your trademark in commerce, you can file a Use-Based application with the USPTO. This requires providing evidence of actual use of the mark in connection with the goods or services specified in the application. The evidence typically includes examples of how the mark is used, such as labels, packaging, or advertising materials.
2. Intent-to-Use (ITU) Application: If you have not yet used your mark in commerce but have a bona fide
intention to do so in the future, you can file an Intent-to-Use application. This type of application allows you to secure a priority filing date for your mark while providing additional time to finalize your business plans or product development.
The ITU application process involves filing the application and paying the required fees. However, instead of providing evidence of actual use, you must submit a statement of your bona fide intention to use the mark in commerce. Once your ITU application is approved, you will receive a Notice of Allowance, and you will have a designated period (usually six months) to submit evidence of actual use to complete the registration process.
It’s important to note that you cannot obtain a registration until you have provided evidence of actual use or filed a Statement of Use with the USPTO. Filing an Intent-to-Use application secures your priority filing date but does not result in immediate registration.
Registering your trademark before your business is fully operational can be a strategic move to secure your rights and establish a protected brand early on. Consulting with a trademark attorney can help you determine the best approach based on your specific circumstances.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain circumstances. However, not all phrases are eligible for trademark protection. To be eligible, a phrase must meet specific requirements and demonstrate distinctiveness.
Here are the key factors to consider when seeking trademark protection for a phrase:
1. Distinctiveness: To qualify for trademark protection, a phrase should be distinctive or have acquired distinctiveness through extensive use in commerce. Distinctiveness refers to the ability of the phrase to identify the source of the goods or services associated with it, rather than being merely descriptive or generic. Distinctive phrases are considered stronger and more likely to receive trademark protection.
2. Secondary Meaning: If the phrase is descriptive or lacks inherent distinctiveness, it may still be eligible for trademark protection if it has acquired a secondary meaning. Secondary meaning occurs when the phrase, although initially descriptive or generic, has become associated with a specific source of goods or services through extensive use and consumer recognition. Establishing secondary meaning typically requires evidence of long and exclusive use, significant advertising efforts, and consumer perception surveys.
3. Common Phrases: Common phrases or expressions that are widely used by multiple businesses or individuals are generally difficult to trademark. The USPTO typically views such phrases as lacking distinctiveness and not serving as indicators of a specific source. However, if a common phrase has been creatively reimagined or used uniquely in connection with specific goods or services, it may be eligible for trademark protection.
It is important to conduct a comprehensive trademark search to ensure that the phrase you wish to trademark is not already registered or in use by another party in a similar field. Consulting with a trademark attorney can help assess the distinctiveness of your phrase and guide you through the application process, increasing 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 types of trademarks registered with the United States Patent and Trademark Office (USPTO). A logo can serve as a powerful branding tool, helping consumers identify and associate your goods or services with your business.
To successfully register a logo as a trademark, there are a few important considerations:
1. Distinctiveness: Like any trademark, the logo should possess distinctiveness. It should be unique and not merely descriptive or generic. The USPTO recognizes different levels of distinctiveness, ranging from inherently distinctive marks (e.g., fanciful or arbitrary logos) to marks that have acquired distinctiveness through extensive use (e.g., logos that have become associated with a particular source).
2. Graphic Representation: When filing a trademark application for a logo, you must provide a clear and accurate graphic representation of the mark. This can be in the form of a digital image, drawing, or other visual representation that accurately depicts the logo.
3. Description of the Mark: Along with the graphic representation, you should provide a written description of the logo, detailing the specific elements, colors, and design features. The description should accurately represent the visual aspects of the mark and help distinguish it from other similar marks.
4. Goods or Services: When filing a trademark application for a logo, you must specify the goods or services with which the logo is associated. This ensures that the mark is protected within the specific industry or field in which it is used.
