Boston, Massachusetts Businesses Use Cohn Legal for Trademark Services
Cohn Legal, PLLC is proud to announce the opening of a brand new office right outside of downtown Boston, Massachusetts. Cohn Legal, PLLC is dedicated to protecting our clients’ trademarks and intellectual property and is proud to serve clients in and throughout the United States and around the world. Our trademark attorneys work with clients throughout New England. Our number one goal is to help you succeed and guide you through the process of obtaining federal and/or state trademark protection for your brand assets.
TRADEMARKS EXPLAINED
- If I only provide my services in Boston, Massachusetts, can I still obtain a Federal Trademark?
- What Is A Trademark?
- How Does Registering My Trademark Protect My Boston Business?
- How Long Does It Take To Register A Trademark?
- Is There a Difference Between a Trademark and a Service Mark?
- How Can I Find Out If a Trademark is Available?
- Can I Use a Trademark Without Registering It?
- Should I Hire a Trademark Attorney to Help Me Register my Trademark?
- Do I Need To Sell a Product or Service To Obtain a Registered Trademark?
- What Should I Register First: The Name Of My Business Or My Brand Logo?
- What Is a Fanciful Trademark?
- How Long Does a Trademark Last?
- What is TEAS Used For?
- What Does the Trademark Trial and Appeal Board do?
- Does My Business Need More Than One Trademark?
- Can I Submit a Trademark Application Prior To Selling Any Products or Services?
- Can I Trademark a Phrase?
- Can I Trademark a Logo?
- Can I Trademark a Color?
- Can I Transfer My Trademark to Someone Else?
- Can I License My Trademark To Others?
- Should I Register My Trademark In My State Or Should I Register It With The USPTO?
- What is TEAS?
- What Is a Trademark Office Action?
- What Should I Do If I Receive An Office Action On My Trademark Application?
- Can I Request An Expedited Approval Of My Trademark Registration?
- What is the Official Gazette?
- What is a Specimen?
- If My Trademark Is Registered In The United States Is It Protected In Other Countries As Well?
- Is There Such a Thing As An “International Trademark”?
- Are Foreign Trademark Applicants Required to Use U.S.-based Trademark Attorneys?
- What is a Trademark Power of Attorney and When Do I Need One?
- Does My Trademark Require Maintenance After It Is Registered?
- How Do I Enforce My Trademark Rights?
- What’s The Difference Between The ® and TM Symbols?
- Is It Advisable To Register My Trademark Before My Company Is A “Success”?
Top Questions Boston, Massachusetts Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Boston, Massachusetts, 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 Boston, Massachusetts, 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 legally recognized symbol, word, phrase, design, or combination of these elements that distinguishes and identifies the source of goods or services in the marketplace. Trademarks are primarily used to protect the intellectual property rights of businesses and individuals by preventing others from using a similar mark that could create confusion among consumers.
Here are some key points to understand about trademarks:
- Distinctive Identifier: Trademarks serve as distinctive identifiers for products or services. They help consumers recognize and differentiate between the offerings of various companies or individuals.
- Protection: By registering a trademark, a business or individual gains exclusive rights to use that mark in connection with specific goods or services within a particular geographic region. This protection helps prevent others from using a similar mark in a way that could confuse consumers.
- Types of Trademarks: Trademarks can take various forms, including words, logos, symbols, slogans, colors, sounds, and even product packaging. These can all be registered as trademarks if they meet the necessary legal criteria.
- Registration: Trademarks can be registered with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) in the United States, or similar agencies in other countries. Registration provides stronger legal protection and is often recommended for businesses with valuable brands.
- Duration: Trademarks can last indefinitely as long as they continue to be used in commerce and the necessary maintenance filings and fees are paid. However, they can also be canceled if not actively used or if they become a generic term for the product or service.
- Geographic Scope: Trademark rights are typically limited to a specific geographic region or country where the trademark is registered. Businesses that operate internationally may need to register their trademark in multiple jurisdictions.
- Enforcement: Trademark owners have the responsibility to enforce their trademark rights. This may involve taking legal action against individuals or businesses that use the trademark without permission, leading to potential damages or injunctions.
- Benefits: Trademarks can provide several benefits to businesses, including brand recognition, customer trust, and the ability to build and protect brand value. They also allow consumers to make informed choices by associating a certain level of quality or origin with a product or service.
In summary, trademarks are essential tools for protecting the branding and identity of businesses and individuals. They play a crucial role in commerce by facilitating consumer choices and preventing unfair competition through the use of confusingly similar marks.
How Does Registering My Trademark Protect My Boston Business?
A registered trademark comes with valuable protections for your business including the presumption of nationwide validity. Nationwide validity means that your mark is protected from infringement in all 50 states. If you find that a third party is using your mark or something similar, you’ll have the right to take legal action.
How Long Does It Take To Register A Trademark?
It can take anywhere from 8 to 10 months to get your trademark approved by the USPTO. In some cases, the process can take more than a year. Fortunately, you gain some protections the day you submit your application, which is your “Priority Date”; Anyone who submits a similar trademark for a similar set of goods/services after your application date will have their trademark halted due to your prior filing. Here are some key milestones that can influence the overall time frame:
Here are some key milestones that can influence the overall time frame:
Initial application review: After submitting your trademark application, the trademark office will conduct an initial review to check for completeness and compliance with formal requirements. This review typically takes a around 6 months.
- Examination and publication: The trademark office will examine your application to determine if it meets the legal requirements for registration. This examination process involves assessing the distinctiveness of the mark and checking for any conflicts with existing trademarks. The duration of this stage can vary significantly depending on the backlog of applications and the complexity of the examination process.
- Publication for opposition: Once your trademark application passes the examination, it will be published in an official gazette or publication. This publication allows third parties to oppose the registration if they believe it conflicts with their existing rights. The opposition period can range from 30 days to several months, depending on the jurisdiction.
- Registration or further actions: If no oppositions or objections are raised during the opposition period, the trademark office will proceed with the registration process. This may involve additional administrative steps, such as paying registration fees, providing additional documentation, or responding to office actions. The duration of this stage can vary, but it often takes several months.
It’s worth noting that the timeline can be influenced by various factors, such as the complexity of your mark, the number of applications being processed by the trademark office, and any objections or oppositions that may arise. It’s essential to monitor the progress of your application, respond promptly to any requests or objections from the trademark office, and maintain open communication with your Boston Trademark Lawyer to expedite the registration process.
Is There a Difference Between a Trademark and a Service Mark?
There’s not much of a difference between a trademark and a service mark. A trademark is a word, logo, slogan, sound, or design that helps consumers identify the company behind a product. A service mark is similar, but it’s used to identify the company providing a service. Depending on the nature of your business in Boston, Massachusetts, and the goods or services you offer, you’ll either have a “trademark” or a “service mark.”
What’s The Difference Between The ® and TM Symbols?
The ® symbol and the TM symbol are used to indicate the trademark status of a word, phrase, logo, or symbol, but they convey different levels of legal protection and registration status:
- ® (Registered Trademark Symbol):
- The ® symbol is used to indicate that a trademark has been officially registered with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) in the United States or similar agencies in other countries.
- It signifies that the trademark owner has exclusive rights to use the mark in connection with specific goods or services, and it provides stronger legal protection.
- Unauthorized use of a registered trademark can result in legal consequences, including potential damages and injunctions against the infringing party.
- Only trademarks that have gone through the formal registration process and have been approved by the relevant authorities can use the ® symbol.
- TM (Trademark Symbol):
- The TM symbol is used to indicate that a word, phrase, logo, or symbol is being claimed as a trademark, but it has not necessarily been officially registered with a government agency.
