Trademark Lawyer Dallas: Dallas, Texas Businesses Use Cohn Legal for Trademark Services
Abe Cohn is the Managing Partner of Cohn Legal, serving clients in Dallas, Texas. Abe loves advising his clients on a variety of intellectual property law matters, litigating trademark disputes, and managing various corporate transactional work. Abe specializes in working with startups and entrepreneurs and relishes the opportunity to help companies build something from scratch.
Top Questions Dallas, Texas Businesses Have About Protecting a Trademark
How do I know if my trademark is eligible for federal registration?
To determine if your trademark is eligible for federal registration, you need to ensure it meets certain criteria. The USPTO (United States Patent and Trademark Office) requires that a trademark be distinctive and not too similar to an existing registered trademark. It must be used in commerce, meaning it is associated with goods or services that are being sold or offered to the public. Additionally, your trademark should not be merely descriptive or generic. A comprehensive trademark search is recommended to identify any potential conflicts. Consulting with a trademark attorney can help assess eligibility and guide you through the application process.
What are the differences between state and federal trademark protection?
State trademarks are registered at the state level and offer protection only within the borders of that state. They are typically easier and less expensive to obtain but have limited scope. In contrast, federal trademarks, registered with the USPTO, provide nationwide protection and exclusive rights to use the mark on a national scale. Federal registration also offers additional legal benefits, such as the ability to file lawsuits in federal court and the option to use the ® symbol, which indicates your trademark is federally registered.
Can a trademark be renewed indefinitely?
Yes, a federally registered trademark can be renewed indefinitely, as long as it remains in use and its renewal requirements are met. A trademark must be renewed every 10 years, and the owner must file a declaration of continued use between the 5th and 6th years after registration. If the mark is no longer in use or if the owner fails to submit the renewal documents, the trademark may be canceled. Continuous use is key to maintaining your trademark’s protection.
How do I deal with a cease and desist letter for trademark infringement?
If you receive a cease and desist letter, it’s important to take it seriously. The letter typically demands that you stop using a trademark that allegedly infringes on someone else’s rights. Your first step should be to assess the situation by reviewing the claims made in the letter and conducting a trademark search to confirm if your mark is infringing. If you find that there is no infringement, you may choose to respond and explain your position. If the claim is valid, you may need to cease using the mark or reach a settlement with the other party. It’s advisable to consult a trademark attorney to navigate this process.
What should I do if my trademark application is rejected?
If your trademark application is rejected, you will receive a notice from the USPTO detailing the reasons for the refusal. The most common reasons for rejection are issues with distinctiveness or similarity to an existing trademark. You can either amend your application to address the objections or file an appeal. In some cases, you may be able to reapply with a modified version of the mark. Consulting with a trademark attorney can help you understand the reasons for rejection and guide you through the appeal or reapplication process.
Can my trademark be challenged after it’s registered?
Yes, a registered trademark can be challenged after it is granted. Challenges can come from other parties who believe your trademark conflicts with theirs, or from the USPTO itself if it determines that your trademark was granted in error. A challenge can result in the cancellation of your trademark, or it can lead to legal proceedings where you must defend your trademark’s validity. It’s essential to maintain proof of use and be prepared to defend your trademark rights in case of a challenge.
What should I include in my trademark application?
When applying for a trademark, you need to provide several key pieces of information, including a clear representation of the mark (e.g., logo, word, slogan), the goods or services associated with the mark, and the date of first use in commerce. You must also provide the appropriate trademark classification and indicate whether you are currently using the mark in commerce or intend to use it in the future. A thorough and accurate application will improve the likelihood of approval, and seeking legal guidance is recommended to ensure all aspects are covered.
How do I protect my brand from counterfeit products?
Protecting your brand from counterfeit products involves a combination of legal action and preventative measures. Start by registering your trademark at the federal level to gain exclusive rights to the mark. Regularly monitor the market, both online and offline, to identify counterfeit goods. If counterfeit products are found, you can take several steps, including sending cease-and-desist letters, filing complaints with e-commerce platforms (such as Amazon or eBay), and pursuing legal action. Additionally, educating consumers about authentic products and offering clear branding can help combat counterfeiting.
What are the consequences of not registering a trademark?
The consequences of not registering a trademark include limited legal protection. Without registration, you don’t have nationwide exclusive rights to your mark, and your ability to defend it in court is weakened. You may also face challenges in proving ownership and priority if another party uses a similar mark. Without federal registration, you can’t use the ® symbol, and your trademark rights may be harder to enforce. While state-level protection is available, it offers less comprehensive protection than federal registration, leaving your brand more vulnerable to infringement.
