Trademark Attorney Services
for Gilbert AZ
Companies.

Gilbert, Arizona Businesses Use Cohn Legal for Trademark Services

Cohn Legal, PLLC is focused on providing clients in Gilbert, Arizona with outstanding legal counsel and guidance on trademark rights and protections. Our trademark attorneys absolutely love helping small business owners create and protect their intellectual property. While excellence in legal representation is a given, we take greater pride in our ability to forge lasting bonds with our clients.

Top Questions Gilbert Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Gilbert, Arizona, 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 Gilbert, Arizona, 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 serves as a distinctive identifier of the source of goods or services in the marketplace. It can be a name, word, phrase, logo, symbol, design, or a combination of these elements that distinguishes one company’s products or services from those of others. Trademarks are essential for building brand recognition, customer loyalty, and protecting a business’s reputation.

By obtaining a trademark, the owner gains exclusive rights to use the mark in connection with specific goods or services, preventing others from using a similar mark in a way that could cause confusion among consumers. Trademarks can be registered with the United States Patent and Trademark Office (USPTO) or protected at the state level, depending on the scope of protection desired.

A registered trademark provides several benefits, including legal presumption of ownership, nationwide protection, and the ability to bring a lawsuit in federal court. However, even if a trademark is not federally registered, common law rights may still exist based on its use in commerce.

It’s important to note that trademarks are different from patents and copyrights. Patents protect inventions and discoveries, while copyrights safeguard original works of authorship like books, music, and artwork.

In conclusion, a trademark is a valuable asset for any business, as it helps establish a strong brand identity and distinguishes its products or services from competitors in the market. Protecting a trademark provides legal rights to its owner and helps ensure that consumers can make informed choices when purchasing goods or services associated with that mark.

Is there a difference between a trademark and service mark?

Yes, there is a difference between a trademark and a service mark, although they both serve similar purposes of identifying the source of goods or services.

A trademark is used to identify and distinguish the source of tangible goods, such as products or merchandise. For example, a company that produces electronic devices may use a trademark to distinguish its brand name, logo, or symbol from other competitors in the market. Trademarks are typically affixed to the products themselves or their packaging.

On the other hand, a service mark is used to identify and distinguish the source of services offered by a business. Service marks are applicable to businesses that provide intangible services, such as consulting firms, financial institutions, or educational services. Instead of labeling physical products, service marks are used to promote and advertise services.

Despite this distinction, the registration process and legal protections for trademarks and service marks are generally the same. In the United States, both trademarks and service marks are registered with the USPTO under the Lanham Act. The application process and requirements are similar, and both enjoy exclusive rights and legal protection against infringement.

To summarize, the primary difference between a trademark and a service mark lies in the nature of the goods or services they represent. Trademarks are used for physical products, while service marks are used for services. Both trademarks and service marks play a crucial role in brand recognition, consumer trust, and protecting the goodwill of businesses and their offerings.

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 they have different legal implications.

1. TM Symbol: The TM symbol stands for “trademark.” It is used to indicate that the owner claims common law rights in the mark and is using it as a trademark to identify their goods or services. While using the TM symbol is not a formal registration, it provides notice to the public that the owner considers the mark to be their property and is asserting their rights to it. This symbol can be used with both registered and unregistered trademarks.
2. ® Symbol: The ® symbol stands for “registered trademark.” It is used only for trademarks that have been formally registered with the appropriate government trademark office, such as the USPTO in the United States. Registering a trademark provides additional legal protections and benefits, such as nationwide protection, a legal presumption of ownership, and the ability to bring a lawsuit in federal court if infringement occurs. The ® symbol serves as public notice of the trademark’s registered status, and it is unlawful to use it with a mark that is not officially registered.

Using the ® symbol without obtaining the proper registration is a violation of trademark laws and could lead to legal consequences. In contrast, using the TM symbol does not require registration and is generally considered safe to use as long as the mark is being used as a trademark in commerce.

In summary, the TM symbol is used to indicate a claim of common law rights in a trademark, while the ® symbol is reserved for formally registered trademarks. Using the appropriate symbol helps inform the public of the status of a mark and can be an important tool in protecting and enforcing trademark rights. If a business or individual is unsure about which symbol to use or how to properly protect their trademark, it is advisable to seek guidance from a qualified trademark attorney.

Why should I conduct a trademark search before filing my trademark application?

The reason you want to conduct a trademark search before you file your application is that someone may have already trademarked a word or logo similar to your desired mark. If that mark is registered with the USPTO, the examining attorney will find it during his or her own search. Your application will be rejected and you’ll lose the application fee. It’s better that you know sooner rather than later if there’s a mark that’s too similar to the one you want.

How can I determine if a trademark is available?

Before adopting a new trademark for your business, it is crucial to conduct a comprehensive search to determine if the mark is available for use and registration. This search aims to identify existing trademarks that may conflict with your proposed mark, potentially leading to legal disputes and challenges in the future. Here are some steps to help you determine if a trademark is available:

1. Internet Search: Start by conducting a basic internet search using search engines like Google. Look for any businesses or products that might be using a similar or identical mark. This initial search can give you a sense of whether there are obvious conflicts.
2. USPTO Trademark Database: The United States Patent and Trademark Office (USPTO) maintains a searchable online database of registered trademarks and pending trademark applications. Use the Trademark Electronic Search System (TESS) to search for similar or identical marks in the same or related classes of goods or services.
3. Trademark Clearance Search: Consider conducting a more thorough trademark clearance search. This can involve using professional trademark search services or hiring a trademark attorney to conduct a comprehensive search. These searches go beyond the USPTO database and may include searches in state trademark databases, common law databases, and international databases if relevant.
4. Watch Services: Some businesses use watch services to monitor new trademark applications and registrations that might be similar to their own marks. Subscribing to a watch service can help you stay informed about potential conflicts even after your mark is registered.
5. Consult a Trademark Attorney: If you are unsure about conducting a trademark search or interpreting the search results, it is highly recommended to consult with a trademark attorney. They have the expertise and knowledge to conduct a thorough search and provide legal advice on the availability and registrability of your proposed mark.

