Trademark Attorney Services
for Fort Worth TX
Companies.

Fort Worth, Texas Businesses Use Cohn Legal for Trademark Services

Serving clients in Fort Worth, Texas, Abe Cohn is the Managing Partner of Cohn Legal, PLLC. While Abe loves working on trademark prosecutions, he also assists his clients with a variety of other intellectual property law matters and manages various corporate transactional work. Abe loves working with startups and entrepreneurs and relishes the opportunity to help companies build something from the ground floor. At the end of the day, Abe strives to make his clients’ lives easier.

Top Questions Fort Worth Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Fort Worth, Texas, 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 Fort Worth, Texas, 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 type of intellectual property that provides legal protection to the owner of a distinctive symbol, word, phrase, design, or combination thereof. It serves as an identifier of the source of goods or services, allowing consumers to recognize and distinguish them from those of competitors. Trademarks play a crucial role in branding, as they help create brand recognition and establish a connection between a company and its offerings in the marketplace.

Trademarks can take various forms, including logos, product names, slogans, packaging designs, or even distinctive sounds or scents associated with a particular brand. They serve as valuable assets for businesses, as they represent the reputation, quality, and goodwill associated with the products or services they represent.

By securing trademark rights, businesses can prevent others from using similar marks that could cause confusion among consumers. Trademark protection grants the owner exclusive rights to use the mark and provides legal remedies against infringement. This means that unauthorized use of a registered trademark can lead to legal action, including injunctions, damages, and the possibility of the infringing party being required to cease using the mark.

It is important to note that trademarks are jurisdiction-specific, meaning they are granted and protected on a country-by-country basis. While trademark rights can arise from simply using a mark in commerce, registering a trademark with the relevant intellectual property office provides additional benefits and stronger legal protection. Registration allows the trademark owner to establish a public record of ownership and provides a presumption of validity and exclusive rights to use the mark in connection with the registered goods or services.

Overall, trademarks serve as valuable tools for businesses to protect their brand identity, build customer loyalty, and establish a competitive advantage in the marketplace.

Is there a difference between a trademark and service mark?

From a legal perspective, the terms “trademark” and “service mark” are often used interchangeably, and the distinction between the two can vary depending on the jurisdiction. However, in the United States, a trademark is generally associated with goods (products), while a service mark specifically identifies services offered by a business.

A trademark is used to distinguish the source of goods, such as physical products or merchandise, in the marketplace. It can be a word, logo, symbol, design, or a combination of these elements. For example, a company that produces electronic devices may have a trademark for its brand name and logo.

On the other hand, a service mark serves the same purpose as a trademark but is used to identify and distinguish services provided by a business. It can include the name, logo, or slogan associated with a service-oriented business. For instance, a law firm may have a service mark for its name and logo to identify its legal services.

Although there is a technical distinction between trademarks and service marks, the legal protection and registration processes for both are generally the same. In practice, the term “trademark” is often used to encompass both goods and services.

What’s the difference between the ® and TM symbols?

The ® symbol and the TM symbol are used to indicate the status of a trademark but convey different meanings.

The ® symbol, often referred to as the “registered trademark symbol,” is used to indicate that a trademark is registered with the relevant trademark office. It provides public notice that the mark is legally protected and helps deter others from using a similar mark. The ® symbol can only be used once the trademark has been officially registered.

On the other hand, the TM symbol is used to indicate that a person or business claims rights to a trademark, regardless of whether it is registered or not. It is commonly used to give notice of a trademark that is being used in connection with goods or services. Unlike the ® symbol, the TM symbol does not indicate legal registration but asserts that the user considers the mark to be their trademark.

Both symbols have their own significance in differentiating between registered and unregistered marks, and their use depends on the trademark’s registration status.

What is TEAS?

TEAS stands for the Trademark Electronic Application System. It is an online platform provided by the United States Patent and Trademark Office (USPTO) that allows individuals and businesses to file and manage their trademark applications electronically.