- It is often used when a business or individual is using a mark to identify their goods or services in commerce, but they may not have completed the registration process or are in the process of seeking registration.
- The TM symbol does not provide the same level of legal protection as the ® symbol. However, it still signals to others that the owner considers the mark to be a trademark and is asserting some level of ownership or rights over it.
- The use of TM is not regulated by law, and it can be freely used by businesses and individuals to indicate their intent to claim trademark rights.
In summary, the ® symbol indicates that a trademark is officially registered and carries stronger legal protections, while the TM symbol is used to assert a claim to trademark rights, whether or not formal registration has been completed. Using the appropriate symbol helps inform others about the status of a trademark and can play a role in protecting intellectual property rights.
How Can I Find Out If a Trademark is Available?
To find out if a trademark is available, you can conduct a trademark clearance search. Here are some steps to help you in the process:
1. Trademark Databases: Start by searching trademark databases maintained by the relevant trademark office in your country. In the United States, for example, you can search the United States Patent and Trademark Office (USPTO) database using their online search tool, TESS (Trademark Electronic Search System). Similarly, other countries have their respective trademark databases accessible through their trademark office websites.
2. Similarity of Marks: When conducting a search, look for trademarks that are similar to the one you intend to use. Check for marks that are phonetically, visually, or conceptually similar to your proposed mark. Pay attention to variations in spelling, sound-alike names, or similar designs that might cause confusion among consumers.
3. Goods and Services Classification: Trademarks are registered in specific classes related to the type of goods or services they represent. Make sure to search for similar marks within the relevant classes that correspond to your products or services. This will help identify potential conflicts with existing trademarks in your industry.
4. Professional Search Services: If you want a more comprehensive and thorough search, you can consider hiring a professional trademark search firm or a trademark attorney who specializes in conducting clearance searches. They have access to more extensive databases and expertise in analyzing search results, helping you identify potential conflicts more effectively.
5. Domain Name Availability: In addition to trademark databases, it’s also advisable to check the availability of domain names that closely match your proposed trademark. This can help you ensure consistency and avoid potential conflicts in the online space.
6. Consultation with a Trademark Attorney: It’s highly recommended to consult with a trademark attorney or intellectual property professional who can guide you through the search process. They can help interpret the search results, assess potential risks, and provide legal advice on the availability and registrability of your proposed trademark.
Remember, conducting a trademark search is an essential step to evaluate the availability of a mark, but it does not guarantee absolute certainty. Trademark rights can be complex, and there may be marks that are unregistered or not yet published in the databases. Seeking professional advice can greatly assist in navigating the search process and making informed decisions regarding your trademark.
Can I Use a Trademark Without Registering It?
To find out if a trademark is available, you can conduct a comprehensive trademark search. The purpose of the search is to determine if there are any existing trademarks that are similar or identical to the one you intend to use or register. Here are several steps you can take to conduct a trademark search:
- Online database search: Start by searching the trademark databases maintained by the intellectual property offices or trademark registries in the relevant jurisdiction. Many countries have online trademark databases that allow you to search for registered trademarks. Examples include the United States Patent and Trademark Office (USPTO) database, the European Union Intellectual Property Office (EUIPO) database, and the World Intellectual Property Organization (WIPO) database. These databases can help you identify if a similar or identical trademark already exists.
- General internet search: Perform a general internet search using search engines to look for any unregistered or common law trademarks that may not be listed in official databases. This search can help you identify unregistered trademarks that may have acquired some level of protection through use.
- Professional trademark search services: Consider utilizing professional trademark search services or hiring an intellectual property attorney with expertise in trademark law. These services often have access to comprehensive trademark databases and specialized search tools to conduct in-depth searches. They can provide you with a detailed analysis of potential conflicts and help you make informed decisions about the availability of your desired trademark.
- Consultation with a Boston Trademark Attorney: It’s advisable to consult with a qualified intellectual property attorney who can guide you through the trademark search process and provide legal advice based on their expertise. They can help assess the search results, interpret the potential risks or conflicts, and advise you on the availability of your desired trademark.
Should I Hire a Trademark Attorney to Help Me Register my Trademark?
Whether or not you are required to hire an attorney depends on where you live.
If you’re living outside of the United States, then the United States Patent and Trademark Office (USPTO) actually requires that you hire an attorney who is licensed to practice law in the United States to represent you.
If you are living in the United States, then you aren’t required to hire a trademark attorney. However, it’s strongly recommended that you do hire an attorney who specializes in trademark law even if you do live within the United States. This is because your attorney will conduct a robust trademark search to ensure your mark isn’t too similar to an existing mark. In addition, your application will be submitted completely and accurately and will be more likely to move through the approval process more quickly.
Do I Need To Sell a Product or Service To Obtain a Registered Trademark?
You do not necessarily need to sell a product or service to obtain a registered trademark, but you do need to use the trademark in commerce in connection with the goods or services you intend to offer. Trademarks are primarily intended to protect marks that are used to identify and distinguish the source of goods or services in the marketplace.
Here are some important points to consider:
- Use in Commerce: To obtain a registered trademark in most countries, including the United States, you generally need to demonstrate “use in commerce.” This means you must use the trademark on the actual goods you sell or the services you provide, or you must have a bona fide intent to use the mark in the near future.
- Intent to Use: In some jurisdictions, including the United States, you can file a trademark application based on a bona fide intent to use the mark in commerce. This allows you to secure trademark rights before you start selling the associated products or services. However, you will eventually need to provide evidence of actual use in commerce to maintain and fully register the trademark.
- Specimen of Use: When applying for a trademark, you typically need to submit a specimen of use, which is evidence that shows the trademark being used on the goods or in connection with the services. For physical goods, this might include product labels or packaging. For services, it might include advertising materials or a website showing the mark used in association with the services.
- Maintenance: After obtaining a registered trademark, you must continue to use it in commerce to maintain your trademark rights. Failure to use the mark can result in the cancellation of your registration.
In summary, while you don’t necessarily need to have already sold a product or service to apply for a trademark, you must have a genuine intent to use the mark in commerce. The purpose of trademarks is to protect identifiers of the source of goods or services in the marketplace, so actual or intended use in commerce is a fundamental requirement in the trademark registration process.
What Should I Register First: The Name Of My Business Or My Brand Logo?
Whether you should register the name of your business or your brand logo first depends on your specific circumstances and priorities. Here are some considerations to help you make the decision:
- Business Name Registration:
- Legal Entity: If you’re starting a business, you’ll likely need to register your business name with the appropriate government authorities. This registration establishes your legal business entity (e.g., sole proprietorship, LLC, corporation) and ensures that no one else in your jurisdiction can use the same name for a similar type of business.
- Foundation: Registering your business name is often one of the first steps in setting up a business, as it’s essential for legal and operational purposes. It allows you to open bank accounts, sign contracts, and conduct business under that name.
- Brand Logo Registration:
- Brand Identity: Your brand logo is a crucial element of your business’s visual identity. It’s what customers often recognize first, and it plays a significant role in brand recognition and differentiation.
- Trademark Protection: If your brand logo is unique and distinctive, you may want to consider registering it as a trademark. Trademark registration provides legal protection for your logo, preventing others from using a similar mark in connection with similar goods or services. This protection is crucial for establishing and safeguarding your brand’s reputation.
So, the choice of whether to register your business name or your brand logo first depends on your business priorities. Here’s a general guideline:
- Register Your Business Name First: If you’re in the early stages of starting a business, registering your business name should typically be your first step. This ensures that you have a legal entity to operate under. Once your business name is registered, you can start using it in commerce.
- Register Your Brand Logo After Establishing Your Business: Once your business is up and running, and you have a clear brand identity, you can consider trademark registration for your brand logo. This provides additional protection for your visual brand elements.