To maximize your chances of successful registration, it is advisable to conduct a comprehensive trademark search to ensure that your logo does not conflict with existing trademarks. Consulting with a trademark attorney can provide valuable guidance throughout the registration process and help you navigate any potential legal obstacles.
Can I trademark a color?
Yes, it is possible to trademark a color, but it is generally more challenging compared to traditional word or logo trademarks. In order to obtain a trademark registration for a color, you must demonstrate that the color has acquired distinctiveness and serves as a source identifier for specific goods or services.
Here are some key points to consider when seeking trademark protection for a color:
1. Inherently Distinctive Colors: Certain colors are considered inherently distinctive and have a higher likelihood of being recognized as source identifiers. These colors are typically non-functional and not commonly associated with the goods or services in question. Examples of inherently distinctive colors include Tiffany blue for jewelry boxes or UPS brown for delivery services.
2. Secondary Meaning: If a color is not inherently distinctive, it may still be eligible for trademark protection if it has acquired secondary meaning. This occurs when the color, although initially descriptive or functional, has become associated with a specific source of goods or services in the minds of consumers. Establishing secondary meaning generally requires evidence of long and exclusive use, significant advertising efforts, and consumer perception surveys.
3. Trade Dress: In some cases, a color may be protected as part of the overall trade dress of a product or packaging. Trade dress refers to the overall appearance and design elements of a product or its packaging that identify and distinguish it in the marketplace. To obtain trade dress protection for a color, you must demonstrate that the color is non-functional and has acquired distinctiveness as a source identifier.
It is important to note that obtaining a trademark registration for a color is more challenging due to the requirement of distinctiveness. It is advisable to consult with a trademark attorney who can assess the distinctiveness of the color and guide you through the application process, providing the best chance for successful registration.
Can I request an expedited approval of my trademark application?
Yes, it is possible to request expedited approval of a trademark application in certain circumstances. The United States Patent and Trademark Office (USPTO) provides a program called the “Trademark Acceleration Program” (TAP) that allows applicants to request expedited processing of their trademark applications.
To qualify for expedited review under TAP, applicants must meet specific criteria. The USPTO considers the following factors when evaluating expedited requests:
1. “Special circumstances”: The applicant must demonstrate that there are extraordinary circumstances that warrant expedited processing. Examples of special circumstances include pending litigation, potential infringement, or the need to secure funding or licensing agreements.
2. “Age of the applicant or health”: If the applicant is over the age of 65 or has a serious health condition, they may be eligible for expedited processing based on the potential impact on their ability to use or promote the mark.
3. “Significant investment”: Expedited review may be granted if the applicant can show that there is a significant investment in the mark, such as substantial financial investment or significant business planning and development that relies on obtaining the trademark registration quickly.
Applicants must submit a written petition to the USPTO explaining the specific reasons why expedited processing is necessary. It is important to provide compelling and well-documented arguments that clearly demonstrate the applicant’s eligibility for expedited review based on the established criteria.
While expedited processing can potentially accelerate the examination of a trademark application, it is important to note that it does not guarantee approval. The application will still undergo the regular examination process, including a substantive review of the mark’s registrability and potential conflicts with existing trademarks.
It is important to review the specific requirements and procedures outlined by the USPTO or consult with a legal professional to ensure compliance and maximize the chances of expediting the approval of your trademark application.
What is a trademark office action?
A trademark office action is a written communication from the United States Patent and Trademark Office (USPTO) that identifies issues or deficiencies with a trademark application. It serves as an official response to the initial application and may require the applicant to address specific concerns or provide additional information.
There are two main types of trademark office actions:
1. Non-Final Office Action: This type of office action raises issues or deficiencies in the application that can be addressed without necessarily resulting in a final rejection. The USPTO may request clarification, amendment, or additional evidence to resolve the identified issues. The applicant has an opportunity to respond to the non-final office action within a specified period, typically six months, to overcome the objections and continue the application process.