The TEAS system offers several different application forms to accommodate various types of trademark filings. Here are the main types of TEAS applications:

1. TEAS Plus: This is the most cost-effective option for filing a trademark application. To use TEAS Plus, applicants must meet specific requirements, such as providing accurate identification of goods or services from the USPTO’s Acceptable Identification of Goods and Services Manual, selecting goods or services from pre-approved entries, and agreeing to use electronic communication throughout the application process. In return, the filing fee is lower compared to other application types.
2. TEAS Reduced Fee (TEAS RF): This application option is available to applicants who are not eligible for TEAS Plus but still prefer to use electronic filing. It requires compliance with certain filing and correspondence requirements, and the filing fee is higher than TEAS Plus but lower than the regular TEAS option.
3. TEAS Regular: This is the standard TEAS application option, allowing applicants to file trademark applications electronically without specific requirements. The filing fee is higher compared to TEAS Plus and TEAS RF.

The TEAS system simplifies the application process by providing electronic forms, guided prompts, and helpful instructions. It allows applicants to complete and submit their applications, pay the required fees online, and track the status of their applications through the online portal.

In addition to filing new trademark applications, the TEAS system also provides services for managing existing trademark registrations, such as filing maintenance documents, responding to office actions, and monitoring the status of applications or registrations.

Using the TEAS system offers several benefits, including faster processing times, immediate electronic confirmation of filing, reduced paperwork, and access to online tools and resources provided by the USPTO.

However, it’s important to note that while TEAS facilitates the electronic filing and management of trademark applications, it does not provide legal advice or guidance on the substantive aspects of trademark law. It is advisable to consult with a trademark attorney when preparing and filing a trademark application to ensure compliance with the legal requirements and maximize the chances of successful registration.

How can I determine if a trademark is available?

Before adopting a trademark, it is essential to conduct a comprehensive search to determine if it is available for use and registration. This involves assessing the availability of the proposed mark in the relevant jurisdiction, considering both registered trademarks and unregistered marks that may have common law rights.

The search typically involves examining trademark databases maintained by the trademark office(s) of the desired jurisdiction(s). These databases contain registered trademarks, pending applications, and rejected or abandoned marks. Additionally, a search should include other sources, such as domain names, business directories, and online platforms, to identify any unregistered but commercially used marks.

While it is possible to conduct a preliminary search independently, engaging a trademark attorney or a professional trademark search firm is advisable. They have the expertise and access to specialized databases that can provide a more thorough analysis of the trademark landscape and minimize the risk of overlooking potential conflicts.

By conducting a comprehensive search, you can assess the availability and potential risks associated with a proposed trademark and make an informed decision about its adoption and registration.

If I only provide my services locally, can I still obtain a federal trademark?

Yes, it is possible to obtain a federal trademark in the United States even if your services are provided only locally. The scope of protection provided by a federal trademark registration extends nationwide, regardless of the geographical reach of your business activities.

When you file a trademark application with the United States Patent and Trademark Office (USPTO), you have the option to select the classes of goods or services that your mark will be associated with. While it is advisable to select the specific class(es) that accurately represent your services, the fact that your services are localized does not restrict you from seeking federal registration.

Federal trademark registration offers several benefits, including nationwide protection, a legal presumption of ownership, the ability to bring an infringement lawsuit in federal court, and the opportunity to use the ® symbol to indicate your mark is registered. It also provides a stronger basis for enforcing your trademark rights and acts as a deterrent to potential infringers.

Therefore, even if your services are limited to a particular geographical area, seeking federal trademark registration can provide valuable protection and enhance the recognition and reputation of your brand.

Can I use a trademark without registering it?

Yes, you can use a trademark without registering it. Trademark rights can be established through common law usage, meaning that simply using a mark in commerce can provide you with certain rights and protections. These rights are known as common law trademark rights.

Common law trademark rights arise from the actual use of a mark in connection with specific goods or services in a particular geographic area. They can offer some level of protection against others using a similar or confusingly similar mark in the same area or market.