If I only provide my services in Dallas, Texas, can I still obtain a federal trademark?
Yes, it is possible to obtain a federal trademark even if you provide services only in Dallas, Texas. The United States trademark system allows for both federal and state-level trademark registrations.
While a state-level trademark registration provides protection within the specific state where it is registered, a federal trademark registration offers broader and more extensive protection throughout the entire United States, regardless of the specific geographical location of your business operations.
When you file for a federal trademark registration with the United States Patent and Trademark Office (USPTO), you are seeking protection for your mark on a national scale. The USPTO examines your application based on federal trademark laws and regulations. If approved, your federal trademark registration provides exclusive rights to use the mark nationwide, not just within a specific state or locality.
However, it’s important to note that to qualify for federal trademark registration, you must meet certain requirements. One of the key requirements is that you must demonstrate a bona fide intent to use the mark in commerce across state lines. This means you need to provide evidence or indicate your intention to use the mark in connection with your services beyond the borders of Texas.
If your services are limited only to Dallas, Texas, and you do not have any plans or intent to expand your services beyond that area, pursuing a federal trademark registration may not be necessary. In such cases, a state-level trademark registration in Texas may be more suitable for protecting your mark within your specific geographic scope.
To determine the most appropriate course of action for your specific situation, it is advisable to consult with a trademark attorney. They can assess your business goals, evaluate potential expansion plans, and provide guidance on the most suitable trademark registration strategy to meet your needs.
I have expanded my business and now serve customers outside of Dallas, Texas – Can I now file my Trademark Statement of Use?
If you have expanded your business and are now serving customers outside of Dallas, Texas, you may be eligible to file a Trademark Statement of Use (SOU) if you have previously filed an Intent to Use (ITU) application.
When you file an ITU application with the United States Patent and Trademark Office (USPTO), it signifies your intention to use the mark in commerce but at the time of filing, you had not yet commenced actual use of the mark. An ITU application allows you to secure a priority filing date for your mark while you are preparing to use it in connection with your goods or services.
Once you have started using the mark in commerce, you can file an SOU to demonstrate that you are now using the mark in connection with the specified goods or services. This is an important step in the federal trademark registration process, as it confirms to the USPTO that your mark is no longer an intention to use, but rather in actual use.
When filing an SOU, you will need to provide evidence of the mark’s use in commerce, including examples such as product packaging, advertising materials, or screenshots of your website displaying the mark in connection with the relevant goods or services. The USPTO will review the SOU and supporting evidence to determine if your mark is being used in compliance with the requirements for registration.
It’s important to note that there are specific time limits for filing the SOU after receiving a Notice of Allowance from the USPTO. Generally, you have six months from the date of the Notice of Allowance to file the SOU, with the possibility of requesting extensions if needed.
To ensure compliance with the USPTO’s requirements and to navigate the process smoothly, it is recommended to consult with a trademark attorney. They can guide you through the necessary steps, help you gather the appropriate evidence of use, and ensure that your SOU is filed correctly and within the required timeframe.
As far as I know, no other businesses in Dallas are using my name. Do I need to conduct a trademark search before filing my application?
Yes, it is highly recommended to conduct a trademark search before filing your application, even if you believe that no other businesses in Dallas are currently using the same name as yours. Conducting a comprehensive trademark search is an important step to assess the availability of your proposed mark and to avoid potential conflicts with existing trademarks.
Here are a few reasons why conducting a trademark search is crucial:
Identify Existing Trademarks: A thorough trademark search helps you identify any existing trademarks that may be similar to yours, even if they are not located in Dallas. Trademarks are protected on a national or international level, depending on the jurisdiction, so it’s important to consider marks registered in other areas that may pose a conflict.
Avoid Trademark Infringement: By conducting a search, you can identify marks that are similar or identical to yours, including variations in spelling, phonetics, or design. This helps you avoid potential infringement issues and legal disputes that may arise if you use a mark that is confusingly similar to an existing trademark.
Protect Your Investment: Filing a trademark application involves time, effort, and financial resources. By conducting a search beforehand, you can reduce the risk of investing in a mark that is already in use by another business. It allows you to make an informed decision and protect your investment in building your brand.