2. Final Office Action: A final office action is issued when the USPTO determines that the issues raised in the non-final office action have not been adequately addressed or resolved. It serves as the last opportunity for the applicant to respond before the application is rejected. The final office action typically requires a more substantial response, and the applicant must provide strong arguments or evidence to overcome the objections. If the applicant fails to respond or does not overcome the issues, the application may be abandoned or rejected.
Common reasons for receiving a trademark office action include:
– Descriptiveness or genericness of the mark
– Likelihood of confusion with an existing mark
– Insufficient evidence of use or intent to use the mark
– Inadequate or incorrect identification of goods or services
– Deficiencies in the drawing or description of the mark
– Failure to comply with procedural requirements
It is essential to carefully review and understand the office action and promptly respond within the specified time frame. Working with a trademark attorney can be beneficial in preparing a persuasive response that addresses the USPTO’s concerns and increases the likelihood of application approval.
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 the accuracy and completeness of the application. While it is difficult to provide an exact probability, understanding common reasons for rejection can help you assess the potential risks and take appropriate measures to improve your chances of approval.
Here are some factors that may contribute to a higher likelihood of trademark application rejection:
1. Descriptive or Generic Marks: Marks that are descriptive or generic in nature are less likely to receive trademark protection. Descriptive marks merely describe the goods or services being offered, while generic marks refer to the common name or term for those goods or services. The USPTO typically requires marks to be distinctive and capable of identifying a particular source.
2. Likelihood of Confusion: If your mark is likely to cause confusion with an existing registered mark or a mark that is pending registration, the USPTO may reject your application. Likelihood of confusion exists when the marks are similar and the goods or services associated with them are related or overlapping. The USPTO considers factors such as the similarity of the marks, the similarity of the goods or services, and the channels of trade or target consumers.
3. Inaccurate or Incomplete Application: Errors or omissions in the application, such as incorrect descriptions, insufficient evidence of use, or missing documentation, can lead to rejection. It is crucial to ensure the application is accurate, complete, and compliant with the USPTO’s requirements.
4. Procedural Requirements: Failure to comply with procedural requirements, such as filing deadlines, fees, or signature requirements, can result in rejection. It is important to carefully follow the USPTO’s guidelines and instructions to avoid procedural errors.
While there is a possibility of rejection, it is important to note that an experienced trademark attorney can help increase your chances of application approval. They can guide you through the application process, conduct a comprehensive trademark search, address potential issues, and prepare a strong application that meets the USPTO’s requirements.
How can I improve my chances of trademark application approval?
To improve your chances of trademark application approval, there are several strategies you can employ:
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 will help you avoid potential issues and adjust your mark if needed.
2. Choose a Distinctive Mark: Select a mark that is distinctive and unique. Fanciful, arbitrary, or suggestive marks have a higher likelihood of receiving trademark protection compared to descriptive or generic marks.
3. Seek Professional Assistance: Consider working with a trademark attorney who can provide expertguidance throughout the application process. They can help you understand the requirements, conduct a comprehensive search, draft a strong application, and respond to any office actions or rejections.
4. Provide Sufficient Evidence of Use: If your mark is already in use in commerce, provide clear and convincing evidence of such use. This can include examples of packaging, labels, advertising materials, or website screenshots. Strong evidence of use strengthens your application.
5. Accurate Description of Goods or Services: Ensure that the description of goods or services associated with your mark is accurate and properly categorized. Be specific and use appropriate classifications to demonstrate the distinctiveness of your mark within the relevant industry.
6. Respond Promptly to Office Actions: If you receive an office action, review it carefully and respond promptly within the specified time frame. Address each issue raised and provide a clear and persuasive response.
7. Overcome Likelihood of Confusion: If the USPTO identifies a likelihood of confusion with an existing mark, consider submitting arguments or evidence that demonstrates the differences between the marks or the dissimilarity of the goods or services. Consult with a trademark attorney for guidance on developing a strong response.