However, relying solely on common law rights has limitations. Common law rights are generally limited to the geographic area where the mark is used and may be more challenging to enforce compared to registered trademarks. In case of a dispute, the burden of proving the existence and scope of common law rights falls on the user of the mark.

By registering a trademark with the appropriate trademark office, such as the USPTO in the United States, you gain additional benefits and protections. Registration provides a public record of your ownership and use of the mark, establishes a legal presumption of your rights, and allows you to enforce your trademark in federal court. It also acts as a deterrent to potential infringers.

Therefore, while using a trademark without registration is possible and can provide some level of protection, registering the trademark offers greater advantages and a stronger foundation for safeguarding your rights.

How long does the trademark application process take?

The duration of the trademark application process can vary depending on several factors. Generally, the trademark application process in the United States can take anywhere from several months to over a year to reach a final decision. Here is a breakdown of the different stages and timeframes involved:

1. Initial Application Review: Once a trademark application is filed with the United States Patent and Trademark Office (USPTO), it undergoes an initial review process. This typically takes about one to three months. During this stage, the USPTO examines the application for compliance with formalities, such as correct filing fees, proper identification of goods or services, and adherence to trademark filing requirements.
2. Examination and Office Actions: After the initial review, the application moves into the substantive examination stage. A trademark examiner at the USPTO reviews the application to determine its eligibility for registration. The examiner will assess the mark’s distinctiveness, potential conflicts with existing trademarks, and compliance with other legal requirements. If the examiner identifies any issues or objections, they will issue an office action, outlining the concerns and providing a deadline for the applicant to respond. The time taken for examination and the issuance of office actions can vary but typically ranges from three to six months.
3. Response to Office Actions: Once an office action is received, the applicant has a specific period (usually six months) to respond. The response should address the concerns raised by the examiner and provide arguments, evidence, or amendments to overcome any objections. The timeframe for preparing and submitting a response can vary depending on the complexity of the issues raised and the availability of supporting documentation.
4. Publication: If the application successfully clears the examination stage, it proceeds to the publication phase. The USPTO publishes the trademark application in the Official Gazette, a weekly publication that serves as public notice of the pending application. The purpose of publication is to give third parties an opportunity to oppose the registration of the mark if they believe it would conflict with their existing rights. The publication period typically lasts for 30 days.
5. Opposition Period and Registration: Following publication, there is a 30-day period during which third parties can file an opposition to the trademark registration. If no oppositions are filed, or if an opposition is resolved in favor of the applicant, the application moves towards registration. At this stage, the USPTO will issue a Notice of Allowance, indicating that the mark has been allowed for registration. The applicant must then file a Statement of Use or a Request for Extension of Time to file the Statement of Use within a specified timeframe (usually six months).
6. Registration: Once the Statement of Use is approved, or an Extension of Time is granted, the USPTO issues a Certificate of Registration, officially granting the trademark registration. This final step can take several weeks to a few months.

It’s important to note that the timelines mentioned above are general estimates and can vary depending on the complexity of the application, the backlog of the USPTO, the responsiveness of the parties involved, and any potential legal challenges or disputes that may arise during the process. Working with a trademark attorney can help navigate the application process, ensure timely responses, and maximize the chances of a successful registration.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is recommended in various situations to ensure that you have proper legal guidance and protection for your trademarks. While it is not mandatory to hire a lawyer, their expertise can be invaluable in the following scenarios:

1. Trademark Search and Clearance: Before adopting a new trademark, it is essential to conduct a thorough search to check for existing trademarks that may conflict with yours. A trademark lawyer can perform a comprehensive search and evaluate the results to assess potential risks and advise you on the availability and registrability of your desired mark.
2. Trademark Application Preparation: Filing a trademark application requires attention to detail and adherence to legal requirements. A trademark lawyer can assist you in preparing and filing the application, ensuring that it is accurate, complete, and meets the necessary criteria for registration. They can help craft strong descriptions of goods or services and provide guidance on choosing appropriate classes and filing bases.
3. Office Actions and Legal Issues: If you receive an office action from the trademark office, indicating issues or objections with your application, a trademark lawyer can guide you through the process of addressing those concerns. They can help formulate a response, provide legal arguments or evidence, and increase the chances of overcoming objections or resolving issues in a satisfactory manner.
4. Trademark Portfolio Management: If you have multiple trademarks or plan to expand your brand, a trademark lawyer can assist with managing your trademark portfolio effectively. They can advise on trademark maintenance, renewal requirements, and strategies for protecting and enforcing your trademarks. A lawyer can also help you develop licensing or assignment agreements and ensure compliance with legal obligations.
5. Trademark Infringement and Enforcement: If you believe your trademark rights are being infringed upon or if you receive a cease-and-desist letter alleging infringement, a trademark lawyer can assess the situation, advise you on the best course of action, and help protect your rights. They can assist with cease-and-desist responses, negotiation, settlement discussions, or initiating legal proceedings if necessary.
6. International Trademark Protection: If you plan to expand your business internationally or seek trademark protection in foreign jurisdictions, a trademark lawyer with expertise in international trademark law can guide you through the complexities of global trademark registration. They can assist with assessing the availability of your mark in different countries, navigating foreign filing requirements, and managing international trademark portfolios.

By hiring a trademark lawyer, you can benefit from their specialized knowledge of trademark law, experience in the application process, and understanding of legal nuances. They can help you navigate the complexities of trademark registration, protect your rights, and provide guidance on building and maintaining a strong trademark portfolio.

What is a trademark’s specimen?

A trademark specimen, also known as a proof of use, is a sample or evidence that demonstrates how the trademark is used in commerce for the associated goods or services. When filing a trademark application, submitting an acceptable specimen is a requirement to establish that the mark is being used in connection with the applied-for goods or services.

The purpose of a specimen is to show the public how the mark is being presented to consumers in the marketplace. It helps ensure that the mark is not merely an idea or concept, but is actively used as an identifier of the source of the goods or services.

The acceptable format of a specimen depends on whether the mark is used for goods or services. For goods, acceptable specimens can include labels, tags, packaging, or images showing the mark directly applied to the goods or their containers. For services, specimens may include advertising materials, brochures, website screenshots, or photographs showing the mark displayed in connection with the services.

It is important to note that the specimen should be a real example of how the mark is used and should reflect the commercial reality of the goods or services. Additionally, the specimen must be in actual use at the time of filing or within the applicable timeframe specified by the trademark office.

Submitting an appropriate and valid specimen is crucial for successfully registering a trademark. Failure to provide an acceptable specimen can result in delays, objections, or potential rejection of the trademark application.

Can I request an expedited approval of my trademark registration?

Yes, in certain circumstances, it is possible to request expedited or accelerated processing of a trademark application. The specific procedures and requirements for requesting expedited examination vary depending on the jurisdiction.

In the United States, the USPTO offers a program called the “TEAS Plus” (Trademark Electronic Application System Plus) that allows applicants to request expedited processing for a fee. To qualify for expedited examination, certain conditions must be met, such as agreeing to use specific electronic filing formats, ensuring accurate and complete information, and meeting specific formal requirements.

Additionally, the USPTO provides a separate program called the “TEAS RF” (Reduced Fee) for expedited examination of trademark applications. Under this program, applicants pay a reduced fee but must meet additional criteria, such as demonstrating a need for expedited processing due to pending litigation, potential infringement, or other exceptional circumstances.

It’s important to note that expedited examination does not guarantee immediate approval or registration. It simply prioritizes the processing of your application, potentially reducing the overall processing time.

In other countries, similar expedited examination programs or procedures may be available. It is advisable to consult the respective trademark office or seek guidance from a trademark attorney to understand the specific requirements and options for expediting the approval of your trademark registration in the relevant jurisdiction.

Can I trademark a phrase?

Yes, it is possible to trademark a phrase under certain conditions. In order to qualify for trademark protection, the phrase must meet certain requirements, including distinctiveness and non-generic character.