Remember that even if a direct conflict is not found during the search, there might still be instances of similar marks that could cause confusion among consumers. If you proceed with a potentially conflicting mark, you risk infringing on someone else’s rights, leading to legal action against your business. To avoid these issues, investing time and resources in a comprehensive trademark search is a wise decision that can protect your brand and business in the long run.

Do I need to sell a product or service to obtain a registered trademark?

No, you do not necessarily need to sell a product or service to obtain a registered trademark. In the United States, trademark rights can be established based on either actual use or intent to use the mark in commerce.

1. Actual Use: If you are already using the mark in commerce to sell products or provide services, you may apply for a trademark registration based on actual use. This means you are currently using the mark in connection with the goods or services you offer to consumers.
2. Intent to Use: If you have not yet used the mark in commerce but have a bona fide intention to use it in the future, you can file an intent-to-use (ITU) trademark application with the USPTO. This allows you to secure priority for the mark while you prepare to launch your product or service.

It’s essential to note that while an ITU application reserves your right to use the mark, a registration will not be issued until you demonstrate actual use of the mark in commerce. After filing the ITU application, you will need to submit a “Statement of Use” to the USPTO, along with evidence of the mark’s use in commerce, once you start selling the product or providing the service. The USPTO will then review the evidence to determine if the mark is eligible for registration.

In summary, you can obtain a registered trademark based on either actual use in commerce or a bona fide intent to use the mark in commerce. The option you choose depends on whether you are currently using the mark or planning to use it in the future. Regardless of the approach, obtaining a registered trademark provides stronger legal protection and exclusive rights to the mark, which is beneficial for your business and brand identity. To navigate the trademark application process successfully, consider consulting with a trademark attorney who can guide you through the requirements and ensure your application is filed correctly.

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

Yes, you can still obtain a federal trademark in the United States even if you only provide your services locally. The geographical scope of your business operations does not necessarily limit your ability to obtain a federal trademark registration. However, there are some important considerations to keep in mind.

When you apply for a federal trademark, you must specify the geographic area where you are currently using the mark in commerce or have a bona fide intent to use it. This area can be as broad as nationwide or as specific as a single state or city. If your services are limited to a local area, you can choose to apply for a federal trademark registration based on your use of the mark in that particular geographic location.

There are a few reasons why obtaining a federal trademark, even for local services, can be advantageous:

1. Increased Protection: A federal trademark registration provides stronger legal protection compared to common law rights. It grants you exclusive rights to use the mark throughout the specified geographic area, giving you the ability to enforce your rights against infringing parties, even if they operate outside your local area.
2. Future Expansion: If you plan to expand your services beyond your current locality in the future, having a federal trademark registration already in place can simplify the process. It saves you from re-filing in new locations and helps protect your brand as you grow.
3. Credibility and Brand Recognition: A federal trademark adds credibility and legitimacy to your business. It signals to customers, partners, and investors that your brand is protected and serious about its intellectual property rights.
4. Defensive Strategy: A federal registration acts as a defensive measure, preventing others from obtaining a confusingly similar mark, even if they are located in different geographic regions.

It’s worth noting that while a federal trademark registration provides nationwide protection, you still need to actively use the mark in commerce to maintain the registration. Failure to do so could result in the cancellation of your trademark.

In conclusion, regardless of the geographic scope of your services, you can apply for a federal trademark registration. It’s a valuable step to safeguard your brand, gain legal protection, and position your business for potential growth and expansion in the future. Working with a trademark attorney can help you navigate the application process and ensure that your mark receives the best possible protection.

What should I register first: the name of my business or my brand logo?

When deciding what to register first, whether the name of your business or your brand logo, it’s essential to understand the differences in trademark protection for each and consider your business’s unique needs and priorities.

1. Business Name: Registering the name of your business as a trademark provides protection for the word or words that identify your company. This is often referred to as a wordmark. If your business name is distinctive and not merely descriptive of the goods or services you offer, it can be a strong trademark candidate. Registering the business name allows you to prevent others from using a similar name in the same industry, avoiding confusion among consumers. It also offers flexibility if you plan to introduce new products or services under the same business name.
2. Brand Logo: A brand logo, also known as a design mark, consists of a specific visual symbol, design, or image that represents your brand. Registering your brand logo as a trademark protects the visual elements that make your brand unique and recognizable. A logo can often be more distinctive and memorable than a business name alone, making it an essential part of your overall brand identity. If you choose to register your brand logo, you can also include the word elements (business name) that appear in the logo in your trademark application.

In some cases, businesses opt to register both the business name and the brand logo to provide comprehensive protection for their brand identity. Each registered trademark serves a specific purpose and reinforces the protection of your brand from different angles.

When deciding what to register first, consider the following factors:

1. Distinctiveness: If your brand logo is highly distinctive and serves as the primary identifier of your business, you might prioritize registering the logo first. On the other hand, if your business name is unique and not merely descriptive, it could also be a strong trademark candidate.
2. Budget and Resources: Trademark registration involves fees and time, so consider your budget and resources when deciding which element to register first. If you have limited resources, you may start with the most critical element that uniquely identifies your brand.
3. Legal Advice: Seeking advice from a trademark attorney is highly recommended. They can conduct a comprehensive trademark search to assess the availability of each element and guide you on the best registration strategy for your specific business needs.

In conclusion, whether to register your business name or your brand logo first depends on the distinctiveness and importance of each element to your brand identity. If possible, registering both can provide comprehensive protection and ensure that your brand is safeguarded effectively in the marketplace. Remember that trademark registration is an essential step in protecting your intellectual property and maintaining the exclusive rights to your brand assets.

What is a fanciful trademark?

A fanciful trademark is a type of trademark that consists of a coined or invented word, term, or design that has no meaning in the dictionary or common language. These trademarks are highly distinctive and memorable because they are entirely created for the purpose of identifying a specific product or service. Fanciful trademarks are considered to be the strongest and most protectable type of trademarks on the distinctiveness scale.

Unlike other categories of trademarks, such as descriptive or generic marks, which may be challenging to register and protect, fanciful trademarks enjoy a higher level of legal protection. The reason for this is that fanciful marks are inherently distinctive and are less likely to be used by others in the same or similar industries.