Enhance Trademark Strength: A strong trademark is one that is unique and distinctive. Conducting a search helps you assess the strength of your proposed mark by considering the availability of similar marks in your industry or related fields. A more distinctive and unique mark has a higher likelihood of being registered and protected.
Remember, conducting a trademark search is an important step to protect your brand and minimize the risk of future conflicts. It is always better to be proactive and address any potential issues before filing your trademark application.
What is TEAS?
TEAS stands for the “Trademark Electronic Application System.” It is an online filing system provided by the United States Patent and Trademark Office (USPTO) for submitting trademark applications and related documents electronically. The TEAS platform offers a convenient and efficient way to file and manage trademark applications, making the process faster and more accessible.
The TEAS system provides different forms depending on the type of trademark application you are filing. The main forms include:
TEAS Plus: This is a streamlined form designed for applicants who meet specific requirements and are willing to adhere to strict filing guidelines. It requires complete upfront payment of the application fees, agreement to use the USPTO’s pre-approved identifications of goods/services, and compliance with specific formatting requirements. TEAS Plus offers a reduced filing fee compared to other forms but has more rigid requirements.
TEAS RF: This form, also known as TEAS Reduced Fee, allows applicants to pay a reduced filing fee, but with slightly fewer requirements than TEAS Plus. It requires partial upfront payment of the application fees, acceptance of pre-approved identifications of goods/services, and adherence to specific formatting guidelines.
TEAS Regular: This form provides more flexibility in terms of payment options and identification of goods/services. It allows applicants to pay the filing fees in installments and offers more flexibility in selecting and describing goods/services. However, the filing fee is slightly higher compared to TEAS Plus and TEAS RF.
The TEAS system simplifies the trademark application process by providing an intuitive interface for entering all necessary information, including applicant details, mark description, identification of goods/services, and supporting documents. It allows for online payment of fees and provides a secure platform for submitting trademark-related documents.
Using TEAS offers several advantages, including faster processing times, immediate confirmation of receipt, reduced paperwork, and the ability to track the status of your application online. It also helps eliminate the delays associated with traditional paper-based filing methods.
Whether you choose to file through TEAS Plus, TEAS RF, or TEAS Regular, it is recommended to carefully review the specific requirements and guidelines provided by the USPTO. Additionally, consulting with one of our trademark attorneys can help ensure that your application is filed correctly and in compliance with the USPTO’s requirements, increasing the chances of a successful trademark registration.
How can I determine if a trademark is available?
Determining the availability of a trademark involves conducting a comprehensive trademark search. Here are the steps to help you determine if a trademark is available:
Identify the Jurisdiction: Determine the jurisdiction or jurisdictions in which you intend to use and protect your trademark. Trademark rights are typically territorial, meaning they are granted on a country-by-country basis. Consider the countries where you plan to conduct business or where you want your mark to be protected.
Search Official Databases: Visit the trademark office websites of the relevant jurisdictions and search their official trademark databases. These databases contain registered trademarks, pending applications, and sometimes abandoned or expired marks. Conduct a thorough search using keywords, phrases, or graphical elements that resemble your proposed mark. Pay attention to variations in spelling, phonetics, or similar designs.
Consult Trademark Search Tools: Several online trademark search tools and databases are available that can help you identify existing trademarks. These tools may offer broader coverage across multiple jurisdictions and provide additional search functionalities. They can help uncover potentially conflicting marks that might not be present in the official databases alone.
Hire a Trademark Attorney or Search Firm: Engaging the services of a trademark attorney or a specialized search firm can provide you with professional expertise and access to comprehensive search resources. These professionals have experience in conducting in-depth searches, analyzing search results, and assessing potential conflicts. They can provide a more thorough and accurate evaluation of the availability of your proposed mark.
Consider Trademark Classes: Trademarks are categorized into classes based on the goods or services they represent. During your search, ensure you cover the relevant classes that align with your business activities. This helps identify similar marks within your industry or related fields that could potentially create conflicts.
Evaluate Search Results: Review the search results and analyze any potentially conflicting marks. Pay attention to similarities in terms of sight, sound, or meaning that could lead to confusion among consumers. Assess the scope of protection of existing marks and whether they pose a significant obstacle to your proposed mark’s registration or use.
Remember that conducting a thorough trademark search requires time, diligence, and attention to detail. While it can provide valuable insights, it does not guarantee absolute certainty regarding the availability of a trademark. Consulting with one of our trademark attorneys is highly recommended to ensure a comprehensive search and to receive professional guidance based on your specific circumstances.