Distinctiveness: To be eligible for trademark registration, a phrase must be distinctive, meaning it should be capable of distinguishing your goods or services from those of others. Phrases that are purely descriptive or generic, and commonly used in the industry, are generally not eligible for trademark protection. However, if a phrase has acquired secondary meaning and is associated with a particular brand or source, it may be eligible for protection.

Non-generic character: The phrase should not be a common or generic expression that is commonly used in everyday language to describe the goods or services themselves. A phrase that merely describes the nature, quality, or characteristics of the goods or services is less likely to be granted trademark protection.

When considering trademarking a phrase, it is important to conduct a thorough search to ensure that it is not already in use by others in a similar context or industry. This search helps identify potential conflicts or prior rights that may hinder the registration and use of the phrase as a trademark.

Additionally, keep in mind that trademarks are typically associated with specific goods or services. Therefore, the phrase must be used in connection with those goods or services to establish and maintain trademark rights.

Consulting with a trademark attorney can be beneficial in evaluating the distinctiveness and registrability of a phrase and navigating the trademark application process.

Can I trademark a logo?

Yes, you can trademark a logo. Logos are among the most common types of trademarks registered with trademark offices. A logo, which is a visual representation or design, can be a powerful tool for brand identification and recognition.

When seeking trademark protection for a logo, it is important to ensure that the design meets the requirements for distinctiveness and non-generic character. The logo should be unique, original, and capable of distinguishing your goods or services from those of others. It should not be a common or generic design that merely describes the goods or services.

To successfully register a logo as a trademark, it is advisable to include the logo in the trademark application as a graphical representation. This can be in the form of a digital image or a clear reproduction of the logo. Including a description of the elements, colors, or specific features of the logo can further clarify its distinctive characteristics.

It is important to note that the protection granted by a logo trademark registration extends to the combination of design elements represented in the logo. This means that a registered logo can protect against others using similar designs that create a likelihood of confusion in the marketplace.

To ensure a smooth registration process and enhance the protection of your logo as a trademark, consulting with a trademark attorney who specializes in logo trademarks is recommended. They can guide you through the application process, conduct a comprehensive search, and provide valuable advice on the registrability and enforceability of your logo as a trademark.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances. However, obtaining trademark protection for a color can be challenging because colors are considered to be inherently less distinctive than other traditional trademark elements, such as words or logos.

To successfully trademark a color, you must demonstrate that the color has acquired what is known as “secondary meaning” in the minds of consumers. Secondary meaning refers to the association of the color with a particular brand or source of goods or services, beyond its ordinary descriptive meaning.

In order to establish secondary meaning, you need to show that consumers have come to recognize the color as an identifier of your goods or services. This often requires evidence of extensive and consistent use of the color in connection with your brand or product, along with evidence of consumer recognition and association.

The level of distinctiveness and consumer recognition required to obtain a color trademark can vary depending on the jurisdiction and the specific circumstances. Some famous examples of successfully registered color trademarks include the pink color for insulation (Owens-Corning), the brown color for parcel delivery services (UPS), and the blue color for medical gloves (Ansell).

It’s important to consult with a trademark attorney who specializes in color trademarks to understand the legal requirements and potential challenges associated with trademarking a color. They can guide you through the process, help gather the necessary evidence, and provide advice on the registrability and protection of your color as a trademark.

Can I transfer my trademark to someone else?

Yes, trademark ownership can be transferred from one party to another through a process known as trademark assignment. The transfer of a trademark allows the current owner (assignor) to convey their rights, title, and interest in the mark to another party (assignee).

Trademark assignment can occur in various scenarios, such as when a business is sold, when a trademark portfolio is transferred between companies, or when an individual or entity wants to transfer ownership of their trademark to another party.

To transfer a trademark, a written agreement known as a trademark assignment agreement must be executed between the assignor and the assignee. This agreement should clearly outline the details of the assignment, including the specific mark(s) being transferred, the rights and obligations being assigned, and any associated goodwill or assets.