8. Maintain Open Communication: Stay in contact with the USPTO throughout the application process. Respond to their requests for additional information or clarification promptly to avoid potential delays or rejection.
Remember, each trademark application is unique, and the success of your application depends on various factors. By following these strategies and seeking professional assistance, you can significantly improve your chances of trademark application 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 steps you can take to improve your chances after a rejection:
1. Carefully Review the Office Action: Thoroughly review the office action to understand the reasons for rejection. Identify the specific issues raised by the USPTO and consider their arguments or concerns.
2. Consult with a Trademark Attorney: Seek the guidance of a trademark attorney experienced in handling trademark rejections. They can help you assess the reasons for rejection, develop a strategy for response, and provide legal arguments or evidence to overcome the objections.
3. Address Each Issue Individually: Analyze each issue raised in the office action and address them individually in your response. Provide clear and persuasive arguments, supported by relevant evidence or legal precedent, to counter the USPTO’s objections.
4. Amend the Application if Necessary: If the rejection is based on a specific aspect of your application, such as the identification of goods or services or the description of the mark, consider making appropriate amendments to address the concerns raised.
5. Submit Additional Evidence: If the USPTO questions the distinctiveness or acquired distinctiveness of your mark, provide additional evidence to support your claims. This can include consumer perception surveys, advertising materials, or any other evidence that establishes the distinctiveness of your mark in the marketplace.
6. Seek a Resolution through Negotiation: In some cases, it may be possible to negotiate with the USPTO to reach a mutually acceptable resolution. This could involve amending the application, narrowing the goods or services description, or providing additional evidence.
7. File an Appeal if Necessary: If you believe the USPTO’s rejection is unfounded, you have the option to file an appeal with the Trademark Trial and Appeal Board (TTAB) within the designated timeframe. An appeal involves presenting arguments and evidence to challenge the USPTO’s decision.
8. Stay Committed and Persistent: Overcoming a trademark rejection may require multiple rounds of correspondence and legal arguments. It is crucial to stay committed, follow the USPTO’s deadlines, and maintain open communication throughout the process.
Remember, the assistance of a skilled trademark attorney can greatly increase your chances of success in overcoming a rejection. They can provide valuable guidance, expertise, and advocacy to present a strong case in your favor.
How likely is it to succeed in overturning a second trademark rejection?
The likelihood of succeeding in overturning a second trademark rejection depends on the specific circumstances and the strength of the arguments and evidence presented. While it is challenging to provide an exact probability, there are strategies you can employ to improve your chances:
1. Analyze the Reasons for Rejection: Carefully review the second office action to understand the specific issues raised by the USPTO. Identify the key arguments or concerns and consider how they can be addressed effectively.
2. Evaluate the Strength of your Arguments: Assess the strength of your arguments and evidence in relation to the issues raised in the office action. Determine if there are any gaps or weaknesses that need to be addressed. Consider consulting with a trademark attorney to get an objective assessment of your case.
3. Seek Professional Guidance: Work closely with a trademark attorney who has experience in handling trademark rejections. They can help you develop a strategy to strengthen your arguments and evidence, as well as navigate the appeals process if necessary.
4. Provide Persuasive Evidence: If the USPTO questions the distinctiveness or acquired distinctiveness of your mark, provide compelling evidence to support your claims. This can include consumer perception surveys, market research data, sales figures, or any other relevant evidence that establishes the distinctiveness of your mark.
5. Address the USPTO’s Concerns: Ensure that your response directly addresses the concerns raised in the second office action. Provide clear and persuasive arguments, supported by evidence or legal precedent, to counter the USPTO’s objections.
6. Consider Alternative Strategies: If your initial arguments were not successful, consider alternative strategies or approaches to strengthen your case. This may involve amending the application, narrowing the goods or services description, or providing additional evidence.