Examples of fanciful trademarks include well-known brands like “Xerox” for photocopiers, “Kodak” for cameras, “Google” for internet search engines, and “Pepsi” for soft drinks. These words were invented and had no pre-existing meaning before they were used as trademarks.

The distinctiveness of fanciful trademarks provides several advantages:

1. Strong Protection: Fanciful trademarks are eligible for the broadest scope of protection because they have no association with the product or service itself. This means that competitors cannot use similar-sounding or looking marks, reducing the likelihood of confusion among consumers.
2. Brand Recognition: Fanciful marks are highly memorable and can become synonymous with the product or service they represent. This aids in building strong brand recognition and consumer loyalty.
3. Trademark Registrability: Fanciful trademarks are more likely to be approved for federal registration with the USPTO or other trademark offices around the world. The inherent distinctiveness makes the registration process smoother.
4. Adaptability: Fanciful marks offer flexibility for businesses to expand into new product lines or industries without the risk of infringing on other trademarks.

When choosing a trademark for your business, consider the distinctiveness and uniqueness of the mark. While fanciful trademarks offer the most protection, they may require more effort in terms of marketing and consumer education since they are entirely new words or designs. However, the long-term benefits of a strong and protectable brand can be well worth the investment.

As always, consulting with a trademark attorney is crucial in selecting and registering a trademark, as they can guide you through the process and ensure that your chosen mark is both distinctive and available for registration.

What is the difference between a fanciful trademark and an arbitrary trademark?

Both fanciful trademarks and arbitrary trademarks are considered to be the strongest types of marks you can own. Here’s the difference between the two.

Fanciful trademarks are completely made up or invented words that only have meaning when describing the specific products they are attached to. For example, Oreo, Pepsi, and Kleenex are all fanciful trademarks.

Arbitrary trademarks are real words whose true definition is unrelated to the product it’s naming. Apple computer is one example. An apple is a fruit, but that definition has no relevance to technology or computers.

What is TEAS?

TEAS stands for the Trademark Electronic Application System, and it is an online filing system provided by the United States Patent and Trademark Office (USPTO) for trademark applicants. TEAS allows individuals and businesses to submit their trademark applications and related documents electronically, streamlining the application process and reducing paperwork.

There are several versions of TEAS, each catering to different types of trademark applications:

1. TEAS Plus: TEAS Plus is the most cost-effective option for filing a trademark application. It requires applicants to meet specific requirements and follow strict guidelines. In return, the filing fee is lower than other TEAS options. To qualify for TEAS Plus, the applicant must agree to use pre-approved descriptions of goods and services, commit to electronic correspondence, and ensure all required information is provided correctly upfront.
2. TEAS Reduced Fee (TEAS RF): TEAS RF offers a lower filing fee compared to the regular TEAS option. Applicants must adhere to some requirements similar to TEAS Plus, such as agreeing to electronic correspondence and providing specific goods and services descriptions. However, the requirements are more flexible than TEAS Plus.
3. TEAS Regular: TEAS Regular allows applicants to file a broader range of goods and services descriptions and does not require adherence to the strict guidelines of TEAS Plus or TEAS RF. The filing fee is higher than TEAS Plus or TEAS RF.
4. TEAS for Intent-to-Use (TEAS ITU): This option is used when an applicant has a bona fide intent to use a trademark in commerce but has not yet commenced actual use. It allows applicants to secure a filing date for their mark before submitting evidence of actual use.

Using TEAS has several advantages:

– Convenience: TEAS allows applicants to complete and submit their trademark applications online at any time, providing greater convenience and accessibility.

– Immediate Filing Date: Filing a trademark application through TEAS provides an immediate filing date, which is crucial for establishing priority over potential conflicting marks.

– Faster Processing: Electronic filing generally leads to faster processing times compared to paper applications.

– Electronic Correspondence: All communication with the USPTO regarding the trademark application is conducted electronically, making it easier for applicants to receive updates and respond to any inquiries.

Applicants should carefully select the appropriate TEAS option based on their specific needs and requirements. It’s advisable to consult with a trademark attorney before filing to ensure that the application is properly prepared and meets all the necessary criteria for the selected TEAS option.

How long does the trademark application process take?

The trademark application process in the United States can vary in duration, depending on several factors. On average, it takes about 8 to 12 months to complete the process, but this timeframe can be shorter or longer based on the complexity of the application and the workload of the United States Patent and Trademark Office (USPTO).

Here is a breakdown of the different stages in the trademark application process and the timeframes associated with each:

1. Initial Review (1-3 months): After filing the trademark application, the USPTO conducts an initial review to ensure that all required information is included and that the application meets the basic filing requirements. This review typically takes 1 to 3 months.
2. Examination (4-6 months): During the examination phase, a trademark examining attorney reviews the application in detail to determine if the mark meets the criteria for registration. The attorney checks for potential conflicts with existing trademarks, examines the mark’s distinctiveness, and reviews the description of goods and services. This examination period generally takes 4 to 6 months.
3. Publication (1-2 months): If the examining attorney approves the mark for registration, it is published in the USPTO’s Official Gazette. This publication serves as a public notice of the pending application and allows third parties to oppose the registration if they believe it would conflict with their existing trademarks. The publication period lasts for 30 days, and an additional 30-day extension may be granted for opposition filings.
4. Registration (2-4 months): Assuming no oppositions are filed, or any filed oppositions are successfully resolved, the USPTO will issue a Certificate of Registration for the trademark. This final registration process usually takes 2 to 4 months.

It’s important to note that the timeframe can be extended if any issues arise during the examination process or if there are delays in responding to USPTO correspondence. Additionally, more complex applications or applications that face opposition from third parties may experience longer processing times.

To ensure a smoother and faster application process, applicants should accurately complete all required forms, conduct a thorough trademark search before filing, and promptly respond to any USPTO communications or requests for additional information.

Working with a qualified trademark attorney can be beneficial in navigating the application process efficiently and avoiding potential pitfalls that could delay the registration of your trademark. They can also provide valuable guidance on building a strong trademark application that stands a better chance of approval by the USPTO.

How long does a trademark last?

