Trademark Attorney Services
for Jackson MS
Companies.

Jackson, Mississippi Businesses Use Cohn Legal for Trademark Services

Cohn Legal, PLLC is a boutique law firm that focuses on establishing and protecting the trademark and intellectual property rights of business owners in Jackson, Mississippi. Our priority is delivering world-class legal counsel at cost-effective rates. While excellence in legal representation is a given, we take greater pride in creating lasting bonds with our clients.

Top Questions Jackson Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Jackson, Mississippi, 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 Jackson, Mississippi, 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 protection that grants exclusive rights to the owner over a particular name, word, phrase, symbol, design, or combination thereof, used to identify and distinguish their goods or services from those of others in the marketplace. It serves as a unique identifier of the source of the products or services and helps build brand recognition and consumer trust.

In simpler terms, a trademark is like a badge that sets apart one company’s offerings from others, allowing consumers to easily recognize and associate them with a specific brand. It acts as a valuable asset for businesses, as it helps them establish and protect their brand identity, reputation, and market position.

When a trademark is registered, it provides the owner with legal protection and exclusive rights to use the mark in connection with the goods or services specified in the registration. This means that other companies cannot use a similar or confusingly similar mark that may lead consumers to mistake their products or services for those of the trademark owner.

Trademark protection typically extends to a specific jurisdiction, such as a country or region, although there are international treaties and systems that facilitate trademark protection in multiple countries. It is important for businesses to conduct thorough research and clearance checks before adopting a trademark to ensure its availability and avoid infringing on existing trademarks.

Overall, trademarks play a crucial role in branding, marketing, and the overall success of a business by allowing consumers to easily identify and trust products or services associated with a particular brand.

Is there a difference between a trademark and service mark?

Yes, there is a difference between a trademark and a service mark, although both serve the same fundamental purpose of distinguishing the source of goods or services.

A trademark is used to identify and protect the source of goods, meaning physical products such as clothing, electronics, or food items. It can be a word, symbol, logo, or any combination thereof that uniquely identifies the products of a particular company.

On the other hand, a service mark is specifically used to identify and protect the source of services. It is applicable when a company offers services rather than tangible goods. Examples of services that can be protected by a service mark include legal services, consulting, advertising, and entertainment services. Similar to a trademark, a service mark can be a word, symbol, or logo that represents the service provider.

The distinction between a trademark and a service mark lies in the nature of the offering: products versus services. While the terms “trademark” and “service mark” are often used interchangeably, the specific term used depends on the type of offering associated with the mark.

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

The ® symbol and the TM symbol have different meanings and usage.

The TM symbol is used to indicate that a word, phrase, logo, or other mark is being claimed as a trademark. It can be used without any formal registration with a government trademark office. The TM symbol is often used to notify the public that the mark is being used as a source identifier for goods or services, and the owner is asserting their rights to it.

On the other hand, the ® symbol, also known as the “circle R,” is used to indicate that a trademark has been registered with the appropriate government authority. It signifies that the mark has undergone the registration process and has been granted legal protection. The ® symbol can only be used once the mark has been officially registered, providing the owner with additional rights and legal benefits.

Using the ® symbol without obtaining proper registration is illegal and can result in penalties. Therefore, it is important to use the TM symbol for unregistered marks and the ® symbol for registered marks to ensure proper notice to the public and to assert the rights associated with the mark.

It’s worth noting that the ® symbol is generally used in countries where it is recognized, such as the United States, while other countries may have their own symbols or notations for registered trademarks.

How can I determine if a trademark is available?

To determine if a trademark is available, it is essential to conduct a comprehensive trademark search. This search helps identify existing trademarks that may conflict with the proposed mark you intend to use or register. There are a few steps you can follow to conduct a thorough trademark search:

1. Preliminary Search: Begin with a preliminary search using online databases, such as the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). This search allows you to check for identical or highly similar trademarks that are already registered or pending registration with the USPTO. You can also explore international trademark databases if you are seeking protection beyond the United States.
2. Comprehensive Search: Engage in a more comprehensive search by using professional trademark search services or hiring a trademark attorney. These services can provide in-depth searches across various databases, including federal, state, and common law databases, to uncover potential conflicts. They may also consider factors like phonetic similarities, foreign language equivalents, and variations in spelling or design.
3. Trademark Attorney’s Opinion: Consider seeking the guidance of a trademark attorney who can evaluate the search results and provide a professional opinion on the availability of the trademark. They can assess the potential risks of confusion or infringement and guide you on the best course of action.
4. Clearance Search: Once you have determined that the trademark is likely available, you may want to conduct a clearance search. This involves searching for unregistered or common law trademarks that may not be found in official databases. These searches can involve internet searches, business directories, industry-specific sources, and other relevant resources.