Once the assignment agreement is executed, it is advisable to record the transfer with the relevant trademark office. Recording the assignment helps establish a public record of the change in ownership and ensures that the new owner is properly recognized as the legal owner of the mark.

It’s important to note that trademark assignment does not automatically update the ownership details with the trademark office. Failure to record the assignment may lead to confusion and complications regarding the ownership of the mark.

Consulting with a trademark attorney is highly recommended when transferring a trademark to ensure that the assignment agreement complies with legal requirements, properly transfers the rights and responsibilities associated with the mark, and protects the interests of both the assignor and the assignee.

Can I license my trademark to others?

Yes, trademark owners have the right to grant licenses to others, allowing them to use the trademark under specific conditions and for specific purposes. Licensing a trademark enables the owner (licensor) to maintain control over the quality, reputation, and proper use of the mark while generating revenue through licensing fees or royalties.

Trademark licensing can take various forms, depending on the specific arrangements between the licensor and the licensee. Some common types of trademark licenses include:

1. Exclusive License: This grants the licensee the exclusive right to use the trademark within a defined territory or for specific goods or services, while the licensor retains the right to use the mark and may refrain from granting licenses to others.
2. Non-exclusive License: This allows multiple licensees to use the trademark simultaneously, either within the same territory or for different goods or services. The licensor retains the right to use the mark and may grant licenses to other parties as well.

3. Coexistence Agreement: In situations where two parties have similar or overlapping trademarks, a coexistence agreement can be established. This agreement allows both parties to continue using their respective marks while defining specific conditions and limitations to avoid confusion or conflicts in the marketplace.

When entering into a trademark license agreement, it is crucial to clearly outline the rights and obligations of both parties, including the scope of the license, quality control measures, royalty or fee structure, and any restrictions on use or sublicensing. A well-drafted license agreement helps protect the integrity of the trademark and establishes the responsibilities and expectations of both the licensor and the licensee.

Consulting with a trademark attorney experienced in licensing can be beneficial when negotiating and drafting a trademark license agreement. They can provide guidance on the legal requirements, ensure compliance with applicable laws and regulations, and help protect the interests of the trademark owner.

Is there such a thing as an “International Trademark”?

While there is no single international trademark that provides worldwide protection, there are mechanisms that simplify the process of seeking trademark protection in multiple countries.

The most prominent international trademark system is the Madrid System administered by the World Intellectual Property Organization (WIPO). Under the Madrid System, a trademark owner can file a single international application, designating multiple countries where they seek protection. This streamlines the filing process and reduces administrative burdens and costs.

However, it’s important to note that the Madrid System is not an independent trademark registration. It relies on the existence of a national or regional trademark registration in the applicant’s home country or “basic application.” The international application is dependent on the basic application and is subject to the examination and approval of each designated country’s trademark office.

Each designated country evaluates the trademark application based on its own laws and regulations. Therefore, the protection and enforceability of the trademark may vary from country to country, depending on the local laws and practices.

Other regional trademark systems, such as the European Union Intellectual Property Office (EUIPO) for European Union countries or the African Regional Intellectual Property Organization (ARIPO) for certain African countries, provide similar benefits of centralized filing and management within their respective regions.

To effectively protect your trademark internationally, it is advisable to work with a trademark attorney or a trademark agent experienced in international trademark law. They can guide you through the process, advise on the countries or regions to consider, assist with the filing and prosecution of your international application, and provide valuable insights on local laws and requirements.

What is a trademark office action?

A trademark office action is an official communication from the trademark office that examines and addresses issues or concerns regarding a trademark application. When a trademark application is reviewed by an examiner, they may identify substantive or procedural issues that require clarification, amendment, or further evidence.

Office actions typically highlight objections, refusals, or requests for additional information related to various aspects of the trademark application, such as the mark itself, its distinctiveness, potential conflicts with existing trademarks, or deficiencies in the application filing.