Remember that the timing of registration may vary based on your business goals and resources. In some cases, it might make sense to work on both simultaneously, especially if your brand logo is a critical part of your business identity and you want to secure its legal protection early on. Consulting with an attorney or trademark specialist can also provide valuable guidance on the specific steps and timeline for registration in your jurisdiction.
What Is a Fanciful Trademark?
A fanciful trademark is a type of trademark that is inherently distinctive because it consists of a coined or invented word, term, or symbol that has no specific meaning and is not derived from any existing language. Fanciful trademarks are considered one of the strongest and most protectable types of trademarks under intellectual property law.
Here are some key characteristics of fanciful trademarks:
- Coined or Invented: Fanciful trademarks are created for the sole purpose of identifying and distinguishing specific goods or services. They are typically composed of entirely made-up words, letters, or symbols.
- No Existing Meaning: Fanciful trademarks have no meaning in any language before they are used to represent a brand. Because they are not descriptive or suggestive of the products or services they represent, they are less likely to be confused with other marks.
- High Level of Distinctiveness: Due to their uniqueness, fanciful trademarks are highly distinctive and immediately recognizable. This makes them easier to protect from potential infringement.
- Strong Legal Protection: Fanciful trademarks are typically granted strong legal protection because they are inherently distinctive. This means that they do not require evidence of secondary meaning or acquired distinctiveness to be registered or enforced. Their uniqueness alone makes them eligible for trademark protection.
Examples of fanciful trademarks include brand names like “Xerox” for photocopiers, “Kodak” for cameras and photography equipment, and “Pepsi” for soft drinks. These words had no prior meaning before they were coined as trademarks and are now well-known brands around the world.
Fanciful trademarks are often preferred by businesses because they provide a high level of brand recognition and legal protection. However, coming up with a truly fanciful mark can be challenging, as it involves creating a word or symbol that is not only unique but also capable of effectively representing and promoting your brand. It’s important to conduct a thorough trademark search to ensure that your fanciful mark is not already in use by another entity before attempting to register it.
How Long Does a Trademark Last?
The duration of a trademark’s protection can vary depending on several factors, including the jurisdiction in which it is registered and how well it is maintained. Here’s a general overview of trademark duration:
- Initial Registration Period: When you register a trademark, it typically grants you protection for an initial period, which varies from country to country. In the United States, for example, a trademark registration is initially valid for ten years. Other countries may have different initial registration terms.
- Renewal: To maintain trademark protection beyond the initial registration period, you must periodically renew the trademark registration by paying renewal fees. The renewal period and frequency also vary by jurisdiction. In the United States, for instance, you can renew a trademark indefinitely in ten-year increments, as long as you continue to use the mark in commerce and fulfill the renewal requirements.
- Use in Commerce: In many jurisdictions, continuous use of the trademark in commerce is a requirement for maintaining trademark rights. If you stop using the mark for an extended period, your trademark could become vulnerable to cancellation or non-renewal.
- Non-Use and Abandonment: If you fail to use the trademark for an extended period without a valid reason, or if you do not renew it as required by the relevant laws and regulations, your trademark may be considered abandoned, and its protection may be lost.
- Common Law Trademarks: In some jurisdictions, including the United States, you can establish and maintain trademark rights through common law use, even without formal registration. Common law trademark rights are based on actual use of the mark in commerce and can potentially last indefinitely as long as you continue to use the mark and protect it from infringement.
- International Trademarks: For international trademarks registered through the Madrid System (a centralized trademark registration system that allows you to file a single application for protection in multiple countries), the duration of protection is also dependent on the renewal schedules of individual member countries.
In summary, the duration of a trademark’s protection can vary depending on the jurisdiction, your continued use of the mark, and your compliance with renewal requirements. In many cases, trademark protection can be renewed indefinitely as long as the mark is actively used and renewal fees are paid on time. It’s essential to understand and comply with the specific rules and requirements for trademark maintenance in the jurisdiction(s) where you have registered your trademark to ensure ongoing protection.
What is TEAS Used For?
TEAS is the Trademark Electronic Application System (TEAS). This online portal enables you to quickly and easily submit your trademark application and other documents to the USPTO. You can also use this system to pay USPTO fees by using a credit card, electronic funds transfer, or through an existing USPTO deposit account.
What Does the Trademark Trial and Appeal Board do?
The purpose of the Trademark Trial and Appeal Board (TTAB) is to help resolve certain conflicts that may arise between trademark owners. For example, the TTAB will intervene if:
– One party believes another party’s existing or pending trademark will harm their business and should be canceled.
– A party wants to appeal an examining attorney’s decision to reject their trademark application.
TTAB proceedings have specific procedures and time-sensitive deadlines that must be adhered to. It’s in your best interest to hire a trademark attorney to assist you. A trademark attorney can guide you through TTAB proceedings and settle the dispute while keeping your best interests in mind.
Does My Business Need More Than One Trademark?
Whether your business needs more than one trademark depends on various factors, such as the nature of your business, the diversity of your products or services, and your branding strategy. Here are some considerations to help you determine if multiple trademarks are necessary for your business:
1. Product or Service Differentiation: If your business offers a wide range of products or services that are distinct from each other, it may be beneficial to consider separate trademarks for each category. This can help protect the unique identity of each offering and prevent confusion among consumers. For example, if you have a clothing company with separate lines for casual wear and athletic wear, it might be advantageous to have separate trademarks for each line.
2. Brand Expansion: If your business has plans to expand into new product lines or enter new markets, obtaining additional trademarks can be valuable. By securing separate trademarks for each new venture, you can protect the distinctiveness of your brand within each category and prevent potential conflicts with existing trademarks.
3. Geographical Expansion: If your business operates in multiple regions or countries, it may be necessary to consider trademarks specific to each jurisdiction. Trademark rights are typically territorial, so registering your mark in one country does not automatically provide protection in others. Obtaining separate trademarks in different regions can help ensure your brand is protected in the markets where you operate.
4. Branding Strategy: If your business utilizes sub-brands, different logos, or distinct visual elements for different product lines or divisions, it might be beneficial to consider separate trademarks for each brand or logo. This allows you to protect and distinguish each aspect of your business while maintaining a cohesive overall brand identity.
5. Licensing and Franchising: If your business intends to license or franchise your brand, having multiple trademarks can be advantageous. It enables you to grant specific rights to different licensees or franchisees while maintaining control over your brand and ensuring consistency.
It’s important to note that obtaining and managing multiple trademarks can involve additional costs and administrative efforts. It’s advisable to consult with a trademark attorney or intellectual property professional who can assess your specific business needs, advise you on the appropriate trademark strategy, and guide you through the registration process.
Ultimately, the decision to have multiple trademarks depends on the nature of your business, the breadth of your offerings, and your long-term branding goals.
Can I Submit a Trademark Application Prior To Selling Any Products or Services?
You can submit a trademark application before you’re ready to bring your products or services to market. You would just need to indicate that you are filing your application on an “intent to use” basis. This tells the USPTO that you intend to use the mark, but aren’t ready to yet.
If the trademark application is approved, then you’ll receive a Notice of Allowance (NOA) from the USPTO. That means you’ll have 6 months to either provide proof to the USPTO that you are using your trademark in commerce or request a 6-month extension. You are allowed up to 5 extension requests.
Is It Advisable To Register My Trademark Before My Company Is A “Success”?
Trademark registration needs to happen prior to your business becoming a success because at that point, it will be too late. Remember; the goal is to protect your brand before it becomes a target for theft by your competitors. If you wait until your business is a success, you may find that you’re infringing on an existing trademark or worse, that your competitors have preemptively registered your mark in a bid to push you out of the market.