Remember, conducting a thorough trademark search is crucial to assess the availability and potential risks associated with a trademark. It helps minimize the chances of infringing on existing trademarks and facing legal disputes in the future. Professional assistance from a trademark attorney can be invaluable in navigating this process effectively.

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. Trademark law recognizes that the purpose of a trademark is to indicate the source of goods or services. While using a trademark in commerce is generally a requirement for registration, the actual sale of products or services is not always mandatory.

To obtain a registered trademark, you need to demonstrate your intent to use the mark in connection with specific goods or services. This means that you must have a genuine intention to use the mark in commerce in the near future. The intent-to-use application allows you to secure priority for your mark while you are still in the development or pre-launch stage.

Once your trademark application is approved, you will receive a Notice of Allowance, and you will have a certain period to submit a Statement of Use. This statement requires you to provide evidence that you have started using the mark in commerce for the specified goods or services. The evidence typically includes examples such as product labels, packaging, advertising materials, or a website demonstrating the use of the mark.

It’s important to note that maintaining a registered trademark requires ongoing use of the mark in commerce. If you fail to use the mark for an extended period, it may be subject to cancellation or deemed abandoned.

In summary, while you don’t need to sell a product or service at the time of filing the trademark application, you must have a genuine intent to use the mark in commerce. Once the mark is registered, consistent and proper use of the mark is necessary to maintain its validity and protection.

Am I allowed to trademark a generic term?

The USPTO will not allow you to trademark generic terms or words. For example, you can’t trademark the word bicycle as the name of your new brand of bicycles. Nor can you trademark the word computer as the brand name of your new line of computers. Remember, the best trademarks are unique and recognizable by consumers.

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

Yes, you can still obtain a federal trademark even if you only provide your services locally. The scope of a trademark’s protection is not limited to the geographical area where the goods or services are currently offered. Trademarks can be registered at the federal level in the United States through the United States Patent and Trademark Office (USPTO), regardless of the geographic extent of your business operations.

When applying for a federal trademark, you must specify the goods or services associated with your mark. It’s important to provide a clear and accurate description of the services you offer, even if they are only provided locally. The USPTO maintains a classification system known as the Nice Classification, which categorizes goods and services into different classes. You will need to identify the appropriate class or classes that correspond to your specific services.

Obtaining a federal trademark offers several advantages. Firstly, it grants you exclusive rights to use the mark throughout the entire United States, regardless of whether your services are provided locally or expand to other regions in the future. Secondly, federal registration provides legal presumptions of ownership and validity, making it easier to enforce your trademark rights and protect against infringement. Additionally, a federal trademark registration allows you to use the ® symbol, which signifies that your mark is officially registered.

While a federal trademark registration provides nationwide protection, it’s important to note that it does not automatically grant international protection. If you plan to expand your services beyond the United States, you should consider seeking trademark protection in other countries through their respective trademark registration systems or international treaties, such as the Madrid Protocol.

In summary, even if you provide services exclusively locally, you can still obtain a federal trademark registration in the United States. This provides valuable legal protection and exclusive rights to your mark, regardless of the geographic extent of your business operations.

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

When deciding whether to register the name of your business or your brand logo first, it is important to consider the distinctive elements of your brand and your long-term goals. Both the name and logo are essential components of your brand identity, but they serve different purposes and may have different levels of protectability.

Registering the name of your business, also known as a word mark, provides protection for the specific wording or combination of words used to identify your business. This can include your business name, tagline, or any other textual elements that are associated with your brand. Registering a word mark gives you exclusive rights to use that specific wording in connection with the goods or services specified in your trademark application.

On the other hand, registering your brand logo provides protection for the visual representation of your brand. This includes the design, stylization, and graphical elements that make up your logo. Registering a logo as a trademark grants you exclusive rights to use that specific design or graphical representation in connection with the goods or services specified in your application.

In some cases, the name of your business may be more distinctive and unique, making it a stronger candidate for trademark registration. It may be easier to establish and enforce rights in a word mark if it is coined, arbitrary, or fanciful. However, if your logo contains unique design elements or graphical features that contribute to the overall distinctiveness and recognition of your brand, registering the logo can provide additional protection and prevent others from using similar designs.