Trademark searches and legal analysis are complex processes, and professional assistance will help you make informed decisions and mitigate potential risks related to trademark conflicts.
I’m a one-person operation. Do I need to worry about trademark registration?
Every business, large or small, should take steps to register and protect their trademark. A strong trademark gives small businesses the confidence to invest in their brand and grow. Even one-person operation should protect their intellectual property by applying for trademark registration with the USPTO.
Furthermore, trademark registration can provide several benefits, here are some reasons why you might want to consider trademark registration:
Protection and Exclusivity: Registering your trademark can help protect your brand identity and provide you with exclusive rights to use that mark in connection with your goods or services. It can prevent others from using a similar mark that may cause confusion among consumers.
Brand Recognition and Reputation: A registered trademark helps build brand recognition and establishes credibility in the marketplace. It distinguishes your products or services from competitors and allows consumers to easily identify your offerings.
Legal Remedies and Enforcement: Trademark registration provides you with legal recourse in case of infringement. If someone uses your registered trademark without permission, you can take legal action to enforce your rights and potentially seek damages.
Expansion and Licensing Opportunities: A registered trademark can facilitate business expansion and licensing agreements. It adds value to your brand, making it more attractive to potential partners or licensees who may want to use your trademark under specific arrangements.
Online Presence and E-commerce: In the digital era, having a registered trademark can help protect your online presence. It allows you to enforce your rights against unauthorized use on websites, social media platforms, and online marketplaces.
However, it’s important to note that the decision to register a trademark ultimately depends on your specific business goals, industry, and budget. While registration offers advantages, it does involve costs and requires careful consideration.
Consulting with a trademark attorney is highly recommended to assess your individual circumstances. They can provide tailored advice based on your business objectives and help determine if trademark registration is necessary or advisable in your situation.
Is it better to register my logo or the name of my business in plain text?
The most important thing to trademark is the name of your business in plain text. However, you should also register your businesses’ logo by submitting a separate trademark application to the USPTO.
Some business owners try to save money and protect both their business name and logo by registering the logo if it contains the name in it. This is risky because if you ever change the design of your logo, you will risk losing your federal protection for the name.
If you’re unsure about how to proceed with trademark registration, then speak with a trademark attorney.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain circumstances. To qualify for trademark protection, a phrase needs to meet specific criteria. First and foremost, the phrase should be distinctive and capable of identifying the source of goods or services. It should have a unique and memorable quality that sets it apart from common phrases used in everyday language or within the relevant industry.
When considering trademarking a phrase, it is crucial to conduct a comprehensive search to ensure that no similar or identical phrases are already registered or in use for similar goods or services. This search helps identify potential conflicts and allows you to assess the availability and registrability of your desired phrase.
Additionally, the phrase should not be merely descriptive or generic, as such terms are generally not eligible for trademark protection. Descriptive phrases directly describe the qualities or characteristics of the goods or services, while generic phrases refer to common terms used to identify a particular class of goods or services.
Can I trademark a logo?
Yes, you can trademark a logo to protect its unique design and ensure exclusive rights to use it in connection with your goods or services. A logo serves as a visual representation of your brand and plays a crucial role in establishing brand identity and recognition.
To be eligible for trademark protection, a logo should be distinctive and capable of distinguishing your goods or services from those of others. It should possess originality, creativity, and uniqueness that sets it apart from other logos in the marketplace. Generic or common logos that lack distinctiveness may face challenges during the trademark application process.
Before applying for a trademark, it is important to conduct a thorough search to ensure that your desired logo is not already registered or in use by others for similar goods or services. This search helps identify potential conflicts and allows you to assess the availability and registrability of your logo.
Can I trademark a color?
Trademarking a color is possible but generally more challenging compared to phrases or logos. Colors, being inherently descriptive and commonly used, are considered less distinctive in the context of trademarks. However, under specific circumstances, a color can acquire distinctiveness and serve as a strong identifier of a particular brand or product.
To successfully trademark a color, it is crucial to demonstrate that the color has acquired secondary meaning in the minds of consumers. This means that consumers primarily associate the color with a specific brand or source of goods or services. Establishing secondary meaning typically requires extensive evidence of long and exclusive use of the color in connection with the goods or services offered.