There are two main types of office actions:

1. Non-substantive Office Action: This type of office action typically requests clarification or amendment of procedural matters, such as correcting errors in the application, providing additional information, or clarifying the goods or services covered by the mark. Non-substantive office actions do not involve objections to the registrability of the mark itself.
2. Substantive Office Action: A substantive office action raises objections or refusals based on substantive grounds, such as the mark’s lack of distinctiveness, likelihood of confusion with existing marks, or failure to meet other legal requirements. Substantive office actions require a response addressing the issues raised by the examiner.

The office action provides a deadline by which the applicant must respond and address the concerns raised. Failure to respond or adequately address the issues within the specified timeframe may result in the abandonment of the application.

What should I do if I receive an office action on my trademark application?

When you receive an office action on your trademark application, it is crucial to carefully review the contents and understand the objections or requests made by the examiner. Here are some general steps to consider:

1. Read the office action thoroughly: Understand the specific objections, refusals, or requests outlined by the examiner. Take note of the deadline by which you need to respond.
2. Seek professional advice: Consulting with a trademark attorney who specializes in trademark prosecution can be highly beneficial. They can provide guidance on the best course of action, assess the strength of the objections, and help formulate a strong response.
3. Evaluate the objections: Assess the validity and merit of the objections raised. Determine if they can be overcome through legal arguments, evidence, or amendments to the application. A trademark attorney can assist in evaluating the likelihood of success and advise on the appropriate response strategy.
4. Prepare a response: Craft a comprehensive and persuasive response addressing each objection raised by the examiner. This may involve providing additional evidence, clarifications, arguments, or amendments to the application.
5. Submit the response: File the response within the specified timeframe, ensuring that it complies with the requirements and guidelines of the trademark office. Keep copies of all correspondence and ensure that the response is properly documented.
6. Follow up: After submitting the response, monitor the status of your application and be prepared for further communication from the trademark office. The examiner may accept the response and proceed with the application, request additional information, or issue another office action.

Responding to an office action requires careful attention to detail, knowledge of trademark law, and effective communication with the trademark office. Working with a trademark attorney ensures that your response is properly prepared, increases the chances of a favorable outcome, and helps protect your trademark rights.

How do I enforce my trademark rights?

Enforcing your trademark rights involves taking action to prevent unauthorized use of your mark and defending against potential infringements. Here are some steps to consider when enforcing your trademark rights:

1. Monitor for potential infringements: Regularly monitor the marketplace, including online platforms, to identify any unauthorized use of your trademark. This can be done through manual searches, automated monitoring services, or working with a trademark watch service. Prompt detection of potential infringements allows you to take timely action.
2. Investigate potential infringements: Once a potential infringement is identified, gather evidence to assess the nature and extent of the unauthorized use. Document instances of infringement, including dates, locations, and supporting materials, such as screenshots or copies of infringing materials.
3. Consult with a trademark attorney: Engage the services of a trademark attorney experienced in trademark enforcement. They can provide guidance on the strength of your case, the available legal remedies, and the best course of action to take.
4. Cease and desist letter: In many cases, sending a cease and desist letter to the infringing party is the first step. The letter should clearly state your trademark rights, the alleged infringement, and demand that the infringing party cease using the mark. It can also request corrective actions, such as the removal of infringing materials or the cessation of specific activities.
5. Negotiation and settlement: In some instances, negotiation or settlement discussions may be possible. This can involve reaching an agreement with the infringing party to cease the infringing activities, modify their use of the mark, or enter into a licensing arrangement. A trademark attorney can assist in negotiating favorable terms and protecting your interests.
6. Legal action: If negotiation or settlement efforts fail or the infringement continues, legal action may be necessary. This can involve filing a lawsuit to seek injunctive relief, damages, or other appropriate remedies. A trademark attorney can guide you through the litigation process, represent your interests, and advocate for the enforcement of your trademark rights.

Trademark enforcement can be complex and time-sensitive. It is essential to consult with a trademark attorney who specializes in enforcement to ensure that your rights are adequately protected and that appropriate action is taken to address any infringements.