Ultimately, the decision on what to register first depends on your brand’s specific circumstances and priorities. If both the name and logo are equally important and distinctive, you may consider filing separate trademark applications for each. This way, you can secure protection for both the textual and visual aspects of your brand identity.

It is advisable to consult with a trademark attorney who can assess your specific situation, guide you through the registration process, and help determine the best approach for protecting your brand effectively.

What is a fanciful trademark?

A fanciful trademark is a type of trademark that is created specifically for the purpose of functioning as a source identifier for goods or services. Fanciful trademarks are considered the strongest and most distinctive category of trademarks because they are inherently unique and have no meaning or association with the goods or services they represent.

Unlike other types of trademarks, such as descriptive or generic marks, which may describe the characteristics or qualities of the product or service, fanciful trademarks are entirely invented or made-up words, symbols, or logos. They are typically created solely for the purpose of being used as a brand identifier.

The distinctiveness of fanciful trademarks lies in their lack of connection to any existing words or concepts. Because these marks are entirely arbitrary, they are highly protectable and capable of being exclusively associated with a particular brand or company. Fanciful trademarks can create a strong impression in the minds of consumers and are easily distinguishable from other marks in the marketplace.

Examples of fanciful trademarks include well-known brands like “Xerox” for photocopiers, “Kodak” for photography equipment, and “Google” for internet search services. These words have no pre-existing meaning and were intentionally created to be unique and memorable.

When applying for a fanciful trademark, it is generally easier to obtain registration and stronger legal protection because the mark is inherently distinctive. However, it is still important to conduct a thorough trademark search to ensure that the fanciful mark is not confusingly similar to any existing registered or common law marks.

In summary, fanciful trademarks are unique, invented marks that have no inherent meaning or connection to the goods or services they represent. They are highly distinctive and offer strong protection, making them valuable assets for brand owners.

What is the USPTO?

The United States Patent and Trademark Office (USPTO) is the federal office that reviews and makes decisions on trademark applications. The USPTO also keeps records of all existing and pending trademarks.

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 trademark applications electronically. TEAS provides a convenient and efficient way to complete various trademark-related tasks, from initial applications to post-registration maintenance.

The USPTO offers different versions of TEAS to accommodate different types of trademark filings. Here are the main versions of TEAS:

1. TEAS Plus: This version of TEAS is designed for applicants who meet specific requirements and are willing to comply with certain restrictions. It has lower filing fees compared to other versions but requires strict adherence to specific filing and formatting requirements. Additionally, TEAS Plus applications must be filed electronically, and the applicant must agree to use the USPTO’s standardized identification of goods and services.
2. TEAS RF: The TEAS Reduced Fee (TEAS RF) version allows applicants to file a trademark application with slightly lower fees compared to the regular TEAS versions. However, TEAS RF does not have the strict requirements associated with TEAS Plus.
3. TEAS Regular: TEAS Regular is the standard version of the electronic application system. It provides flexibility in terms of application content and allows for a wider range of filing options. The fees for TEAS Regular are slightly higher than TEAS RF.

Using TEAS offers several advantages. It allows applicants to submit trademark applications quickly, receive immediate filing date acknowledgments, and access various tools and resources provided by the USPTO. Additionally, the electronic format streamlines the filing process, reduces paperwork, and facilitates communication with the USPTO during the application process.

When using TEAS, applicants are guided through a series of online forms to provide information about their mark, goods or services, and other relevant details. It is essential to ensure accuracy and completeness when filling out the forms to avoid delays or potential issues with the application.

In summary, TEAS is the Trademark Electronic Application System provided by the USPTO. It offers a convenient and efficient way to file and manage trademark applications online. Applicants can choose between different versions of TEAS, depending on their eligibility and filing preferences. Using TEAS simplifies the application process and provides access to valuable resources and tools offered by the USPTO.

What is the USPTO’s Trademark Official Gazette?

Once an examining attorney approves your trademark application, it gets published in the Trademark Official Gazette (TOG) for a 30-day opposition period. During that time, anyone who can prove that the approval of your mark may harm their business can come forward. If no one submits an opposition after 30 days, then your mark moves to the final approval process.

How long does the trademark application process take?

The duration of the trademark application process can vary depending on various factors, including the specific trademark office, the complexity of the application, and any potential issues or objections that may arise. Generally, it is important to understand that the trademark application process can take several months to several years to complete.