Can I Trademark a Phrase?
Yes, you can trademark a phrase in the English language. In general, trademarks can be used to protect words, phrases, symbols, logos, and even sounds associated with a particular product or service. However, it’s important to note that not all phrases are eligible for trademark protection.
To successfully trademark a phrase, it must meet certain criteria:
1. Distinctiveness: The phrase should be unique and not commonly used in the industry or by competitors. It should be able to distinguish your goods or services from others in the marketplace.
2. Non-descriptiveness: The phrase should not describe the characteristics, qualities, or features of the goods or services it represents. It should not be a generic or common phrase that others might need to use in their business.
3. 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. This means that the phrase has become strongly associated with your specific goods or services in the minds of consumers.
4. Lawful use: The phrase should not be illegal or against public policy. It should not promote illegal activities, be offensive, or misleading.
Before applying for a trademark, it is advisable to conduct a comprehensive search to ensure that the phrase is not already being used by someone else in a similar context. This search helps to avoid potential conflicts and rejection of your application.
To officially register a trademark, you will need to file an application with the appropriate trademark office in your jurisdiction, such as the United States Patent and Trademark Office (USPTO) in the United States. The application process typically involves providing information about the mark, its intended use, and paying the necessary fees. It’s often beneficial to seek the assistance of a trademark attorney to ensure the process goes smoothly and to maximize your chances of successful registration.
Please note that trademark laws can vary by country, so it is essential to consult the specific regulations and requirements of your jurisdiction for accurate guidance on trademarking a phrase.
Can I Trademark a Logo?
Yes, you can trademark a logo. Trademark protection can be extended to logos, symbols, designs, and other visual elements that uniquely represent your business, product, or service. Registering a trademark for your logo helps establish your ownership and provides legal protection against unauthorized use by others.
To successfully trademark a logo, it should meet certain criteria:
1. Distinctiveness: The logo should be unique and distinguishable from other logos in your industry or market. It should be capable of identifying the source of your goods or services.
2. Non-generic: The logo should not be a generic or common design that is commonly used to represent the goods or services you offer. It should have a level of creativity and originality that sets it apart.
3. Non-confusing: The logo should not cause confusion with existing trademarks or logos. It should not be similar to any registered or pending trademarks in your industry that may create confusion among consumers.
4. Lawful use: The logo should not include any illegal or offensive elements. It should not violate any copyrights, infringe on existing trademarks, or promote illegal activities.
To officially register a trademark for your logo, you will need to file a trademark application with the appropriate trademark office in your jurisdiction, such as the United States Patent and Trademark Office (USPTO) in the United States. The application process generally involves providing information about the logo, its intended use, and paying the required fees. It is often recommended to seek the guidance of a trademark attorney to navigate the process effectively.
It’s worth noting that trademark laws and procedures can vary by country, so it is important to consult the specific regulations and requirements of your jurisdiction for accurate guidance on trademarking a logo.
Can I Trademark a Color?
Yes, it is possible to trademark a color, but it can be more challenging to do so compared to trademarking words, logos, or symbols. Color trademarks are a subset of non-traditional trademarks, which also include sound marks, scent marks, and three-dimensional (3D) shape marks. To successfully register a color as a trademark, you generally need to meet specific legal criteria and demonstrate that the color has acquired distinctiveness in the minds of consumers.
Here are some key considerations for trademarking a color:
- Distinctiveness: To obtain a color trademark, the color must be distinctive and serve as a source identifier for your goods or services. This means that consumers should recognize the color as uniquely associated with your brand.
- Secondary Meaning: You will likely need to show that the color has acquired secondary meaning in the marketplace. This means that consumers have come to associate the color with your brand, rather than seeing it as merely a decorative or functional element.
- Evidence: When applying for a color trademark, you may need to provide evidence that the color has been used extensively and exclusively in connection with your goods or services. This can include proof of advertising, packaging, and marketing materials that prominently feature the color.
- Specific Identification: Your trademark application should provide a clear and specific description of the color you want to trademark. This might include specifying the Pantone color code or other color identification methods.
- Competition: Be aware that certain colors may be more difficult to protect as trademarks due to their association with specific industries or because they are commonly used by competitors. For example, using red for a soft drink brand may be more challenging because it’s a common color in the beverage industry.
- Non-Functional: The color must not serve a functional purpose. If a color is essential for the functioning or utility of the product (e.g., green for a golf course putting green), it may not be eligible for trademark protection.
- Application Process: The process of registering a color trademark can be more complex and may involve a higher level of scrutiny by the trademark office. You should consult with a trademark attorney who is experienced in non-traditional trademarks to navigate the application process effectively.
It’s important to note that not all color trademarks are granted, and success in registering a color as a trademark can vary depending on the specific circumstances and the jurisdiction in which you’re applying. Working with a trademark attorney who specializes in non-traditional trademarks can help increase your chances of successfully registering a color as a trademark.
Can I Transfer My Trademark to Someone Else?
Yes, it is possible to transfer ownership of a trademark to someone else. The transfer of a trademark is typically accomplished through a process called trademark assignment. The assignment involves the transfer of all rights, title, and interest in the trademark from the current owner (assignor) to another individual or entity (assignee).
To transfer your trademark, you would need to follow certain steps. Here are some general guidelines:
- Verify eligibility: Ensure that you have the legal right to transfer the trademark. You should be the registered owner of the trademark or have the appropriate authorization to transfer it.
- Review legal requirements: Familiarize yourself with the specific laws and regulations governing trademark assignments in your jurisdiction. It’s advisable to consult an intellectual property attorney to ensure compliance with all legal requirements.
- Draft a trademark assignment agreement: Prepare a written agreement that outlines the terms of the trademark transfer. This agreement should clearly state the details of the assignment, including the assignor, assignee, the trademark being transferred, and any conditions or limitations associated with the transfer.
- Seek professional advice: It’s recommended to consult with an intellectual property attorney or a trademark professional who can assist you throughout the process. They can help ensure that the transfer is properly executed and all necessary documentation is in order.
- Execute the assignment: Both parties (assignor and assignee) should sign the trademark assignment agreement. It’s crucial to keep a record of this document, as it serves as evidence of the transfer.
- File the trademark assignment recordation or with the trademark assignment division of the USPTO, making sure to provide the required documentation, including the assignment agreement.
It’s important to note that the specific procedures and requirements for transferring a trademark are rigorously enforced, so please speak with one of our Boston Trademark Lawyers to ensure a smooth and valid transfer of your trademark.
Can I License My Trademark To Others?
Yes, you can license your trademark to others. Trademark licensing is a common practice where the owner of a trademark (licensor) grants permission to another party (licensee) to use the trademark in connection with specific goods or services. By licensing your trademark, you can generate additional revenue streams and expand the reach of your brand.
When licensing your trademark, it’s important to establish a formal licensing agreement that outlines the terms and conditions of the arrangement. The agreement should include provisions such as:
1. Scope of the license: Clearly define the scope of the license, including the specific goods or services for which the licensee can use the trademark. You can grant an exclusive license (sole rights to use the trademark within a certain market or territory) or a non-exclusive license (allowing multiple licensees to use the trademark).
2. Quality control: Maintain control over the quality of the goods or services bearing your trademark. Specify the quality standards that the licensee must meet and include provisions for monitoring and enforcing these standards.
3. Duration and termination: Define the duration of the license agreement and the conditions under which either party can terminate the agreement. This may include situations where the licensee fails to meet quality standards or breaches the terms of the agreement.
4. Royalties and fees: Determine the financial aspects of the license, such as the royalties or fees the licensee must pay for the right to use your trademark. Specify the payment terms, frequency, and any other financial arrangements.