Moreover, the color should not be functional or essential to the nature of the goods or services. Colors that are necessary for the functionality or commonly used in an industry may face challenges during the trademark application process.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on several factors, but here are the key stages:
Application Preparation: Before filing a trademark application, it’s essential to conduct a comprehensive trademark search to ensure the proposed mark is not already in use or registered by someone else. This search helps avoid potential conflicts. The time required for this step depends on the complexity of the search and the resources available.
Application Filing: Once the trademark search is completed, the application can be prepared and filed with the relevant trademark office. The application includes details about the mark, its intended use, and the goods or services associated with it. Filing the application itself is relatively quick and can usually be done electronically.
Examination Stage: After the application is filed, it undergoes an examination process by the trademark office. The examiner reviews the application for compliance with trademark laws, including assessing distinctiveness, potential conflicts with existing marks, and compliance with formalities. The examination stage can take several months, and the timeframe varies depending on the workload of the trademark office and the complexity of the application.
Publication and Opposition: In some jurisdictions, after the examination stage, the trademark application is published in an official gazette or journal, allowing third parties to oppose the registration if they believe it conflicts with their existing rights. The opposition period typically lasts for a specific period, such as 30 to 60 days. If no opposition is filed, the application can proceed to the next stage.
Registration or Final Decision: If the application successfully passes the examination and opposition stages, the trademark office will issue a registration certificate or a final decision granting or refusing the registration. The time it takes to receive the registration certificate or final decision can vary depending on the trademark office’s processing times and workload.
Overall, the trademark application process can take anywhere from several months to a year or more, depending on various factors. Complex applications, oppositions, or delays in the examination process can extend the timeline. It’s important to note that these timeframes are approximate and can vary based on the jurisdiction and specific circumstances of each application.
Consulting with a trademark attorney can provide you with more accurate information and guidance tailored to your specific situation, helping you navigate the application process more effectively.
Should I hire a Trademark Attorney to help me register my trademark?
Absolutely! Hiring one of our trademark attorneys to assist you in registering your trademark is highly recommended. Here are some compelling reasons why you should consider working with a trademark attorney:
Expertise and Knowledge: Trademark attorneys specialize in trademark law and possess extensive knowledge of the registration process. They are well-versed in the legal requirements, documentation, and procedures necessary for a successful trademark application. Their expertise can help you navigate the intricacies of trademark law and maximize your chances of a smooth and successful registration.
Trademark Search and Analysis: Conducting a comprehensive trademark search is crucial to ensure that your desired trademark is available for registration. A trademark attorney can perform a thorough search to identify any existing trademarks that may conflict with yours. They can analyze the search results and provide you with an informed opinion on the availability and registrability of your trademark, helping you avoid potential legal conflicts in the future.
Application Preparation and Filing: A trademark attorney can assist you in preparing and filing your trademark application accurately and efficiently. They will ensure that all required information and supporting documents are included, minimizing the risk of application rejection or delays. By drafting a well-crafted application, your attorney can present your trademark in the best possible light, increasing the likelihood of a successful registration.
Legal Guidance and Protection: Trademark attorneys offer valuable legal advice throughout the registration process. They can guide you on matters such as trademark selection, classification, and maintaining the distinctiveness of your mark. Additionally, they can help protect your trademark rights by monitoring for potential infringements and taking appropriate enforcement actions if necessary.
Handling Office Actions and Appeals: If your trademark application encounters objections or office actions from the examining attorney, a trademark attorney can assist you in responding effectively. They have the experience to craft persuasive arguments and address any concerns raised. In the event of an appeal, your attorney can represent your interests and navigate the appeals process.
Avoiding Costly Mistakes: Trademark law can be complex, and mistakes in the registration process can have significant consequences. By working with a trademark attorney, you can minimize the risk of errors, omissions, or oversights that may jeopardize your trademark rights or lead to legal disputes down the line. Investing in professional guidance can save you time, money, and potential headaches in the long run.
While it is not mandatory to hire a trademark attorney, their expertise and assistance can significantly increase the likelihood of a successful trademark registration. They provide valuable guidance, protect your rights, and handle the legal complexities on your behalf. Consulting with a qualified trademark attorney will ensure that you navigate the registration process smoothly and secure the protection you need for your valuable brand.
How long does a trademark last?
Trademark protection lasts for as long as you’re using the mark in commerce. That could be hundreds of years. You do need to file a maintenance document with the USPTO every few years to show that you are using the mark in commerce. You’ll have to file your first maintenance document 5 to 6 years after the mark is first registered, another 5 years after that, and then every 10 years for as long as you want to use the mark.