In the United States, the timeline for the trademark application process can be summarized as follows:

1. Initial Filing: After submitting the trademark application through the Trademark Electronic Application System (TEAS), you will receive an acknowledgment from the United States Patent and Trademark Office (USPTO) confirming the filing date. This initial step typically takes a few business days.
2. Examination: The USPTO examines the application to ensure compliance with formal requirements and conducts a substantive examination to assess the registrability of the mark. This examination includes reviewing existing trademarks for potential conflicts. The examination period generally takes several months, although it can vary depending on the workload of the examining attorney.
3. Office Actions: If the examining attorney identifies any issues or objections during the examination, they issue an Office Action detailing the concerns. The applicant then has a specified period (usually six months) to respond to the Office Action, addressing the examiner’s concerns or providing arguments in support of registration.
4. Publication: If the examining attorney approves the application, it is published in the Official Gazette, allowing the public an opportunity to oppose the registration. The publication period typically lasts 30 days.
5. Opposition Period: During the opposition period, third parties can oppose the registration of the mark by filing a Notice of Opposition. If an opposition is filed, the case enters into a separate proceeding that can significantly extend the overall timeline of the application process.
6. Registration: If no opposition is filed or if an opposition proceeding is resolved in favor of the applicant, the mark proceeds to registration. The USPTO issues a Certificate of Registration, typically several months after the publication period ends.

It’s important to note that the timeline provided above is a general guideline, and actual processing times can vary. The complexity of the application, potential objections or oppositions, and the backlog of applications at the USPTO can all affect the overall duration.

To stay informed about the status of the application, applicants can regularly check the USPTO’s Trademark Status and Document Retrieval (TSDR) system, which provides updates on the application’s progress.

In summary, the trademark application process can take several months to several years. It involves multiple stages, including filing, examination, response to Office Actions, publication, opposition (if any), and registration. The duration of each stage can vary, and it is essential to stay engaged with the process and promptly respond to any requests or objections from the USPTO.

What are the fees associated with submitting trademark applications?

The USPTO has three different types of applications for you to choose from when submitting your trademark registration. Each different application has its own fee attached:

1. The TEAS Plus Filing option is $225 per class of products or services. TEAS Plus applicants may only choose from the list of pre-approved descriptions when designating their products or services.
2. The TEAS Reduced Fee option is $275 per class of products or services.
3. The TEAS Regular Filing option is $400 per class of products or services. The TEAS Regular filing option is clearly the most expensive option, but it gives you the greatest flexibility when filing.

Contact a trademark attorney for advice if you are not sure which application would be best for you to use with your products or services.

How long does a trademark last?

Once a trademark is registered and maintained properly, it can last indefinitely. Unlike some other forms of intellectual property, such as patents or copyrights, trademarks have the potential for ongoing protection as long as certain requirements are met.

In the United States, a trademark registration is initially valid for a period of ten years from the date of registration. However, to maintain the registration beyond the initial ten-year term, certain actions must be taken. Between the fifth and sixth year after registration, the trademark owner must file a Declaration of Use (or Excusable Nonuse) with the United States Patent and Trademark Office (USPTO). This declaration serves as proof that the mark is still in use in commerce.

Following the initial ten-year term, the trademark owner must renew the registration every ten years. To do this, the owner must file a combined Declaration of Use and Application for Renewal with the USPTO, demonstrating continued use of the mark in commerce. As long as the renewal requirements are met, the registration can be renewed indefinitely.

It’s important to note that while a trademark can potentially last indefinitely, it is contingent upon the mark being actively used in commerce for the goods or services specified in the registration. Failure to use the mark or to renew the registration as required by the USPTO can result in the mark being canceled or deemed abandoned.

It is the responsibility of the trademark owner to monitor and enforce their trademark rights, ensuring that others do not infringe upon or dilute their mark. Regular monitoring of the marketplace and taking appropriate action against potential infringers or unauthorized users is crucial to maintaining the strength and value of the trademark.

In summary, a trademark can last indefinitely if it is properly registered, actively used in commerce, and the necessary renewal requirements are met. By maintaining and protecting a trademark, its value and exclusivity can be preserved over time, providing ongoing benefits and recognition for the 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 you acquire limited rights to a mark simply by using it in commerce to identify your goods or services. These unregistered trademarks are often referred to as common law trademarks.