What is a fanciful trademark?

Fanciful trademarks are marks which are typically made up and only have meaning when applied to a specific product or service. An example of a fanciful trademark is Exxon or Pepsi. The words themselves have no meaning other than to indicate the brand name of a product.

Can generic terms receive trademark protection?

No, generic terms can’t receive trademark protection. For example, you will never be able to trademark the word “coat” if you are a coat manufacturer or seller. If you were allowed to do that, it would prevent all other coat manufacturers and sellers from using the word coat, which is unfair and unreasonable.

What is an examining attorney?

An examining attorney works at the USPTO. The examining attorney’s job is to thoroughly evaluate trademark applications and search the USPTO database. If no similar trademarks are found and everything else is in good order, then the examiner will likely approve the trademark application and publish it in the USPTO’s Official Gazette for a 30-day opposition period. If no oppositions from the public are filed during that time, then your trademark will go to final registration.

Why was my trademark application rejected?

There are a variety of reasons that your trademark application may be rejected. The most obvious reason is that the mark or something similar to it is already in use.

Other reasons for trademark application rejections could be that the examiner believes the trademark is too generic, too descriptive, includes a surname, or a name of geographic significance. Your trademark attorney can advise you on your best response to a rejected application.

What does “used in interstate commerce” mean?

To obtain a registered trademark, the specific trademark must be attached to a product or a service that has been sold across state lines or is offered in several states. If you’ve only sold your product in one state, then it will be hard to obtain a registered trademark.

How much you must sell isn’t clearly defined by the USPTO. Selling one item to a friend in another state is not an example of interstate commerce. However, selling 100 items to residents of five states other than your own would most likely be considered interstate commerce. The USPTO rules can be ambiguous, so be sure to speak to a trademark attorney who can give you clear guidance.

Should I register the name of my business before I register my logo?

Ideally, you want to trademark both your business name and logo using separate trademark applications. If you have to prioritize, then trademark the name of your business in plain text first. Register the logo as soon as possible after that.

Some business owners try to save money by registering just the logo, especially if it contains the name of their business. However, we don’t recommend this because if you want to change the design of your logo, then you risk losing trademark protection for the name of your business

Will my trademark protect my brand in countries outside of the United States?

Your trademark will only protect your intellectual property within the United States. If you do business outside the United States, either through online sales, manufacturing, or distribution, you should consider registering your trademarks in those countries as well. Speak to a trademark attorney about how to get trademark protection in countries outside of the United States.

Why Trademark Registration Matters for Fort Worth Businesses

Fort Worth has a reputation for being a city filled with industrious and hard-working people. Small business owners from Fort Worth enjoy being surrounded by residents who are loyal patrons of local shops and service providers. If you plan to start a new venture in Fort Worth, then be sure to work with an attorney to protect your trademarks above all else.

Imagine the following: Billy and Kyle are friends who have recently worked together to develop a high-quality protein powder for weight lifters and strength trainers. They call their new product Muscle Maker Protein and believe there’s nothing else like it on the market.

They are excited to get into the production phase and get it onto store shelves. However, the two friends make a very smart move first. They contact a trademark attorney and make sure that their trademark is registered with the USPTO. With that settled they know that they can move forward with confidence. They create a website, develop packaging, and push production of their product into high gear.

Six months later, the friends are excited to see their product being sold in nutrition stores, local gyms, and fitness centers. One day, however, as Kyle is surfing the internet, he sees a protein powder being sold that has a very similar name and logo as the protein powder he created.

He sends the link to his trademark attorney and the attorney agrees that it looks suspicious. The manufacturer of that imitation protein powder is about to get a cease-and-desist letter. If he doesn’t stop selling his product, he could face legal action.

Billy and Kyle’s story is proof that all small business owners should work with a trademark attorney to ensure that their unique trademark is protected before they invest time and money into it.

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 Fort Worth and yet it can assist businesses from Texas in registering a federal Trademark because trademarks are governed under federal law.

Trademarks Services for Fort Worth 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