It’s advisable to consult with an intellectual property attorney when drafting a trademark licensing agreement to ensure that it complies with the relevant laws and adequately protects your rights as the trademark owner.
Remember that trademark licensing does not transfer ownership of the trademark itself. You retain ownership of the trademark while granting others the right to use it under specified conditions.
Please note that trademark laws and regulations can vary by country, so it is important to consult the specific laws and requirements of your jurisdiction when licensing your trademark to others.
Can I License My Trademark to Others?
Yes, you can license your trademark to others. Licensing a trademark allows you, as the trademark owner, to give another person or entity permission to use your trademark for specific purposes, under certain conditions, and for an agreed-upon period. This arrangement is typically governed by a trademark licensing agreement, which outlines the terms and conditions of the licensing arrangement.
Here are some key points to consider when licensing your trademark:
- Control: While you can license your trademark, it’s essential to maintain a level of control over how it is used. This helps ensure that the quality and reputation associated with your trademark are upheld. Licensing agreements often specify how the licensee can use the trademark, including design specifications, quality standards, and geographic restrictions.
- Types of Licensing: There are different types of trademark licensing arrangements, including:
- Exclusive License: This grants exclusive rights to the licensee within a specific territory or for certain goods or services. The licensor typically cannot license the trademark to others in the same category or region.
- Non-Exclusive License: This allows multiple licensees to use the trademark for the same goods or services, often in different geographic regions.
- Co-branding: This involves using the trademark in conjunction with the trademark of another party for mutual benefit.
- Royalties: In many trademark licensing agreements, the licensee pays the licensor royalties or fees for the right to use the trademark. These payments can be based on various factors, such as a percentage of sales, a flat fee, or a combination of both.
- Duration: Licensing agreements specify the duration of the license. It can be for a specific term (e.g., five years) or ongoing, subject to renewal.
- Termination: The agreement should outline the conditions under which either party can terminate the licensing arrangement. Common termination reasons include breach of contract, failure to meet quality standards, or non-payment of royalties.
- Trademark Registration: In some jurisdictions, it may be necessary for the trademark owner to have a registered trademark before entering into a licensing agreement. Registration provides stronger legal protection for the trademark.
- Quality Control: Trademark owners must maintain control over the quality of goods or services associated with the trademark. Failing to do so can jeopardize the trademark’s validity and protection.
- Record Keeping: Both parties should keep accurate records of their licensing activities, including sales, royalties, and any quality control measures implemented.
Licensing your trademark can be a beneficial way to generate revenue, expand your brand’s reach, and strengthen your brand’s presence in the marketplace. However, it’s crucial to draft a well-defined licensing agreement that protects your trademark’s integrity and reputation and consult with legal professionals who specialize in intellectual property and trademark law to ensure compliance with relevant laws and regulations.
Should I Register My Trademark In My State Or Should I Register It With The USPTO?
If you are looking to obtain broader protection for your trademark, it is generally recommended to register your trademark with the United States Patent and Trademark Office (USPTO) rather than registering it solely in your state. Here’s why:
1. Nationwide Protection: Registering your trademark with the USPTO provides you with exclusive rights to use the mark throughout the entire United States, regardless of the specific state where you register. This means that you can prevent others from using a confusingly similar mark in any state.
2. Federal Benefits and Priority: Registering with the USPTO grants you several important benefits and legal presumptions. It establishes a public record of your ownership, making it easier to enforce your rights in case of infringement. It also gives you the right to use the ® symbol, indicating that your mark is registered and providing notice to others. Additionally, federal registration creates a legal presumption of your ownership and the validity of your mark, which can be crucial if you need to pursue legal action.
3. Expansion and Online Presence: If you plan to expand your business beyond your state or operate in interstate commerce, federal registration offers greater protection as you grow. It also helps secure your online presence by allowing you to take advantage of domain name dispute resolution procedures and safeguards against cybersquatting.
4. Consistency and Simplicity: Registering your trademark with the USPTO ensures consistency in the application and examination process. It simplifies the process by having a unified registration system for trademarks, reducing the need to navigate individual state requirements.
While state trademark registration can provide limited protection within that specific state, it does not offer the same level of comprehensive protection and nationwide recognition as federal registration.
It’s important to note that trademark laws can be complex, and the specific circumstances of your situation may influence the best course of action. It is advisable to consult with an intellectual property attorney to evaluate your options and determine the most suitable approach for protecting your trademark.
What is TEAS?
The USPTO offers an option for you to submit your trademark application online using TEAS. TEAS stands for the Trademark Electronic Application System. TEAS is easy to use and available 24/7. You can also pay your application fees through TEAS.
What Is a Trademark Office Action?
One of the more frustrating aspects of the trademark registration process is receiving a trademark refusal from the United States and Patent Office (USPTO). You’ve no doubt done a lot of work to complete your application, so receiving a notice of refusal can be disappointing. If your trademark application is rejected, then you’ll receive an Office Action from the USPTO. An Office Action lists the reasons that your trademark application was rejected and is typically issued for one of the following reasons:
Refusal #1 – Descriptiveness
The USPTO may refuse to register your trademark if they deem it to be too “Descriptive” of the products/services sold under the banner of your trademark. Specifically, if your prospective trademark uses words or phrases that describe a quality or characteristic of the good or service that you are providing, the mark cannot function as a brand identifier and therefore is ineligible for trademark protection. For example, if someone tried to trademark the name “Steamy Hot” for their brand of Shower faucets, it would be refused. Those words are simply describing characteristics of all shower faucets and it would be improper for one shower utility business to have the exclusive right to those words.
If your mark is rejected for being “Merely descriptive“, please contact one of our trademark attorney who may be able to come up with a solution. For example, simply adding a unique word before or after the descriptive words can distinguish the mark so that it serves as a true brand identifier.
Refusal #2 – Failure to Function
Another common reason that the USPTO may refuse your mark is because of what is known as a failure to function. This means, your desired trademark is not capable of identifying a specific product or service.
Examples of phrases that fail to function as trademarks may be “drive safely” or “give thanks.” Consumers would more likely see these as social messages and not necessarily associate them with a product or service. Remember, the USPTO wants to see trademarks that are unique and identifiable.
Then again, one of the most successful trademarked phrases in advertising history is “Just Do It” by Nike. So, it is certainly possible to trademark a common phrase in the right circumstances. Just be sure to talk to your trademark attorney first.
Refusal #3 – Likelihood of Confusion
Receiving a trademark refusal on the basis of likelihood of confusion means that your mark is too similar to an existing registered mark. What’s so frustrating about this type of refusal is that it is entirely subjective. One person may see two logos as similar whereas someone else may seem them as distinct from one another.
To reduce the risk of receiving this type of rejection from the USPTO, be sure to conduct a knockout search prior to submitting your application. This search of the USPTO records will pull up any marks similar to yours. If you find a mark that similar to yours, then your best bet is to come up with a new mark or alter yours significantly enough so that it is unique.
The Difference Between First Refusal and Final Refusals
The first refusal from the USPTO is just that, a first refusal. You will have the opportunity to argue your case to try to get them to overturn the decision. Be sure to give it your best shot because the first response is typically the most likely to be accepted by the examining attorney (at least as an anecdotal matter).
If you get a final refusal from the USPTO then that means they consider the case closed and there’s little chance of having the decision overturned. You have the right to appeal the decision of course, but your chance of success is low and there may be other strategies to consider that may yield better results.
Contact a trademark attorney as soon as possible if you receive an Office Action. Understanding why your mark was rejected will help you plan an effective strategy to overcome the USPTO’s decision and your attorney can advise you on what to do next and draft a response to the USPTO if needed.