7. File an Appeal if Necessary: If the second office action maintains the rejection and you believe it is unjustified, you have the option to file an appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB will review the case and make an independent determination.
8. Maintain Persistence: Overcoming a second trademark rejection can be a complex and time-consuming process. Stay persistent, meet all deadlines, and maintain open communication with the USPTO and your trademark attorney.
It is important to note that success in overturning a second rejection is not guaranteed. Each case is unique, and the outcome depends on the specific circumstances. Working with a knowledgeable trademark attorney can greatly improve your chances of success and ensure that your arguments are presented effectively.
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. Trademark rights are established through actual use of the mark in commerce, regardless of whether it is registered with the USPTO.
By using a mark in connection with your products or services, you acquire common law trademark rights, also known as unregistered trademark rights. These rights provide some level of protection within the geographic areas where you are using the mark.
However, there are several advantages to obtaining a registered trademark:
1. Enhanced Protection: Registering your trademark with the USPTO provides additional legal benefits and protections. It establishes a legal presumption of your ownership and exclusive right to use the mark nationwide.
2. Notice to Others: A registered trademark provides constructive notice to others that you have claimed rights to the mark. This can help deter potential infringers and reduce the risk of unintentionally adopting a confusingly similar mark.
3. Legal Recourse: Having a registered trademark strengthens your legal position in the event of infringement. It allows you to bring a federal lawsuit against infringers and seek remedies such as injunctions, damages, and attorney’s fees.
4. Expansion and Licensing: A registered trademark can facilitate expansion into new markets or licensing opportunities. It adds value to your brand and can make it easier to attract investors, licensees, or business partners.
5. Trademark Symbol: Once your mark is registered, you can use the ® symbol to indicate its registration. This symbol provides additional notice to others that your mark is registered and reinforces your exclusive rights.
While selling products without a registered trademark is permissible, it is advisable to consider the benefits of registration and evaluate the potential risks of not having formal protection. Consulting with a trademark attorney can help you make an informed decision based on your specific business goals and circumstances.
How long does a trademark last?
A trademark can last indefinitely as long as it is continuously used in commerce and all necessary maintenance filings and fees are made. However, the duration of trademark protection depends on various factors and the actions taken by the trademark owner.
1. Common Law Trademark Rights: Common law trademark rights arise through actual use of the mark in commerce. As long as you continue to use the mark and it remains distinctive, you can maintain common law rights. However, these rights are limited to the geographic areas where the mark is used and may be weaker compared to registered trademark rights.
2. Registered Trademarks: A trademark registered with the USPTO provides enhanced protection and an initial term of 10 years. The registration can be renewed indefinitely in successive 10-year periods, as long as the mark is still in use and the necessary maintenance filings and fees are submitted.
3. Declaration of Continued Use: Between the fifth and sixth year after registration, a trademark owner must file a Declaration of Continued Use with the USPTO. This filing confirms that the mark is still in use in commerce. Failure to file the declaration within the specified time frame can result in the cancellation of the registration.
4. Renewal: To maintain a registered trademark, the owner must file a Renewal Application with the USPTO between the ninth and tenth years after registration, and every 10 years thereafter. These renewal filings ensure that the mark remains registered and provide an opportunity to update or amend the registration if necessary.
It is important to note that a trademark can be abandoned if it is not actively used in commerce or if the owner fails to maintain the necessary filings and fees. Additionally, the mark can become generic if it loses its distinctiveness and becomes the common name for a particular product or service.
Consulting with a trademark attorney can help you understand the specific requirements and timelines for maintaining and renewing your trademark to ensure its long-term protection.
What’s the difference between a live trademark and a dead trademark?
In the context of trademark records, a live trademark refers to a mark that is currently active and registered or pending registration with the USPTO. On the other hand, a dead trademark refers to a mark that is no longer active or has been abandoned, canceled, or expired.