Using a trademark without registration provides some level of protection, primarily within the geographic areas where you have established a reputation or customer base. Common law trademark rights generally arise from the “first to use” the mark in a specific geographic area, rather than the “first to register” the mark.

However, relying solely on common law rights has certain limitations and disadvantages compared to having a registered trademark. Unregistered trademarks typically have narrower protection and may be more difficult to enforce compared to registered trademarks. Some key points to consider include:

1. Geographic Limitations: Common law rights are typically limited to the geographic regions where you have established usage and reputation. This means that your rights may not extend beyond your local area, making it challenging to expand your business and protect your mark in other regions.
2. Limited Remedies: Without federal registration, enforcement of common law trademarks can be more difficult and costly. Legal actions to protect your mark may require proving prior usage, establishing consumer recognition, and demonstrating a likelihood of confusion in court.
3. Weaker Deterrence: Registered trademarks provide a stronger deterrent effect against potential infringers due to the legal presumption of ownership and validity that comes with registration. Having a registered mark can discourage others from using similar marks, as it provides a clear indication of your exclusive rights.
4. Potential Conflicts: Reliance on common law rights increases the risk of unintentional infringement. Without conducting a comprehensive trademark search, you may inadvertently use a mark that conflicts with an existing registered or unregistered mark, leading to legal disputes and potential rebranding efforts.

While using an unregistered mark is an option, it is generally advisable to seek federal registration for your trademark. Federal registration provides numerous benefits, including nationwide protection, enhanced legal remedies, and a stronger position in potential disputes. It is recommended to consult with a trademark attorney to assess your specific situation and determine the best course of action for protecting your mark.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is highly recommended when navigating the trademark registration process or dealing with trademark-related legal matters. An experienced trademark lawyer can provide valuable expertise and guidance to ensure that your trademark rights are protected effectively. Here are some situations where hiring a trademark lawyer is particularly beneficial:

1. Trademark Search and Clearance: Conducting a comprehensive trademark search is essential to assess the availability of your desired mark and minimize the risk of potential conflicts. A trademark lawyer can conduct a thorough search, interpret the results, and provide a professional opinion on the availability and registrability of your mark.
2. Trademark Application Preparation: Filing a trademark application involves navigating complex legal requirements, including accurately describing the goods or services, selecting the appropriate filing basis, and crafting a strong trademark specimen. A trademark lawyer can guide you through the application process, ensuring that the necessary information is correctly provided and increasing the likelihood of successful registration.
3. Office Actions and Trademark Disputes: If you receive an Office Action from the trademark examiner or face a trademark opposition or cancellation proceeding, a trademark lawyer can assist in preparing a strong response or defense. They can analyze the issues raised, provide legal arguments, and present a compelling case to protect your trademark rights.
4. Trademark Portfolio Management: If you have multiple trademarks or plan to expand your brand globally, a trademark lawyer can help develop and manage your trademark portfolio. They can advise on registration strategies, monitor trademark infringement, and assist with renewals, assignments, licensing agreements, and other aspects of trademark maintenance and enforcement.
5. Trademark Enforcement and Litigation: If your trademark rights are infringed upon, a trademark lawyer can guide you through the enforcement process. They can help send cease-and-desist letters, negotiate settlements, or, if necessary, represent you in trademark litigation to protect your rights and seek appropriate remedies.
6. International Trademark Protection: If you plan to expand your business globally or seek trademark protection in multiple countries, a trademark lawyer experienced in international trademark law can provide invaluable guidance. They can navigate the complexities of international trademark registration systems, treaties, and local laws to secure and maintain trademark rights in different jurisdictions.

Trademark law can be intricate, and mistakes or oversights can have significant consequences. Hiring a trademark lawyer ensures that you have professional legal advice and representation throughout the trademark process, from initial clearance searches to ongoing maintenance and enforcement of your trademarks. They can help protect your brand, minimize legal risks, and maximize the value of your trademark assets.

What is a trademark’s specimen?

A trademark specimen, also known as a specimen of use, is a sample or example of how you are using your trademark in commerce. It serves as evidence to demonstrate that your mark is being used to identify and distinguish your goods or services in the marketplace. Submitting an acceptable specimen is a crucial requirement during the trademark application process.

The purpose of a specimen is to show actual use of the mark and to ensure that it is not merely an idea or intention. It provides proof that consumers encounter the mark in connection with the goods or services for which you seek trademark protection.