Can I request an expedited approval of my trademark registration?
Yes, it is possible to request expedited processing of your trademark registration under certain circumstances. The United States Patent and Trademark Office (USPTO) provides a program called the “Trademark Prioritized Examination Program,” also known as the “TEAS Plus” program, which allows applicants to expedite the examination of their trademark application.
To request expedited approval, you can follow these general guidelines:
Eligibility: Not all trademark applications are eligible for expedited processing. The USPTO typically grants expedited examination for applications that meet specific criteria. Common reasons for expedited processing include pending litigation, potential infringement concerns, or a need for trademark registration in order to secure foreign filing rights.
TEAS Plus Program: If your application qualifies for expedited processing, you can choose to submit your trademark application under the TEAS Plus program. This program requires applicants to meet certain strict requirements, including using the USPTO’s online filing system (TEAS), paying all application fees upfront, and agreeing to specific filing and formatting guidelines.
Fee and Form: Along with your application, you will need to submit an additional fee for requesting expedited processing. The fee is in addition to the standard application filing fees. The current fee for expedited processing can be found on the USPTO’s official website.
Expedited Examination: Once your expedited request is granted, the USPTO will prioritize the examination of your application. This means your application will receive accelerated review and a faster response compared to regular applications. However, it’s important to note that expedited processing does not guarantee approval, and your application will still need to meet all the necessary requirements for registration.
It’s worth mentioning that expedited processing may not be suitable or necessary for every trademark application. Regular processing times for trademark applications can vary, and many applications proceed smoothly within standard timelines. Expedited processing is typically reserved for cases that require immediate attention or have compelling reasons for prioritized examination.
What’s the difference between a live trademark and a dead trademark?
A live trademark and a dead trademark refer to the different status of a trademark registration. Here’s an explanation of the distinction between the two:
Live Trademark: A live trademark is an active and valid trademark registration. It indicates that the trademark has been approved, registered, and is currently in force. A live trademark signifies that the owner has met all the necessary requirements, including filing the application, responding to any objections or office actions, and maintaining the registration by submitting the required documents and fees. With a live trademark, the owner possesses exclusive rights to use the mark in connection with the registered goods or services and can enforce those rights against potential infringers.
Dead Trademark: A dead trademark refers to a trademark registration that is no longer active or enforceable. It could result from various reasons, such as abandonment, non-renewal, or cancellation. When a trademark is considered dead, it means that it has lost its legal protection. The owner no longer holds exclusive rights to the mark, and others may be able to use similar marks without infringing on the dead trademark. Dead trademarks are typically removed from the official trademark registry.
The distinction between live and dead trademarks is crucial in understanding the current status and legal standing of a trademark. It’s important for trademark owners to actively maintain their registrations and fulfill all obligations to keep their trademarks alive and protected.
To ascertain the status of a trademark, it is recommended to conduct a search in the official trademark database or consult with a trademark attorney who can provide accurate and up-to-date information regarding the specific trademark in question.
Can I sell products without a registered trademark?
Yes, you can sell products even without a registered trademark. However, it’s not recommended.
Any skilled trademark attorney would tell you to register your trademark ASAP. If you use an unregistered trademark, a competitor could start using the mark to sell a similar product or service. They may even register your trademark for themselves. If you are serious about creating a successful business, then you need to register your trademark sooner rather than later.
What’s the difference between the TM and ® symbols?
The TM symbol and the ® symbol are used to indicate trademark status, but they have different meanings:
TM Symbol: The TM symbol (™) is used to indicate that a word, phrase, logo, or design is being claimed as a trademark. It is commonly used before a trademark application is filed or while a trademark application is pending. The TM symbol does not necessarily mean that the mark has been officially registered with a trademark office. Instead, it serves as a notice to others that the owner considers the mark to be their trademark and asserts their rights to it.
Registered Trademark Symbol: The registered trademark symbol (®) is used to indicate that a trademark has been officially registered with the appropriate trademark office. It signifies that the mark is protected by trademark laws and that the owner has exclusive rights to use the mark in connection with the goods or services specified in the registration. The registration provides legal benefits and protection against unauthorized use or infringement.
It’s important to note that the use of the ® symbol is restricted to trademarks that have been formally registered. In some countries, using the ® symbol without a valid registration is illegal and may result in penalties. On the other hand, the TM symbol can be used without formal registration to assert common law trademark rights, although it does not provide the same level of legal protection as a registered trademark.