What Should I Do If I Receive An Office Action On My Trademark Application?
Receiving an office action on your trademark application means that the trademark examining attorney at the relevant government trademark office has identified issues or deficiencies with your application. It’s a standard part of the trademark registration process, and it provides you with an opportunity to address and resolve any concerns. Here are steps to take if you receive an office action on your trademark application:
- Review the Office Action Thoroughly:
- Carefully read the office action letter to understand the specific issues raised by the examining attorney. It will outline the reasons for the refusal or the requirements you need to meet.
- Determine a Response Strategy:
- Based on the issues raised, determine the appropriate response strategy. This could involve amending the application, providing additional information or arguments, or addressing any specific concerns.
- Adhere to Deadlines:
- Pay attention to the deadline provided in the office action for responding. The deadline is typically set within a specific timeframe, often six months from the date of the office action. Failing to respond within the deadline can result in the abandonment of your trademark application.
- Consult with an Attorney:
- If you’re uncertain about how to respond or if the issues are complex, it’s advisable to consult with a trademark attorney or agent who specializes in trademark law. They can provide expert guidance and help you prepare a well-structured and persuasive response.
- Address the Specific Issues:
- Your response should directly address each issue raised in the office action. If corrections or amendments are required, make sure they are accurately and clearly reflected in your response.
- Provide Evidence and Arguments:
- If necessary, provide evidence and arguments to support your case. For example, if the examining attorney has questioned the distinctiveness of your mark, you might provide evidence of prior use or consumer recognition.
- Submit a Complete Response:
- Ensure that your response is complete, accurate, and complies with all the rules and requirements of the trademark office. Any missing information or errors could lead to further delays or refusals.
- Follow Up:
- After submitting your response, monitor the status of your application through the trademark office’s online portal or communication channels. You may need to correspond further with the examining attorney if they have additional questions or requests.
- Be Patient:
- The examination process can take time, especially if multiple rounds of correspondence are required. Be patient and responsive to any further requests from the trademark office.
- Consider Appeal or Additional Action:
- If your response does not result in a favorable outcome, you may have the option to appeal the decision or explore other avenues, such as amending the application or seeking a negotiated resolution with the examining attorney.
Responding to an office action is a critical step in the trademark registration process, and it’s essential to take it seriously and professionally. Working with a qualified trademark attorney can significantly improve your chances of successfully addressing the issues raised in the office action and obtaining registration for your trademark.
Can I Request An Expedited Approval Of My Trademark Registration?
In general, you can’t request expedited approval of your application, which is why you should submit your trademark application as soon as you can.
However, are certain circumstances in which the USPTO will allow the application process to be expedited. You can request an expedited application process in matters of litigation, when there’s the possibility of trademark infringement, or when there exists a need to get a U.S. trademark to obtain a registration in a foreign country. Keep in mind, however, that even in these special circumstances, the process will take 5 or 6 months as opposed to 8 or 10.
If you think that any of these scenarios apply to you, and you want to apply for expedited processing, then it’s best to consult with a trademark attorney who can advise you on what steps you should take.
What is the Official Gazette?
The Official Gazette (OG) is a USPTO publication that comes out every Tuesday. It includes information about trademarks that have been approved. Once a trademark is published in the OG, a third party has 30 days to come forward and oppose the trademark. If no one opposes the mark, then it is officially registered.
What is a Specimen?
A specimen is a sample of how you intend to use your trademark. The USPTO will accept product labels, signage, packaging, flyers, brochures, website screenshots, etc. as specimens. Consult a trademark attorney if you are unsure about what you should submit as a specimen.
Web Specimens
Remember, depending on the nature of the product/service sold under the banner of the trademark, a different type of “Specimen” will be deemed appropriate or inappropriate to satisfy the Use in Commerce requirement. This is of course quite intuitive; an accountant would necessarily advertise his services in a different manner than a boutique guitar manufacturer and one could certainly imagine that the Specimen each respective seller would have would look quite different.
Today, e-commerce and online marketplaces are the norm and as businesses continue to develop digital platforms to sell their products, the nature of the Specimens required to illustrate Use in Commerce will evolve accordingly. While submitting “web specimens” to the USPTO may seem simple, there are plenty of opportunities to make errors that can delay the registration or renewal of your trademark. Let’s look at some of the most common errors business owners make when submitting web specimens and how to avoid them.
What Are the Requirements for Acceptable Web Specimens?
Let’s say you want to include a link to a webpage, or a screen shot of a webpage as your specimen. If so, then you must be sure to:
- Include a description and/or a picture of the product.
- Clearly show your trademark in association with the product.
- Give a clear and obvious method for consumers to purchase the product.
These may not seem like difficult requirements for trademark applicants to meet, but many web specimens submitted to the USPTO are not accepted.
common errors business owners make when submitting web specimens and how to avoid them.
Under what Circumstances are Web Specimens Rejected by the USPTO?
Here are some common reasons why a web specimen may fail:
- The mark is not prominent enough: The USPTO wants to see that the mark is prominently displayed on the page. To help your mark stand out, make sure it’s a different color than surrounding text and/or appears in bold or italic fonts. You may boost the size of your mark on the page and use the TM symbol with your mark as well.
- The mark is not close enough to the products: Your trademark should appear in close proximity to the products displayed on the page. The USPTO won’t accept the web specimen if your mark appears on the page, but not near any products it is associated with.
- Insufficient ordering information. Another reason why a web specimen may be rejected is that there is no clear and obvious way for a consumer to order the goods. The USPTO wants to see a phone number to call and place an order, a link or tab with the text “Shop Online” or “Buy Now,” or a shopping cart icon. Without those obvious ordering cues, your web specimen will be rejected.
Need help with your specimen? Speak to one of our trademark attorneys.
What’s The Difference Between a Live Trademark and a Dead Trademark?
Perhaps the best thing about the USPTO is its online Trademark Electronic Search System (TESS), which is fully transparent and available for anyone to access in order to search and analyze existing trademark applications. One thing you’ll see when searching for a given term is that relevant trademarks (displayed in the search results) will be identified as either LIVE or DEAD. These are critical identifications and should undoubtedly be considered when deciding whether or not to pursue your given mark (LIVE means tread carefully whereas DEAD means tread less carefully:)).
LIVE Trademarks
As you might already assume, a live trademark is one that is still active and recognized by the USPTO as a in contention for protection. You can infer that an entity with a live trademark has stayed on top of their renewal and maintenance documents. However, don’t be confused. The mere Live label does not necessarily mean that a trademark is Registered – Instead, the designation simply means that it has not gone Abandoned and is still minimally under review by the USPTO for prospective registration.
Why this matters is that if you apply for a mark that is too similar to an existing Live application, your mark might very well be rejected on a 2(d) likelihood of confusion claim. Be sure to always conduct a knockout search of all live trademarks before you submit your trademark application. That way, you can amend your application (hopefully by sufficiently changing the mark itself) to distinguish it from the Live mark in question.
“Live trademarks” do not stay Live forever and if the Applicant does not take the necessary steps to preserve the integrity of the mark (filing a statement of use, answering an office action, submitting post-registration renewal documents etc.) the mark may expire. Please keep an eye on the renewal dates of any trademark that you might think will block the registration of your mark. You may find that the mark has expired, clearing the way for you to submit your application.
DEAD Trademarks
Dead trademarks, on the other hand, are ones that have been allowed to expire, have been abandoned, or have been canceled outright by the Trademark Trial and Appeal Board (TTAB). In some instances, dead trademark applications occur because the applicant did not try, or failed to overturn an application rejection.