The type of specimen required depends on whether you are applying for a trademark for goods or services:

1. Goods: For goods, an acceptable specimen is typically a label, tag, packaging, or container that prominently displays the trademark in use in connection with the actual goods being sold or transported. It should show how the mark appears when affixed or associated with the product.
2. Services: For services, an acceptable specimen can be a website screenshot, advertising materials, brochures, or other examples that demonstrate the use of the mark in connection with the services provided. The specimen should show that the mark is used to identify and promote the services to consumers.

The specimen must be an accurate representation of how you are using the mark in commerce. It should clearly display the mark in a manner that allows consumers to associate it with the goods or services you offer. Additionally, the specimen should be recent, as outdated or obsolete specimens may be rejected.

It is important to note that the USPTO has specific requirements and guidelines for acceptable specimens. Therefore, it is advisable to consult with a trademark attorney or review the USPTO’s guidelines to ensure that your specimen meets the necessary criteria.

In summary, a trademark specimen is a sample or example that demonstrates how you are using your mark in commerce to identify and distinguish your goods or services. Submitting an acceptable specimen is a crucial requirement during the trademark application process, providing evidence of actual use to support your application.

Can I request an expedited approval of my trademark registration?

Yes, it is possible to request expedited processing of a trademark registration under certain circumstances. The United States Patent and Trademark Office (USPTO) offers an expedited review program known as the “Trademark Priority Action Program” or “TPAP.”

To qualify for expedited processing, your application must meet specific criteria established by the USPTO. These criteria include:

1. Basis for Expedited Review: You must provide a valid reason for the expedited processing request. Acceptable reasons typically include imminent litigation or potential enforcement actions that require the trademark registration to be expedited.
2. Fee Payment: In addition to the regular filing fees, there is an additional fee associated with requesting expedited processing. This fee is subject to change, so it’s important to consult the USPTO’s fee schedule or website for the most up-to-date information.
3. Complete Application: Your trademark application must be complete, accurate, and meet all the regular filing requirements. This includes providing a proper specimen of use, accurate descriptions of goods or services, and meeting all formalities.
4. Compliance with Formal Requirements: Your application must comply with all the formal requirements established by the USPTO, including proper formatting, adherence to trademark rules and regulations, and accurate identification of goods or services.

It is important to note that expedited processing does not guarantee immediate approval or registration of your trademark. It expedites the initial review of your application, but the examination process and any subsequent actions or objections by the USPTO or third parties will still follow the regular timelines.

It is advisable to consult with a trademark attorney to assess your specific situation and determine if requesting expedited processing is appropriate for your circumstances. They can guide you through the application process, help you understand the requirements, and assist with preparing and submitting the necessary documentation for expedited review.

In summary, expedited processing of a trademark registration is possible through the USPTO’s Trademark Priority Action Program (TPAP) under certain conditions. By meeting specific criteria and paying an additional fee, you can request expedited review of your application. However, it is important to note that expedited processing does not guarantee immediate approval or registration.

Can I trademark a phrase?

Yes, it is possible to trademark a phrase under certain conditions. In order to obtain trademark protection for a phrase, it must meet the requirements for trademark eligibility. Here are some key factors to consider:

1. Distinctiveness: To be eligible for trademark protection, a phrase should be distinctive, meaning it should be capable of identifying and distinguishing your goods or services from those of others. The more unique and distinctive the phrase, the stronger the potential for trademark protection.
2. Non-generic: A phrase that is generic or describes the product or service itself typically cannot be registered as a trademark. The USPTO does not grant trademarks for phrases that are commonly used to refer to a category of goods or services. However, if the phrase has acquired distinctiveness over time and is no longer considered generic, it may be eligible for protection.
3. Secondary Meaning: If a phrase is descriptive or common, it may be possible to obtain trademark protection if it has acquired secondary meaning. Secondary meaning occurs when the phrase becomes associated exclusively with a particular source of goods or services in the minds of consumers. Establishing secondary meaning typically requires evidence of extensive and exclusive use of the phrase over a significant period of time.
4. Specimen of Use: Like any other trademark, a phrase must be used in commerce to qualify for registration. You will need to submit a specimen that demonstrates the phrase in use in connection with the goods or services for which you seek protection.

When applying to trademark a phrase, it is important to conduct a thorough search to ensure that there are no similar or conflicting trademarks already registered or in use. This can help minimize the risk of opposition or refusal by the trademark office.