When using these symbols, it’s important to adhere to the trademark laws and regulations of the relevant jurisdiction. If you have questions about the appropriate use of these symbols for your specific trademark, consulting with a trademark attorney would be advisable
Will my trademark remain unprotected while the application is pending?
While your trademark will not be fully protected until you’ve reached registration, you do gain 2 things on the day you file your trademark application.
Your application will have priority over any trademark applications that were filed after yours.
Once the mark is registered, you’ll have retroactive trademark protection going back to the day you filed your application. That means you can take legal action against anyone who infringed upon your mark while the application was processing.
I’m not yet selling anything yet, but I intend to. Can I still submit a trademark application?
If you are not using the trademark in commerce yet, you can file the application under an intent-to-use basis. If the application is successful, you’ll have to follow up with a specimen about 6 months later to show that you are using your mark in commerce. If you are not using the mark in commerce within 6 months of receiving approval from the USPTO, then you can file an extension to get another 6 months. The USPTO allows you to file up to 5 extensions.
What is a trademark Office Action?
A trademark Office Action is an official communication from the trademark examining attorney at the United States Patent and Trademark Office (USPTO) regarding the status of your trademark application. It is a written document that outlines any issues, concerns, or requirements that need to be addressed before your trademark can be approved for registration.
When the examining attorney reviews your trademark application, they assess its compliance with various legal requirements and evaluate any potential conflicts with existing trademarks. If the examining attorney identifies any issues or deficiencies in your application, they will issue an Office Action detailing their findings and providing an opportunity for you to respond.
There are two main types of Office Actions:
Non-Final Office Action: This type of Office Action outlines substantive issues or procedural deficiencies that must be resolved for your trademark application to move forward. It may include objections or refusals based on legal grounds, such as the mark being too similar to an existing mark, incomplete or inaccurate information, or failure to comply with certain formalities. You are given a specific period (usually six months) to respond to the Non-Final Office Action and address the issues raised.
Final Office Action: If you do not overcome the issues raised in the Non-Final Office Action or fail to respond within the given timeframe, the examining attorney may issue a Final Office Action. This indicates that your application is in danger of being abandoned. However, you still have the option to respond within six months of the Final Office Action, but your response must be persuasive and address all outstanding issues raised by the examining attorney.
It’s important to carefully review the Office Action and understand the specific concerns raised by the examining attorney. Depending on the nature of the issues, you may need to provide additional evidence, arguments, or clarifications to support the registration of your trademark. Failure to respond to an Office Action can result in the abandonment of your application, so it’s crucial to take prompt action and seek professional assistance, such as consulting a trademark attorney, if needed.
What should I do if I receive an office action on my trademark application?
Responding to an Office Action requires attention to detail and a thorough understanding of trademark law and USPTO procedures. A well-crafted and persuasive response can help overcome objections and increase the likelihood of a successful trademark registration.
If you receive an Office Action on your trademark application, it is important to carefully review the document and take appropriate action to address the issues raised by the examining attorney at the United States Patent and Trademark Office (USPTO). Here are some steps you can follow:
Read and Understand: Begin by thoroughly reading and understanding the contents of the Office Action. Pay close attention to the objections, refusals, or requirements outlined by the examining attorney. Take note of the specific reasons for rejection and any additional information or evidence requested.
Consult with an Attorney: Consider consulting with a trademark attorney who can provide professional guidance and advice based on their expertise in trademark law. They can help you understand the implications of the Office Action, assess the strength of your case, and assist you in formulating an effective response.
Analyze and Respond: Analyze the objections or refusals raised in the Office Action and develop a comprehensive response. Address each issue individually, providing persuasive arguments, supporting evidence, and legal reasoning to overcome the examiner’s concerns. Ensure that your response is clear, concise, and well-organized.
Gather Supporting Evidence: If the examining attorney has requested additional information, such as evidence of acquired distinctiveness or clarification on the identification of goods/services, gather the necessary documentation to support your claims. This may include sales figures, consumer surveys, marketing materials, or other relevant evidence.
Modify Your Application, if Necessary: If the Office Action points out errors, inaccuracies, or inconsistencies in your original application, make the necessary amendments. This may involve revising the mark description, identification of goods/services, or other application details. Ensure that all modifications align with the USPTO’s guidelines.
Meet the Deadline: Pay close attention to the response deadline mentioned in the Office Action. Typically, you are given six months to respond. Missing the deadline could result in the abandonment of your application. Aim to submit your response well in advance to avoid any last-minute issues.