Trademarks that are considered dead don’t pose any threat to pending trademark applications. However, finding out exactly how and why a trademark application or registration died can help you make sure that you don’t make similar mistakes when filing your application. Did the trademark owner fail to submit renewal documents? Was the trademark deemed to be merely descriptive or too generic? Was there a likelihood of confusion rejection which the applicant did not respond to and instead simply let the mark go abandoned? Understanding why other marks have gone abandoned, and are therefore now Dead, is a powerful strategy to anticipate issues that you may come across in submitting your own application.
Pay attention to the date of expiration! Just because a trademark is listed as dead with the USPTO, there is still a possibility that the trademark owner is still using it and may in fact still resurrect the dead mark if done in time!
If My Trademark Is Registered In The United States Is It Protected In Other Countries As Well?
No, registering a trademark in the United States does not automatically provide protection for your trademark in other countries. Trademark rights are generally territorial, meaning that they are limited to the country or region where the trademark is registered. To protect your trademark in other countries, you need to apply for trademark registration in each country where you want protection.
However, there are some international mechanisms and agreements that can simplify the process of obtaining trademark protection in multiple countries:
- Madrid System: The Madrid System for the International Registration of Marks allows trademark owners to file a single international application with the World Intellectual Property Organization (WIPO) to seek protection in multiple member countries. This system is particularly useful for businesses seeking trademark protection in several countries.
- Regional Trademark Systems: Some regions have regional trademark systems that allow for a single application to cover multiple countries within that region. For example, the European Union has the European Union Trade Mark (EUTM) system, which provides protection across all EU member states with a single application.
- Bilateral and Multilateral Agreements: Some countries have bilateral or multilateral agreements that simplify trademark registration for citizens or residents of those countries. For example, the Paris Convention for the Protection of Industrial Property allows for priority claims, which can make it easier to file trademark applications in multiple member countries.
It’s important to note that the requirements and procedures for trademark registration vary from one country to another. When seeking international trademark protection, it’s advisable to work with a trademark attorney or a specialized trademark agent who is familiar with the specific rules and requirements of each country or region where you want to register your trademark. Additionally, conducting comprehensive trademark searches in each jurisdiction is crucial to ensure that your chosen mark does not conflict with existing trademarks in those countries.
Is There Such a Thing As An “International Trademark”?
There is no single “International Trademark” that provides protection in all countries around the world. Instead, international trademark protection is typically achieved through a combination of national or regional trademark registrations, international agreements, and systems designed to simplify the process of obtaining trademark protection in multiple countries. These mechanisms do not create a single global trademark but facilitate the management of trademark rights on an international scale.
Here are some important international trademark-related mechanisms:
- Madrid System for the International Registration of Marks: The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to file a single international application to seek protection in multiple member countries. It simplifies the process of extending trademark protection to multiple countries, but it does not create a single global trademark. Each national or regional trademark office in the countries designated in the application still examines and grants or refuses protection based on their own laws and requirements.
- European Union Trade Mark (EUTM): The EUTM system allows for the registration of trademarks that provide protection across all member states of the European Union with a single application. While it offers a unified registration system for EU member countries, it is specific to the EU and does not extend protection outside of this region.
- Regional Trademark Systems: Various regions, such as the African Intellectual Property Organization (OAPI) and the African Regional Intellectual Property Organization (ARIPO), have regional trademark systems that offer trademark protection across multiple member countries.
- Bilateral and Multilateral Agreements: Some countries have bilateral or multilateral agreements that facilitate trademark protection between them. For example, the Paris Convention for the Protection of Industrial Property allows for priority claims and certain rights in member countries.
In summary, while there is no single “International Trademark” that covers all countries, these international mechanisms and agreements simplify the process of obtaining trademark protection in multiple countries or regions. However, trademark owners must still comply with the laws and requirements of each individual country or region where they seek protection. Consulting with a trademark attorney or agent with expertise in international trademark law can be crucial for navigating these systems effectively.
Are Foreign Trademark Applicants Required to Use U.S.-based Trademark Attorneys?
Unfortunately, the USPTO has had to deal with quite a bit of fraudulent activity (at least historically) from foreign applicants and ultimately felt that it did not have sufficient control over the trademark application process from foreign applicants to allow independent representation and/or foreign representation. Thus, the USPTO has implemented a new rule requiring all foreign trademark applicants to undertake representation by US licensed trademark attorneys. Indeed, the new rule requires any foreign-domiciled trademark applicant who wishes to conduct business with the USPTO to be represented by an attorney who is licensed to practice law in the United States (minimally licensed to practice in one of the US’s 50 States). This has been the requirement of the USPTO since August of 2019. You might now very well be wondering, how does the USPTO know who is and who is not a “Foreign Applicant”? Very good question. To understand the living arrangements (and therefore domicile status) of each trademark applicant, the USPTO requires all trademark applicants and indeed even pre-existing registrants to provide their domicile address.
When precisely is this rule triggered? The activities that require a foreign entity to be represented by a U.S. attorney include:
- Submitting trademark applications
- Submitting maintenance documents
- Responding to Office Actions
- Opposing pending trademarks
- Appearing before the Trademark Trial and Appeal Board (TTAB)
This rule also applies to foreign domiciled applicants submitting Madrid Protocol applications that designate the U.S. In addition, if a foreign entity submitted their application prior to August of 2019, that entity will need to hire a U.S.-based attorney for any future interactions with the USPTO.
How is a Foreign-Domiciled Trademark Applicant Defined?
According to the USPTO, a foreign-domiciled applicant is defined as:
- A person with a permanent home address outside of the United States and the territories of the United States (e.g., Guam, Puerto Rico).
- An entity whose permanent place of business is outside of the United States and the territories of the United States.
Why Does the USPTO Require Foreign Applicants to Be Represented by U.S. Licensed Attorneys?
As mentioned, the USPTO was receiving many fraudulant filings with fraudulant Statements of Use and returning the power to US attorneys to file these applications gives the USPTO (supposedly) greater control over the process. Similarly, by requiring US Attorneys to represent foreign applicants, the idea is that the actual quality of the trademark applications and filings submitted would be higher and in greater conformity with US trademark law. Prior to the requirement, foreign trademark filings were typically submitted by non-attorneys or attorneys licensed to practice law in other countries, but not the U.S. As a result, submissions were often submitted inaccurately or with errors, which caused delays throughout the system.
By requiring a foreign entity to hire a U.S.-licensed attorney, the USPTO can be sure that any filings will be reviewed and prepared by someone who understands U.S. law. Although a foreign applicant may hire any U.S.-licensed attorney, it should be noted that the USPTO highly recommends that foreign applicants hire U.S.-based attorneys who specifically practice trademark law.
What Specific Information Must a U.S.-Based Attorney Include in Trademark Filings?
Any U.S-based attorney who submits documents or filings to the USPTO should be sure to include:
- The Attorney’s name
- The Attorney’s mailing address and email address
- A statement from the highest court of a U.S. state that declares the attorney is an active member of the bar in that state
- A state bar number and year of admission into the bar
Can Foreign Entitles Hire a U.S.-Based Patent Agent?
It depends. While a U.S. based patent attorney can represent foreign entities before the USPTO in both trademark application and patent application matters, patent agents are not necessarily licensed to practice law and therefore are ineligible to assist with trademark filings or appearances before the TTAB. Similarly, Canadian patent agents ar eno longer permitted to represent a Canadian trademark applicant and must assign power of attorney to a US licensed attorney.
Can Foreign Entitles Hire a U.S.-Based Patent Agent?
It depends. While a U.S. based patent attorney can represent foreign entities before the USPTO in both trademark application and patent application matters, patent agents are not necessarily licensed to practice law and therefore are ineligible to assist with trademark filings or appearances before the TTAB.