It is advisable to consult with a trademark attorney who can guide you through the application process, assess the distinctiveness of your phrase, and help determine the best course of action to protect your intellectual property rights.

In summary, phrases can be eligible for trademark protection if they meet the criteria of distinctiveness, non-generic nature, acquired secondary meaning, and actual use in commerce. Conducting a comprehensive search and seeking professional legal advice can help ensure that your phrase is eligible for trademark registration.

Can I trademark a logo?

Yes, you can trademark a logo. In fact, logos are one of the most common types of trademarks registered with the United States Patent and Trademark Office (USPTO) and trademark offices in other countries. A logo can function as a powerful tool for brand recognition and can be protected as a trademark if it meets the necessary requirements.

To successfully register a logo as a trademark, it should meet the following criteria:

1. Distinctiveness: A logo should be distinctive and capable of identifying and distinguishing the goods or services associated with your brand. The logo should not be generic or merely descriptive of the goods or services it represents. The more unique and distinctive the logo, the stronger the potential for trademark protection.
2. Non-confusing: Your logo should not cause confusion with existing trademarks. It is important to conduct a comprehensive search to ensure that your logo does not resemble or conflict with other registered or pending trademarks. Similarity to existing marks may result in the rejection of your application.
3. Use in Commerce: Like any other trademark, a logo must be used in commerce to qualify for registration. You will need to provide a specimen of use showing how the logo is used in connection with the goods or services you offer. The specimen could be a label, packaging, advertisement, or other materials that demonstrate the logo in use.
4. Design Format: When filing a trademark application for a logo, you will need to submit a representation of the logo’s design. This can be a digital image or drawing of the logo, depicting its specific visual elements, colors, and arrangement. It is important to ensure that the representation accurately reflects the logo you intend to protect.

Registering your logo as a trademark provides valuable legal protection and exclusive rights to use that logo in connection with the goods or services specified in your application. It helps prevent others from using similar or confusingly similar logos and reinforces the uniqueness and recognition of your brand.

To navigate the trademark registration process for a logo, it is recommended to consult with a trademark attorney who can guide you through the application process, conduct a comprehensive trademark search, and ensure that your logo meets the necessary requirements for successful registration.

In summary, logos can be registered as trademarks if they meet the requirements of distinctiveness, non-confusion, use in commerce, and proper design representation. Registering your logo provides legal protection and exclusive rights to use that logo in connection with your goods or services.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark for a color is generally more challenging compared to traditional trademarks such as words or logos. In order to successfully register a color as a trademark, it must meet stringent criteria and demonstrate that it has acquired distinctiveness or secondary meaning in the minds of consumers.

To establish trademark protection for a color, you must demonstrate that the color has become associated with your brand or product in a way that distinguishes it from others in the marketplace. Here are some key factors to consider:

1. Inherently Distinctive: Colors that are considered inherently distinctive, meaning they are not commonly associated with the goods or services being offered, have a higher chance of obtaining trademark protection. These colors are unique and unusual within the relevant industry.
2. Acquired Distinctiveness: If the color you wish to trademark is not inherently distinctive, you can still seek protection by showing that it has acquired distinctiveness or secondary meaning through long-term and exclusive use in connection with your brand. This requires demonstrating that consumers have come to recognize the color as an identifier of your goods or services.
3. Proper Identification: When applying for a color trademark, you must provide a precise description of the color, such as Pantone or other color identification codes, to clearly define the specific shade or range of colors you seek to protect.
4. Evidence of Use: To support your color trademark application, you will need to provide evidence that shows how you have used the color in commerce to identify and distinguish your goods or services. This can include product packaging, labels, marketing materials, or other examples that demonstrate the consistent use of the color as a brand identifier.

It’s important to note that obtaining trademark protection for a color is a complex and rigorous process. The USPTO and other trademark offices have strict requirements for color trademarks, and they are generally subject to greater scrutiny and potential challenges from other parties.

To increase the chances of success, it is highly recommended to consult with a trademark attorney experienced in color trademarks. They can guide you through the application process, assess the distinctiveness and acquired distinctiveness of the color, help gather the necessary evidence, and provide expert advice on navigating the complexities of color trademarks.

In summary, while it is possible to trademark a color, it requires meeting stringent criteria, including inherent distinctiveness or acquired distinctiveness through long-term and exclusive use. Consultation with a trademark attorney is advisable to navigate the complexities of color trademarks and increase the chances of successful registration.

I already submitted my trademark application. Can a trademark attorney still help me?