A registered trademark in the United States can last indefinitely, as long as the owner continues to use the mark in commerce and files the necessary maintenance documents with the United States Patent and Trademark Office (USPTO) at the appropriate intervals.

Once a trademark is registered, it initially receives protection for ten years from the date of registration. After the initial ten-year period, the trademark owner must file a Declaration of Continued Use (Section 8 Declaration) and a Application for Renewal (Section 9 Renewal) between the ninth and tenth year after registration. If these documents are properly filed and accepted by the USPTO, the trademark registration will be renewed for an additional ten-year term.

The process of renewing the trademark every ten years can continue indefinitely as long as the owner continues to use the mark and submits the necessary maintenance filings within the specified timeframes. Therefore, a registered trademark can potentially last for many decades, or even centuries, as long as it remains in use and the renewal requirements are met.

It’s essential to note that while a registered trademark can last indefinitely, it requires ongoing use and proper maintenance to remain valid. If a trademark is abandoned, not renewed, or not actively used in commerce, it may lose its protection and become vulnerable to cancellation or opposition by third parties.

To maintain the strength and protection of your trademark over time, it is essential to:

1. Continuously Use the Trademark: Use the mark in commerce consistently for the goods or services it covers. This demonstrates ongoing use of the mark and strengthens its protection.
2. File Timely Maintenance Documents: File the required maintenance documents, such as the Section 8 Declaration and Section 9 Renewal, within the specified timeframes to keep the registration active.
3. Monitor and Enforce: Monitor for potential infringing uses of your mark and take appropriate enforcement actions when necessary to protect your rights.
4. Use the Trademark Properly: Use the mark consistently and properly to maintain its distinctiveness and prevent it from becoming generic.

By diligently following these guidelines and working with a trademark attorney to navigate the renewal process, you can maintain the protection of your trademark for the long term, preserving its value as a valuable asset for your business.

Can I use a trademark without registering it?

Yes, you can use a trademark without registering it. Trademark rights in the United States are primarily based on actual use of the mark in commerce, rather than registration. When you use a trademark in connection with specific goods or services, you automatically acquire common law trademark rights, which can provide you with some level of protection.

Common law trademark rights offer certain benefits:

1. Local Protection: Common law trademark rights typically extend only to the geographic area where the mark is being used. This means that you may have protection against others using a similar mark in the same local area.
2. Notice to Others: Using the ™ symbol with your mark provides notice to others that you consider it your trademark, even if it’s not registered. While common law rights exist without using the ™ symbol, displaying it is a common practice to assert your claim to the mark.

However, common law rights have limitations compared to federal trademark registration:

1. Limited Protection: Common law rights are narrower in scope compared to federal registration. They may not provide protection in other geographic regions beyond where the mark is used.
2. Enforcement Challenges: Enforcing common law rights can be more challenging and costly than enforcing federally registered rights. Registration provides a presumption of ownership and validity, making legal action against infringers easier.
3. Priority Conflicts: Without a federal registration, your common law rights may be weaker than those of a later user who obtains a federal registration for a similar mark. In case of a priority dispute, the registered user may have stronger rights.
4. Limited Damages: If you need to pursue legal action for trademark infringement, damages available under common law rights may be limited compared to registered trademarks.

To strengthen your trademark protection and gain additional benefits, consider registering your trademark with the United States Patent and Trademark Office (USPTO). Federal registration provides nationwide protection, a presumption of ownership, and other legal advantages that enhance your ability to protect your brand.

Consulting with a trademark attorney is advisable when determining the best strategy for your specific situation. They can help you understand the advantages and disadvantages of common law rights versus federal registration and guide you through the process to protect your trademark effectively.

What protection does a trademark provide?

There’s no better way to protect your business and your brand than by registering your trademark with the USPTO. When you register your trademark, you gain what is called “the presumption of nationwide validity.” Simply put, that means if you take someone to court for infringing on your trademark rights, then you only need to show your trademark registration as proof that you are the rightful owner of the mark. No other proof is required.

What is the process for registering a federal trademark?

The first step is submitting a trademark application to the United States Patent and Trademark Office (USPTO). After it’s received by the USPTO, an examining attorney will thoroughly evaluate the application and search the USPTO database for an existing trademark that might be the same or similar to your mark.

After about 6 months, you’ll hear back from the USPTO. If they’ve found an existing trademark that’s too similar to yours, then your application will be denied. If they’ve found small errors or missing information on your application, then they’ll give you a deadline for providing the information.

If no errors are found and your mark looks to be unique, then the examining attorney will schedule your mark for publication in the Official Gazette. The USPTO distributes this publication online every Tuesday. Once your mark appears there, anyone can come forward within 30 days and oppose your mark. If no one comes forward in 30 days, then you’ll move on to the final steps of trademark registration.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is highly recommended when you are considering adopting a new trademark, seeking to register an existing trademark, or facing potential trademark issues. A trademark lawyer can provide valuable legal guidance, ensure your trademark rights are protected, and navigate the complexities of the trademark process. Here are some specific scenarios when it’s beneficial to engage a trademark attorney:

1. Trademark Search and Clearance: Before adopting a new trademark, it’s essential to conduct a comprehensive search to ensure it is available for use and registration. A trademark attorney can perform a thorough search, assess the results, and advise you on the availability and registrability of your proposed mark. This helps avoid potential conflicts and infringement issues down the line.
2. Trademark Registration: Registering a trademark with the United States Patent and Trademark Office (USPTO) can be a complex and time-consuming process. A trademark attorney can assist with preparing and filing the application, ensuring it meets all legal requirements, and guiding you through any challenges or objections that may arise during examination.
3. Protecting Brand Identity: Your brand’s identity is vital to the success of your business. A trademark attorney can help you create a strong trademark strategy, including protecting your business name, logo, slogans, and other brand elements, to establish a solid foundation for your brand’s recognition and exclusivity.
4. Enforcement and Defense: If you believe someone is infringing on your trademark rights or if you are facing a trademark infringement claim, a trademark attorney can help you enforce your rights or defend against allegations. They can assess the situation, advise you on the best course of action, and represent you in negotiations or legal proceedings.
5. Trademark Portfolio Management: For businesses with multiple trademarks or international operations, managing a trademark portfolio can be challenging. A trademark attorney can assist with portfolio management, ensuring all registrations are properly maintained, renewed, and protected.
6. International Trademark Protection: If you plan to expand your business globally, a trademark attorney with expertise in international trademark laws can help navigate the complexities of obtaining trademark protection in foreign jurisdictions.
7. Cease and Desist Letters: If you receive a cease and desist letter claiming trademark infringement, a trademark attorney can review the allegations, assess your potential liability, and guide you on how to respond effectively.