Here are the main distinctions between a live trademark and a dead trademark:
1. Live Trademark: A live trademark is a mark that is currently active and protected by registration or pending registration with the USPTO. It indicates that the mark is in use or has an application being processed. A live trademark enjoys legal protection, and the owner can enforce their rights against potential infringers.
2. Dead Trademark: A dead trademark is a mark that is no longer active or has lost its legal protection. There are several reasons why a trademark may be considered dead:
a. Abandonment: If the trademark owner stops using the mark in commerce and does not file the necessary maintenance documents or fees, the mark can be considered abandoned and subsequently canceled.
b. Cancellation: A trademark registration can be canceled if a third party successfully challenges the mark’s validity or if the USPTO determines that the mark should not have been registered.
c. Expiration: If the trademark owner fails to renew the registration or file the required maintenance documents and fees, the mark can expire and become inactive.
d. Withdrawal or Surrender: The trademark owner may voluntarily withdraw or surrender the registration, leading to the mark being considered dead.
3. Impact on Legal Protection: A live trademark enjoys the full scope of legal protection provided by trademark law, including the ability to enforce exclusive rights, bring infringement lawsuits, and use the ® symbol. In contrast, a dead trademark has lost its legal protection and cannot be enforced against potential infringers.
4. Public Database: The USPTO maintains a searchable online database, the Trademark Electronic Search System (TESS), which includes both live and dead trademarks. It allows users to check the status and ownership of trademarks.
It’s important to conduct a comprehensive search in TESS to determine if a similar mark is already registered or pending registration. This search can help avoid potential conflicts and protect your ability to obtain and maintain a live trademark.
What is a “specimen” and when do I need one?
In the context of trademark registration, a specimen refers to a sample or example of how your mark is used in commerce. It is a tangible representation of how the mark is displayed to customers in connection with the goods or services.
The purpose of submitting a specimen is to demonstrate that your mark is actually being used in commerce as an identifier of the source of the goods or services. The USPTO requires applicants to submit specimens to verify the commercial use of the mark.
Here are key points regarding specimens:
1. Types of Specimens: The appropriate type of specimen depends on whether the mark is used in connection with goods or services:
a. Goods: For goods, acceptable specimens can include labels, tags, packaging, containers, product displays, or photographs showing the mark directly on the goods themselves.
b. Services: For services, acceptable specimens can include advertising materials, brochures, business cards, invoices, websites, or photographs showing the mark used in advertising or promoting the services.
2. Requirements for Specimens: The USPTO has specific requirements for specimens, including:
a. Display of the Mark: The mark must be prominently displayed and easily recognizable on the specimen.
b. Association with Goods or Services: The specimen should show a clear association between the mark and the goods or services provided. This helps establish that the mark functions as a source identifier.
c. Actual Use in Commerce: The specimen must demonstrate that the mark is used in the ordinary course of trade. Placeholder or mock-up specimens are generally not accepted.
3. Specimen Submission: Specimens are typically submitted as part of the trademark application process. In most cases, specimens are required when filing a Statement of Use (SOU) or an Allegation of Use (AAU) to demonstrate that the mark is currently in use in commerce.
4. Importance of Accurate Specimens: Accurate and appropriate specimens are crucial for obtaining and maintaining trademark registration. Inaccurate or misleading specimens can result in a refusal or cancellation of the registration.
What is an Intent to Use application?
An Intent to Use (ITU) application, also known as a 1(b) application, is a type of trademark application filed with the USPTO when a mark is not yet in use in commerce but there is a bona fide intent to use it in the future. This allows applicants to secure priority rights for their mark while they are still in the planning or development stages of their business.
Here are key points regarding Intent to Use applications:
1. Bona Fide Intent: To file an ITU application, you must have a genuine intention to use the mark in commerce. This means that you have concrete plans to use the mark in connection with specific goods or services in the near future. Mere speculative or vague intentions are insufficient.