What is a Trademark Power of Attorney and When Do I Need One?
A trademark Power of Attorney (POA) is a specific designation that is required in a select few circumstances in the world of trademark law. When it is required, only individuals who have the appropriate authority may sign the POA. Let’s look deeper into the nuances surrounding POAs including when and when you do not need one.
Anytime a U.S. attorney has acted in a legal capacity in regard to a trademark registration, they are listed as the attorney of record for that particular registration. If the owner of the registration wishes to retain the services of another attorney to take action on that trademark registration, then a trademark POA will be required by the United States Patent and Trademark Office (USPTO).
Once a POA has been filed to revoke power from the previous attorney, new counsel may immediately act on behalf of their client with regards to the trademark. New counsel does not have to wait for the new POA to be processed by the USPTO before representing their client.
For example, if attorney A helped you file your trademark application, but you wanted attorney B to respond to an Office Action, then you would file a Power of Attorney to revoke attorney A of power, and attorney B could respond as soon as that happened.
Who is Qualified to Sign a Trademark Power of Attorney?
According to the USPTO, there are a select group of people within a company who can sign a trademark POA. A trademark POA may be signed by the individual trademark applicant or registrant if they are the owner of the company. In the case of a larger corporation, the POA may only be signed by someone who has the authority to legally bind the company to any obligation or agreement. For companies domiciled in the United States, this person must be an officer of the corporation such as CEO, CFO, COO, etc.\
Corporations that are domiciled outside of the United States must hire a U.S.-based trademark attorney who can sign as “attorney for applicant” or “attorney at law.” Foreign attorneys or officers of a foreign company are not authorized to sign any trademark POA.
Is a Trademark POA Forever? What are the Time Constraints on the POA?
A trademark Power of Attorney ends when the application converts to a registered trademark, the applicant abandons or cancels the application, or when ownership of the trademark application is transferred to another entity.
Is a Trademark POA Different from the Appointment of a Domestic Representative?
Yes, a trademark POA is different from the appointment of a domestic representative. A company or entity may hire a domestic representative when legal action is brought against it in regard to trademark matters. All legal documents must them be served to the domestic representative. All foreign companies must appoint a domestic representative when dealing with the USPTO in all matters. Although not required, it’s highly recommended that U.S.-based companies hire domestic representatives as well.
Are There Times When a Trademark POA is Not Required?
A trademark POA is not required when:
- Submitting a trademark registration application.
- Filing a Statement of Use
- Filing an Amendment to Allege Use
- Responding to an Office Action.
Keep in mind that you may need to use counsel for the above if there is no U.S. attorney on record, and/or you are domiciled outside of the United States.
If you are a foreign entity with a non-U.S.-based attorney, seeking to enter the United States through an international Madrid Protocol Application, you would not need to sign a trademark POA. You would be considered “unrepresented” by the USPTO since your original attorney would not be licensed to practice law in the United States.
Does My Trademark Require Maintenance After It Is Registered?
Yes. The USPTO lists two key trademark renewal dates. The first important mark is between the 5th and 6th year following registration of the trademark application. During this time, the Applicant must file a Declaration of Use which shows that the mark is still in fact being used in interstate commerce. Should you fail to file this use statement in time (along with the appropriate specimen), the trademark will go abandoned. The statement of use will included a signed declaration asserting that the applicant is continuing to use the trademark in conjunction with the products/services listed in the application along with a specimen which provides a visual representation of such use (an amazon page showing the trademark along with the product sold). Between the 9th and 10th year following the registration of the mark, the applicant will be required to complete (basically) the same process to prove Use. As always, there are associated fees with these filings which will be a function of the number of Classes listed in the Registration.
How Do I Enforce My Trademark Rights?
Enforcing your trademark rights is essential to protect your brand from infringement and unauthorized use by others. Here are steps to take when enforcing your trademark rights:
- Monitor Your Trademark:
- Regularly monitor the marketplace for any potential unauthorized use of your trademark. This can include monitoring online platforms, physical stores, and industry publications.
- Document Infringements:
- Keep detailed records of any instances of trademark infringement or unauthorized use. This documentation can be valuable evidence if legal action becomes necessary.
- Cease and Desist Letter:
- If you identify a party that is infringing on your trademark, consider sending a cease and desist letter. This letter should:
- Clearly state your trademark rights.
- Describe the infringing activity.
- Demand that the infringing party stop using your trademark.
- Set a reasonable deadline for compliance.
- Mention potential legal consequences if the infringement continues.
- If you identify a party that is infringing on your trademark, consider sending a cease and desist letter. This letter should:
- Negotiation and Settlement:
- In some cases, you may be able to resolve the issue through negotiation and settlement. This could involve reaching an agreement with the infringing party, such as a licensing arrangement, a change in branding, or financial compensation.
- Mediation or Alternative Dispute Resolution (ADR):
- If negotiations do not yield a resolution, consider alternative dispute resolution methods, such as mediation or arbitration, to settle the dispute without going to court.
- Trademark Office Actions:
- If another party has applied for a trademark that conflicts with yours, you can oppose their trademark application with the relevant trademark office. This can prevent the registration of conflicting trademarks.
- File a Lawsuit:
- If informal attempts at resolution fail, you may need to file a trademark infringement lawsuit in a court of law. Your attorney can guide you through this process, which may include seeking an injunction to stop the infringing activities and pursuing damages.
- Enforce Online:
- If trademark infringement occurs online, consider using mechanisms provided by online platforms, such as filing a complaint with a domain registrar, submitting a DMCA takedown notice for copyright infringement (if applicable), or reporting trademark infringement to social media platforms.
- International Enforcement:
- If your trademark rights extend to multiple countries, be prepared to enforce them in each jurisdiction where you have protection. This may involve working with local counsel or utilizing international trademark treaties and agreements.
- Stay Proactive:
- Enforcement is an ongoing process. Continue to monitor and take action against any new instances of trademark infringement as they arise.
- Protect Your Trademark Registration:
- Maintain your trademark registration by complying with renewal requirements and using the mark in commerce. This helps ensure that your trademark remains valid and enforceable.
It’s important to consult with a qualified trademark attorney when enforcing your trademark rights, especially if legal action is necessary. An attorney can assess the strength of your case, advise on the most appropriate enforcement actions, and represent your interests effectively in negotiations or legal proceedings.
Why Trademark Registration Matters for Boston Businesses
The most populous city of the Commonwealth of Massachusetts, Boston has that spirit of adventure and entrepreneurship in the small-business owners operating in the city today. While that drive and determination is a good thing, entrepreneurs in Boston need to also remember to register their desired trademarks with the USPTO before diving headlong into a new business venture.
Imagine the following: Lisa has been working for years to create her own line of all-natural granola. She has landed on a few delicious recipes using local ingredients. Her plan is to sell her varieties of granola direct to customers on her website. She names her granola company Fresh and Natural Granola. Her friend has suggested she speak to a trademark attorney about trademark registration, but Lisa wants to wait until her business has gotten off the ground.
Lisa launches her site and begins selling her granola. The orders start coming in faster than she imagined and she considers hiring someone to help with order fulfillment so she can focus on production.
Just about 2 months in, Lisa receives a cease-and-desist letter from a small chain of grocery stores in Somerville called Fresh and Natural Supermarkets. They believe Lisa is infringing on their trademark and want her to stop distributing her granola until she rebrands. Lisa is devastated about this turn of events and contacts a trademark attorney to figure out what she should do next.
By working with an attorney to register a trademark right from the beginning, even small businesses like Lisa’s can have the confidence to invest in their brand and grow their business with confidence.
If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.