Overall, working with a trademark lawyer is essential to ensure your trademark rights are adequately protected and to avoid costly legal disputes. A qualified attorney can provide valuable advice and expertise throughout the entire trademark process, giving you peace of mind and confidence in the strength of your brand’s identity and exclusivity.

What is a trademark’s specimen?

A trademark’s specimen is a sample or example of how the trademark is used in commerce to identify and distinguish the goods or services associated with the mark. When applying for a trademark registration with the United States Patent and Trademark Office (USPTO) or other trademark offices around the world, submitting an acceptable specimen is a crucial part of the application process.

The purpose of providing a specimen is to demonstrate that the trademark is being used in connection with the specified goods or services, as claimed in the application. It serves as evidence of the mark’s actual use in commerce and helps the trademark examiner determine whether the mark qualifies for registration.

The type of specimen required depends on whether the mark is used with goods or services:

1. Specimen for Goods: If the trademark is used with tangible goods or products, an acceptable specimen can be a label, tag, packaging, container, or the product itself, displaying the mark in connection with the goods being sold or distributed in commerce. For online sales, website screenshots showing the mark on the product page may also be acceptable.
2. Specimen for Services: If the trademark is used in connection with services, a specimen can be materials showing the mark as part of the advertising or rendering of the services. This can include brochures, advertisements, website screenshots with the mark displayed in connection with the services, or signage.

The key requirement for a valid specimen is that it shows the mark used in a manner that consumers encounter in the marketplace, associating it directly with the goods or services being offered. The specimen must be clear and legible, showing the mark exactly as it appears in the trademark application.

It’s important to note that improper or insufficient specimens can result in the rejection of the trademark application or delays in the registration process. Therefore, applicants should ensure they submit appropriate and well-prepared specimens that meet the USPTO’s requirements.

Working with a trademark attorney can be beneficial in preparing and submitting the right specimen for your trademark application. A qualified attorney can guide you through the process, help you select appropriate specimens, and increase the chances of a successful registration for your trademark.

What is a priority date?

Your priority date is the date you submit your trademark application to the USPTO. Anyone trying to register a mark similar to yours after that date will not be approved. This is one reason to start the trademark application process as soon as possible. You have some protections in place, even as your trademark application is pending review for approval.

Can I request an expedited approval of my trademark registration?

Yes, you can request expedited processing of your trademark registration under certain circumstances. The United States Patent and Trademark Office (USPTO) offers an option called the “TEAS Reduced Fee (TEAS RF) – TEAS Expedited Trademark Application” for applicants who wish to expedite the examination of their trademark application.

To request expedited processing, you must meet specific requirements and pay an additional fee on top of the regular filing fees. The TEAS RF option allows you to receive faster processing of your application, and the USPTO aims to provide a response to your application within approximately two to three months from the date the request is granted.

Here are the eligibility requirements for requesting expedited processing through TEAS RF:

1. TEAS RF Eligibility: Your application must be filed using the TEAS RF form, which requires adherence to certain application requirements and rules.
2. Basis for Filing: You must be filing the application based on actual use (use in commerce) in the United States, not on an intent-to-use basis/
3. Specimen Submission: You must submit acceptable specimens showing how the mark is used in commerce with your initial application. Expedited processing is not available for applications that require subsequent specimen submissions.
4. Fee and Statement: You need to pay the additional expedited processing fee and include a statement in your application that justifies the need for expedited examination.

The decision to request expedited processing should be made carefully, as it involves extra fees and must meet specific requirements. Expedited processing can be beneficial in certain situations where time-sensitive business needs or opportunities require a faster registration process. However, if the application does not meet the expedited processing criteria or is not filed correctly, it may cause delays or lead to additional costs.

As with any trademark application, it is advisable to work with a trademark attorney to ensure that all requirements are met, the application is correctly prepared, and the best strategy is chosen for your specific situation. An attorney can also assist in determining whether expedited processing is the appropriate option for your trademark registration goals.

Can I trademark a phrase?

Yes, you can trademark a phrase as long as it meets the necessary criteria for trademark protection. Trademark law allows for the registration and protection of phrases that function as source identifiers for goods or services, and that are distinctive and not merely descriptive or generic.

To successfully trademark a phrase, it should possess the following qualities:

1. Distinctiveness: The phrase must be distinctive, meaning it stands out and is not commonly used to describe the goods or services in question. There are four categories of distinctiveness:

– Fanciful or Coined: Invented words or phrases with no existing meaning, such as “Kodak” for cameras.

– Arbitrary: Common words used in an unrelated context, such as “Apple” for computers.

– Suggestive: Phrases that suggest but do not directly describe the goods or services, requiring consumers to make a mental connection, such as “Netflix and chill.”

– Descriptive: Phrases that directly describe the goods or services, which may acquire distinctiveness over time through extensive use and recognition.

2. Use in Commerce: To obtain federal registration, the phrase must be used in commerce to identify and distinguish the goods or services. For phrases that are not yet in use, you can file an intent-to-use (ITU) application to secure a filing date while preparing to use the phrase in commerce.
3. No Likelihood of Confusion: Your phrase should not cause confusion with existing trademarks for similar goods or services. A comprehensive trademark search can help identify potential conflicts.
4. No Generic Terms: Phrases that are generic or widely used to describe a category of goods or services cannot be trademarked. For example, you cannot trademark “Computer” to identify a computer brand.

Once you have confirmed that your phrase meets the necessary criteria for trademark protection, you can proceed with the application process. The application will undergo examination by a trademark attorney at the United States Patent and Trademark Office (USPTO) to determine its eligibility for registration.

Obtaining a trademark registration for your phrase provides numerous benefits, including nationwide protection, the ability to enforce your rights against infringers, and the establishment of a valuable intellectual property asset for your business.