2. Proof of Use: Unlike standard use-based applications, ITU applications do not require immediate submission of specimens or evidence of use. However, you will need to submit proof of use later in the process to obtain a registration.
3. Examination and Publication: ITU applications go through the same examination process as standard applications. Once the USPTO determines that the application meets the necessary requirements, it will be published for opposition. This allows third parties to oppose the registration if they believe it may cause confusion with their own marks.
4. Statement of Use: After the ITU application is allowed, you have a specific period (usually six months) to file a Statement of Use (SOU) with the USPTO. The SOU must include proof of actual use of the mark in commerce. If you need additional time, you can file extensions of time to submit the SOU, up to a maximum of five extensions.
5. Notice of Allowance: If your ITU application is allowed but you are not yet ready to submit the SOU, you can request a Notice of Allowance by filing an extension and paying the associated fee. The Notice of Allowance extends the deadline for filing the SOU by six months (with the option to request additional extensions).
6. 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.
It is important to consult with a trademark attorney when filing an ITU application, as it involves unique requirements and strategic considerations. We can guide you through the process, help establish a solid basis for your intent to use, and provide assistance when it comes time to submit the Statement of Use.
Will I receive communications from the USPTO after I file my application?
Yes, after your application is filed, you will receive communications from the USPTO via email.
You’ll first receive a receipt that shows you filed your application. Then you’ll continue to receive other communications about your application from the USPTO, as required. These other communications may include Office Actions, Notices of Publication, etc.
It’s important to make sure that the USPTO has accurate email addresses for both you and your attorney.
Will my filing fee be refunded if my application is rejected?
As a general rule, the USPTO does not refund application fees. They consider these to be processing fees.
Why Trademark Registration Matters for Boise Businesses
Boise, Idaho is one of the fastest growing cities in the area. Take one look at its hip and vibrant downtown area and it’s easy to see why. The city is full of craft breweries, fashion boutiques, farm-to-table restaurants, cafes, and loft-style apartments. Setting up a new business venture in Boise is a no-brainer.
Boise entrepreneurs know how much work goes into starting a business. But they should be careful to not overlook the trademark registration process. Doing so could lead to trouble down the line.
Imagine the following: Ginny has been making jewelry for years as a hobby. She’s decided to turn her hobby into a business. She calls her business Ginny’s Jewelry and starts renting space at the weekly craft fair in the North End neighborhood of Boise.
Her jewelry becomes very popular and her friends recommend she try selling some of her jewelry online as well. She creates a logo, sets up a website, invests in digital advertising, and creates a social media campaign. Within weeks, Ginny is selling her jewelry all over the country.
One of her friends asks if she had considered trademarking the name of her business, but Ginny is far too busy making jewelry to think about that right now. Besides, she thinks, she’s just a one-woman operation.
Unfortunately, Ginny gets some bad news in the mail just a few later. She receives a cease-and-desist letter from a jewelry store in California with a name that’s similar to Ginny’s Jewelry. The California store is concerned that people may confuse the two businesses. Since they trademarked their name, they have every right to ask Ginny to take down her website and not resume business until she rebrands. This is a devastating blow for Ginny and she decides to reach out to a trademark attorney to find out what she should do next.
Trademark registration is important for businesses of all sizes. Even if you’re just a one-person operation, or you’ve started your business as a side-hustle, you need to look into trademark registration early on in the process. It’s the only way to be confident that you can invest in your brand and in your business, should you decide to expand.
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 Boise and yet it can assist businesses from Idaho in registering a federal Trademark because trademarks are governed under federal law.
Trademarks Services for Boise Businesses
Submit Your Trademark
Now in 4 Easy Steps
TRADEMARK INFORMATION
Complete the Trademark Registration Form.
PRELIMINARY SEARCH
Our IP Attorneys will run a search of your trademark in the USPTO.
TM APPLICATION
We draft your TM Application and send it to you for your Review.
USPTO
We File the Application with the USPTO.