Review and Submit: Thoroughly review your response to ensure accuracy, clarity, and completeness. Consider having your attorney review it as well. Once you are confident in your response, submit it to the USPTO through the appropriate channels, following their specified submission procedures.
Monitor the Status: After submitting your response, regularly monitor the status of your application through the USPTO’s online Trademark Status and Document Retrieval (TSDR) system. This will allow you to track the progress of your application and any subsequent actions taken by the examining attorney.
Remember, addressing an Office Action requires a careful and strategic approach. Seeking professional guidance from a trademark attorney can greatly increase your chances of overcoming objections and achieving a successful trademark registration.
Can I include items I never plan to sell in my trademark application?
When you file a trademark application with the USPTO, you must make a sworn statement that you are using (or intend to use) the trademark on all of the goods and services listed in the application. Any false statements that you make can lead to the cancellation of any resulting registration. In most cases, you should limit your application to only those goods you are actively selling.
What are the consequences of trademark infringement?
Trademark infringement refers to the unauthorized use of a registered trademark or a confusingly similar mark in connection with goods or services that are identical or related. The consequences of trademark infringement can be significant and may include:
Legal Action: The owner of the infringed trademark has the right to initiate legal proceedings against the infringing party. This can lead to a lawsuit, where the trademark owner seeks to stop the infringement and may also claim damages resulting from the unauthorized use.
Cease and Desist Letters: Before resorting to legal action, trademark owners often send cease and desist letters to the infringing party. These letters demand that the infringer immediately stops using the trademark and may require them to take corrective actions, such as destroying infringing products or materials.
Damages and Remedies: If the trademark owner successfully proves infringement, they may be entitled to monetary damages. These damages can include actual damages, which compensate for the harm caused, as well as profits derived by the infringing party. Additionally, the court may award punitive damages in cases of willful infringement. Other remedies may include injunctions, which prohibit further use of the infringing mark, and the destruction of infringing goods.
Loss of Business and Reputation: Trademark infringement can harm the reputation and goodwill associated with the original trademark. Consumers may become confused or misled by the presence of similar or counterfeit products, leading to a loss of trust and potential customers for the original brand. Infringement can tarnish the reputation built by the trademark owner over time.
Infringement Defenses: In cases of alleged infringement, the accused party may raise certain defenses, such as fair use, parody, or lack of likelihood of confusion. However, the success of these defenses depends on various factors, including the jurisdiction and the specific circumstances of the case.
It is important to note that the consequences of trademark infringement can vary depending on the jurisdiction and the specific circumstances of each case. Trademark owners should proactively monitor and enforce their trademark rights to protect their brand, prevent confusion among consumers, and preserve the value of their intellectual property assets.
Why Trademark Registration Matters for Dallas Businesses
Dallas has a long history of entrepreneurship and independence that inspires many to open their own businesses. New business owners in Dallas know there’s a lot of work to do before they can open their doors. They must develop a business plan, create marketing materials, develop their product, and so much more. It can seem like the to-do list is never-ending for entrepreneurs. But no matter how busy you are taking care of these details, registering your trademark should never be put on the back burner.
Imagine the following: Jordan and Marcus are two friends from college who decide to start their own pool cleaning business in Dallas, Texas. They call themselves Pool Cleaning Pros and get started right away. They purchase the equipment and supplies they need, print out postcards to mail to Dallas residents, create a website, and purchase a van. They don’t, however, trademark the name of their business. They figure that their business is too small for that, but that’s an incorrect assumption on their part.
Soon after the first postcard mailing goes out, they start getting calls, and they’re cleaning pools seven days a week. Unfortunately, one of the people who received their postcard is the owner of another pool cleaning company in the area called Pool Cleaning Professionals.
The owner of Pool Cleaning Professionals owns the trademark for his business name. He asks his trademark attorney to send a cease-and-desist letter to the two friends informing them that they are infringing on his copyright and demanding that they halt operations. The two friends learn a valuable lesson from this experience. No matter how small your business is, seeking trademark protection is important.
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 Dallas and yet it can assist businesses from Texas in registering a federal trademark because trademarks are governed under federal law.
Trademarks Services for Dallas Businesses
- Trademark Search Services
- Trademark Application Filing
- Trademark Infringement Defense
- Trademark a Name
- Trademark a Phrase
- Trademark Cease and Desist Letters
- Trademark Office Action Response
- Trademark Abandonment