To ensure a smooth and successful trademark application process, it is advisable to work with a trademark attorney who can guide you through the requirements, conduct a thorough trademark search, and help prepare and file the application correctly to maximize the chances of registration.

Can I trademark a logo?

Yes, you can trademark a logo to protect its design and use as a source identifier for your goods or services. Trademark law allows for the registration and protection of logos, provided they meet the necessary criteria for trademark protection.

To successfully trademark a logo, consider the following factors:

1. Distinctiveness: Like any trademark, the logo must be distinctive and capable of identifying the source of the goods or services. Distinctive logos are more likely to receive trademark protection. There are several levels of distinctiveness:

– Fanciful or Coined: Highly distinctive logos with no existing meaning, such as abstract symbols or invented designs.

– Arbitrary: Common symbols used in an unrelated context, such as an image of a fruit to represent a technology company.

– Suggestive: Logos that suggest but do not directly describe the goods or services they represent, requiring consumers to make a mental connection.

– Descriptive: Logos that directly describe the goods or services, which may acquire distinctiveness over time through extensive use and recognition.

2. Use in Commerce: To obtain federal trademark registration, the logo must be used in commerce to identify and distinguish the goods or services. For logos that are not yet in use, you can file an intent-to-use (ITU) application to secure a filing date while preparing to use the logo in commerce.
3. No Likelihood of Confusion: Your logo should not cause confusion with existing trademarks for similar goods or services. A comprehensive trademark search can help identify potential conflicts.
4. Distinctive Design Elements: The logo should include distinctive design elements, making it unique and easily distinguishable from other logos in the marketplace.

Once you have confirmed that your logo meets the necessary criteria for trademark protection, you can proceed with the trademark application process. The application will undergo examination by a trademark attorney at the United States Patent and Trademark Office (USPTO) to determine its eligibility for registration.

Obtaining a trademark registration for your logo provides several advantages, including nationwide protection, the ability to enforce your rights against infringers, and the creation of a valuable intellectual property asset for your brand.

To ensure a smooth and successful trademark application process for your logo, it is advisable to work with a trademark attorney who can guide you through the requirements, conduct a thorough trademark search, and help prepare and file the application correctly to maximize the chances of registration. An attorney can also assist in navigating any potential issues or objections that may arise during the examination process.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark registration for a color can be more challenging compared to traditional word marks or logos. To successfully trademark a color, the color must be used as a distinctive identifier of the source of specific goods or services and meet specific legal requirements.

Here are some key considerations when seeking to trademark a color:

1. Distinctiveness: The color must be used in a way that makes it inherently distinctive or has acquired secondary meaning in the minds of consumers. Inherently distinctive colors are those that are unusual or unexpected in the industry, setting the product apart from competitors. Colors that are commonly associated with a particular product or service, such as green for environmental products, may be more difficult to trademark.
2. Non-Functional: The color must not serve a functional purpose in the product or service. If the color is essential for the functionality of the product or affects its performance, it may not be eligible for trademark protection.
3. Secondary Meaning: If the color is not inherently distinctive, it may still be eligible for trademark protection if it has acquired secondary meaning through extensive and exclusive use in the marketplace. This means that consumers associate the color with a particular brand or source of goods or services.
4. Evidence of Distinctiveness: When applying for a color trademark, it is essential to provide evidence and arguments to support the color’s distinctiveness, whether inherent or acquired.

Notable examples of successfully trademarked colors include Tiffany & Co.’s use of robin’s egg blue for its jewelry boxes and Owens-Corning’s use of the color pink for fiberglass insulation.

Obtaining a color trademark requires careful consideration and a strong legal strategy. It is advisable to work with a trademark attorney who has experience in handling color trademark applications. An attorney can guide you through the process, conduct a thorough analysis of the color’s distinctiveness, and help prepare and file the application to maximize the chances of registration.

Overall, while it is possible to trademark a color, it is a complex and specialized area of trademark law. Success in obtaining a color trademark registration depends on the unique circumstances of each case and the distinctiveness of the color in question.

Can I transfer my trademark to someone else?

Yes, you can transfer your trademark to someone else through a process known as a trademark assignment. A trademark assignment is the legal transfer of ownership of a trademark from one party (the assignor) to another party (the assignee). The assignment must be recorded with the United States Patent and Trademark Office (USPTO) or the relevant trademark office in other countries to ensure the new owner’s rights are officially recognized.

Here are some important points to consider when transferring a trademark:

1. Written Agreement: The transfer of a trademark must be documented in a written agreement between the assignor and the assignee. The agreement should clearly outline the terms of the transfer, including the specific trademark being transferred, any associated goodwill, and any financial considerations involved.
2. Recordation with the USPTO: While the assignment of a trademark is legally effective between the parties involved, recordation with the USPTO is crucial for public notice and to establish the assignee’s legal rights. Recordation also provides the assignee with the ability to enforce the trademark against infringers.
3. Updating Trademark Records: After the assignment is recorded with the USPTO, the new owner’s information will be updated in the trademark records. This ensures that all future communications and notices regarding the trademark are sent to the correct owner.
4. Assignment of Goodwill: When a trademark is transferred, the assignment may also include the transfer of the associated goodwill. Goodwill refers to the reputation and value of the trademark as it relates to the products or services it represents.
5. International Assignments: If the trademark is registered in multiple countries, each country’s trademark office must be notified of the assignment and the necessary documentation must be filed according to the regulations of each jurisdiction.

It’s important to note that while trademark assignment is a legitimate means of transferring ownership, the assignment should be carefully considered and documented. Both parties should seek legal advice to ensure the assignment is properly executed, and all legal requirements are met.

Whether you are transferring or acquiring a trademark, working with a trademark attorney can be beneficial to navigate the assignment process and ensure that all necessary legal steps are taken to protect the rights and interests of both parties involved.

Can I license my trademark to others?

Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark under specific terms and conditions. The licensing agreement sets out the rights and responsibilities of both parties regarding the use of the trademark.

Here are some key points to consider when licensing your trademark:

1. Written Agreement: Like trademark assignments, trademark licensing agreements should be documented in writing. The agreement should outline the scope of the license, including the specific goods or services covered, the duration of the license, any geographic restrictions, quality control requirements, and financial considerations, such as royalty payments.
2. Quality Control: As the trademark owner, you have a duty to maintain the quality and reputation associated with your trademark. The licensing agreement should include provisions that allow you to exercise quality control over the licensee’s use of the trademark to ensure it meets your standards.
3. Record Keeping: It’s essential to keep accurate records of the licensing agreement and any changes or renewals. This helps protect your trademark rights and serves as evidence of the authorized use of the mark.
4. Duration and Renewal: The licensing agreement should specify the duration of the license and any renewal options. Trademark licenses are typically for a specific period, and renewal may be subject to certain conditions.
5. Geographic Scope: Consider whether the license is limited to a specific geographic area or whether it covers national or international use. Clearly define the territorial scope in the agreement.
6. Termination: Include provisions in the agreement that specify the circumstances under which either party can terminate the license. This protects both parties’ interests and outlines the steps for a smooth termination process if necessary.

Licensing your trademark can be a strategic way to expand your brand’s reach and generate revenue through licensing fees or royalties. However, it’s essential to choose licensees carefully and ensure they are capable of maintaining the quality and integrity of your brand.

Drafting a well-structured and comprehensive licensing agreement is crucial to protect your trademark rights and maintain control over how your trademark is used. Consulting with a trademark attorney is highly recommended to help you navigate the complexities of trademark licensing, ensure compliance with legal requirements, and safeguard your trademark’s value and reputation.

If my trademark is registered in the United States is it protected in other countries as well?

No, a trademark registration in the United States does not automatically provide protection in other countries. Trademark rights are generally territorial, which means that a trademark registration in one country only grants protection within the borders of that country.

If you wish to protect your trademark in other countries, you will need to apply for trademark registration in each country where you seek protection. This process involves filing a separate trademark application with the relevant trademark office in each country, adhering to their specific requirements and procedures.

There are two primary routes for seeking international trademark protection:

1. Madrid System (WIPO): The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to apply for international trademark protection through a single application. The Madrid System simplifies the process by allowing applicants to designate multiple countries where they seek protection, based on their existing national trademark application or registration in their home country (known as the “home” application or registration). However, it’s important to note that each designated country will examine the application according to its own trademark laws and requirements.
2. National Applications: Alternatively, trademark owners can file separate national applications directly with the trademark offices of the individual countries where protection is desired. This approach may be more suitable if you only need protection in a few specific countries and don’t require the broad coverage offered by the Madrid System.

When expanding your business into international markets, it’s essential to consider trademark protection early in the process. Failing to protect your trademark in other countries could leave it vulnerable to exploitation by third parties or potential infringement. Additionally, different countries may have unique trademark laws and regulations, so it’s crucial to work with local trademark attorneys or specialists who are familiar with the trademark requirements in each target country.

International trademark protection can be a complex and lengthy process, and it’s important to plan ahead and seek professional advice to ensure your trademarks are adequately protected in the countries where you operate or plan to do business.

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

While there is no “international trademark” that provides universal protection worldwide, there are international systems and treaties that facilitate the process of seeking trademark protection in multiple countries. These systems aim to streamline the registration process and make it more efficient for trademark owners seeking protection in multiple jurisdictions.

Two prominent international systems for trademark registration are:

1. Madrid System (WIPO): The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to apply for international trademark protection through a single application. This system simplifies the process by allowing applicants to designate multiple countries where they seek protection, based on their existing national trademark application or registration in their home country (known as the “home” application or registration). However, it’s important to note that each designated country will examine the application according to its own trademark laws and requirements. The Madrid System offers a cost-effective and centralized approach to seeking international protection.
2. European Union Trade Mark (EUTM): For businesses looking to protect their trademarks in the European Union (EU) countries, the EUTM system provides a unified registration system. By filing a single application with the European Union Intellectual Property Office (EUIPO), trademark owners can secure protection in all 27 EU member states. This system simplifies the registration process and ensures consistent protection across the EU market.

It’s important to understand that while these international systems streamline the application process and make it more accessible, they do not provide a single, all-encompassing international trademark registration that grants protection in every country worldwide. Each designated country under the Madrid System or the EU under the EUTM system independently examines and enforces the trademark rights based on their domestic laws.

If you seek protection beyond the countries covered by the Madrid System or EUTM, you will need to file separate national applications in each country where you desire protection. It is crucial to consider the specific markets where you operate or plan to expand and seek trademark protection in those countries to safeguard your brand’s identity and enforce your rights against potential infringers.

To navigate the complexities of international trademark protection effectively, it is advisable to work with experienced trademark attorneys or specialists who can guide you through the process, ensure compliance with various legal requirements, and help protect your trademarks in the global marketplace.

What is a trademark office action?

A trademark office action is a written communication from the trademark examining attorney at the United States Patent and Trademark Office (USPTO) or other trademark offices in different countries. The purpose of an office action is to notify the trademark applicant of issues or deficiencies in the trademark application that need to be addressed before the application can proceed to registration.

Office actions can occur at different stages of the trademark application process, including after the initial filing or during the examination phase. The examining attorney reviews the application to ensure it meets all legal requirements and does not conflict with existing trademarks. If the application contains errors or lacks required information, the examining attorney will issue an office action outlining the specific issues that need to be resolved.

There are two main types of office actions:

1. Non-Substantive Office Action: This type of office action addresses minor administrative issues, such as clarifying the identification of goods and services, correcting a typographical error, or requesting additional information or specimen submission.
2. Substantive Office Action: A substantive office action involves more significant issues that could affect the registration of the trademark. Common reasons for substantive office actions include likelihood of confusion with existing trademarks, lack of distinctiveness, or issues with the description of goods and services.

Upon receiving an office action, the applicant has a specified period (usually six months) to respond to the issues raised. Failure to respond or inadequate responses can result in the application being abandoned, and the applicant losing the opportunity to obtain registration.

Responding to a trademark office action requires careful attention and, in the case of substantive issues, often involves legal arguments and evidence to support the registration of the trademark. It is highly advisable to work with a trademark attorney who can help draft a proper response, navigate complex legal issues, and increase the likelihood of a successful outcome.

Successfully addressing office actions is crucial for securing trademark registration and protecting your brand’s identity and exclusivity in the marketplace. A prompt and well-prepared response ensures that your trademark application moves forward and helps build a strong foundation for your brand’s recognition and protection.

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

Receiving an office action on your trademark application does not necessarily mean that your application will be denied. It is a standard part of the trademark registration process, and many applications encounter office actions for various reasons. The key is to carefully review the office action, understand the issues raised by the examining attorney, and respond appropriately to address the concerns and move the application forward.

Here are the steps you should take if you receive an office action:

1. Read the Office Action Carefully: Take the time to thoroughly read and understand the content of the office action. Identify the specific issues raised by the examining attorney, which could range from minor administrative errors to substantive legal concerns.
2. Consult with a Trademark Attorney: It is highly advisable to seek the guidance of a trademark attorney when responding to an office action. A qualified attorney can review the office action, provide an assessment of the potential challenges, and help you prepare a well-structured and persuasive response.
3. Understand the Deadline: Office actions typically include a response deadline, usually set to six months from the date of the office action. It is essential to adhere to this deadline to avoid abandonment of the application.
4. Address Substantive Issues: If the office action raises substantive issues, such as likelihood of confusion or lack of distinctiveness, your attorney will need to formulate legal arguments and provide evidence to support the registration of your trademark.
5. Correct Administrative Errors: For non-substantive issues, such as clerical errors or missing information, ensure that you promptly correct the identified mistakes and provide any requested additional information or specimens.
6. Craft a Comprehensive Response: Your response to the office action should be well-organized, clear, and detailed. It should address each issue raised in the office action and provide supporting evidence or legal arguments where necessary.
7. Submit the Response: File your response with the trademark office before the deadline expires. Pay attention to the filing requirements and any fees that may apply.
8. Wait for a Decision: After submitting your response, the examining attorney will review it and determine whether the issues have been adequately addressed. They will either approve the application for registration or issue a subsequent office action if further changes or clarifications are needed.

Successfully responding to an office action is essential to obtaining trademark registration. Working with an experienced trademark attorney can significantly increase the chances of a favorable outcome. An attorney can guide you through the complex process, ensure that all legal requirements are met, and present a strong case for the registration of your trademark.

How do I enforce my trademark rights?

Enforcing your trademark rights is crucial to protect your brand’s identity, reputation, and exclusivity in the marketplace. If you believe that someone is using your trademark without authorization or in a way that could cause confusion among consumers, you have several options for enforcing your rights:

1. Cease and Desist Letter: Before pursuing legal action, consider sending a cease and desist letter to the infringing party. The letter demands that they stop using your trademark and may include a request for damages or other remedies. A cease and desist letter serves as a formal notice of your trademark rights and can often lead to a resolution without resorting to litigation.
2. Negotiation and Settlement: Engage in negotiations with the infringing party to reach a settlement or licensing agreement. A negotiated resolution can allow you to retain control over your trademark while potentially gaining financial compensation or other concessions.
3. Mediation or Alternative Dispute Resolution: In some cases, mediation or alternative dispute resolution methods can be used to resolve trademark disputes outside of court. This approach can save time and expenses and may lead to a mutually satisfactory resolution/
4. Trademark Opposition and Cancellation Proceedings: If the infringing party has filed for a trademark that conflicts with yours, you can initiate opposition or cancellation proceedings before the relevant trademark office. This allows you to challenge the registration of the conflicting mark and protect your prior rights.
5. Trademark Litigation: If negotiations or other methods are unsuccessful, filing a trademark infringement lawsuit may become necessary. A lawsuit seeks to enforce your rights, obtain injunctive relief to stop the infringement, and potentially recover damages for the harm caused to your brand.
6. Customs Recordation: If you are dealing with counterfeit goods or unauthorized imports, record your trademark with customs authorities. This allows customs officials to detain and seize counterfeit products at borders.
7. Online Enforcement: Monitor online marketplaces and social media platforms for unauthorized use of your trademark. Many online platforms have procedures to report trademark infringement and take down infringing content.

It’s essential to act promptly when enforcing your trademark rights to prevent further damage to your brand and preserve your legal standing. Consult with a trademark attorney who specializes in intellectual property law to understand the best course of action for your specific situation. An attorney can guide you through the enforcement process, protect your rights effectively, and help you achieve a favorable resolution to trademark disputes.

Why Trademark Registration Matters for Gilbert Businesses

Located in beautiful Maricopa County, Gilbert Arizona is known for giving residents and visitors the best of both worlds—small-town charm with big-city arts and entertainment. It’s no wonder that small businesses are popping up all over Gilbert!

Gilbert’s entrepreneurs know how much work goes into getting a business off the ground. However, if they don’t make sure that they register their trademark with the USPTO, there could be trouble down the line.

Imagine the following: Cassandra has recently become a licensed physical therapist and she wants to open her own practice. She names her new business In Motion Physical Therapy and signs the lease on office space in the Westbank neighborhood of Gilbert.

Cassandra has heard about trademark registration, but she’s not ready for that just yet. She has so many other things to take care of, such as developing a marketing plan, designing a logo, creating a website, interviewing potential employees, and so much more. She even orders t-shirt and sweatshirts with the In Motion logo on it.

Cassandra is ready to open her doors for businesses and sets the date for her grand opening. Before she can even open for business, however, she finds a cease-and-desist letter in the mail. There’s a business called Motion Physical Therapy in Phoenix and they’ve registered the name of their business with the USPTO. They believe that the name of Cassandra’s business is too similar to theirs so they have every right to request that she cease operating under that name.

Cassandra is understandably upset and is concerned about the time and money it will take to rebrand her business. She decides to contact a trademark attorney for advice.

If Cassandra had actually consulted with a trademark attorney before she started planning her business, she would not be in this predicament. Her attorney would have conducted a comprehensive trademark search before submitting the trademark application and advised Cassandra to find a new name for her business that was truly unique before moving forward with her plans.

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 Gilbert and yet it can assist businesses from Arizona in registering a federal Trademark because trademarks are governed under federal law.

Trademarks Services for Gilbert 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