Even if you’ve already submitted a trademark application to the USPTO, a trademark attorney can help you with many other parts of the trademark registration process. For example, a trademark attorney will:

• Respond to Office Actions on your behalf.
• Help you register other trademarks you may have.
• Watch for possible infringement of your mark once it’s approved.
• Submit trademark maintenance documents on your behalf.

Can I transfer my trademark to someone else?

Yes, it is possible to transfer ownership of a trademark to another party. The transfer of trademark ownership is typically accomplished through a legal process called assignment. Assigning a trademark involves transferring the rights, title, and interest in the mark from one party (the assignor) to another (the assignee). Here are some key points to consider:

1. Voluntary Transfer: The assignment of a trademark must be a voluntary agreement between the assignor and assignee. It can occur through a variety of means, such as a trademark assignment agreement, a merger or acquisition, or a transfer of assets between businesses.
2. Trademark Assignment Agreement: In most cases, the transfer of a trademark requires a written agreement between the assignor and assignee, known as a trademark assignment agreement. This agreement outlines the specific details of the transfer, including the mark being assigned, the rights and obligations of the parties, and any conditions or limitations associated with the assignment.
3. USPTO Notification: If the trademark being assigned is registered with the United States Patent and Trademark Office (USPTO), it is important to notify the USPTO of the assignment. This can be done by filing an assignment recordation with the USPTO, which updates the ownership information in the trademark register.
4. Due Diligence: Prior to entering into a trademark assignment agreement, both parties should conduct due diligence to ensure that the mark is free from any encumbrances, disputes, or conflicting rights. It is important to verify the validity of the mark, its current registration status, and any existing licenses or agreements associated with it.
5. Rights and Obligations: The assignee of a trademark assumes all rights and responsibilities associated with the mark, including the right to use and enforce the mark, as well as the obligation to maintain and protect its validity. The assignor relinquishes all rights and interests in the mark upon completion of the assignment.

It is advisable to consult with a trademark attorney to ensure that the assignment process is conducted properly and in compliance with applicable laws and regulations. They can assist in drafting and reviewing the assignment agreement, conducting due diligence, and ensuring that all necessary legal requirements are met.

In summary, trademarks can be transferred from one party to another through a process called assignment. This involves a voluntary agreement between the assignor and assignee and requires a written trademark assignment agreement. It is important to notify the USPTO of the assignment and conduct due diligence before completing the transfer. Consulting with a trademark attorney is recommended to navigate the assignment process and protect the interests of both parties involved.

Can I license my trademark to others?

Yes, you can license your trademark to others. Licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark in connection with specific goods or services, under certain conditions and for a defined period. Licensing can be a beneficial arrangement for both parties involved. Here are some key points to consider:

1. Licensing Agreement: The licensing arrangement is typically established through a legally binding contract called a trademark license agreement. This agreement outlines the terms and conditions of the license, including the scope of the license, the territory in which the mark can be used, quality control measures, duration of the license, and any royalty or fee arrangements.
2. Quality Control: As the trademark owner, it is important to maintain quality control over the goods or services associated with your mark. The license agreement should include provisions that ensure the licensee maintains the quality standards you have established for your brand. This helps protect the integrity and reputation of your trademark.
3. Monitoring and Enforcement: It is crucial to monitor the use of your licensed trademark to ensure that the licensee is complying with the terms of the agreement. Regular audits and communication with the licensee can help maintain consistency and prevent unauthorized use or misuse of your mark. If necessary, enforcement provisions should be included in the license agreement to address any breaches or infringement.
4. Royalties and Fees: In many licensing agreements, the licensor receives compensation in the form of royalties or licensing fees. Royalties are typically a percentage of the licensee’s sales or a fixed amount per unit sold. The specific financial terms should be clearly defined in the license agreement.
5. Termination and Renewal: The license agreement should outline provisions for termination and renewal of the license. It should specify the circumstances under which either party can terminate the agreement, as well as any notice periods or conditions for renewal.

Licensing your trademark can be a strategic way to generate additional revenue, expand your brand’s reach, or enter new markets. However, it is important to exercise due diligence when selecting licensees and to ensure that the terms of the license agreement protect your trademark rights and maintain the quality associated with your brand.

Consulting with a trademark attorney is highly recommended when entering into a licensing agreement. They can assist in drafting or reviewing the license agreement, negotiating terms, and ensuring that your rights as the trademark owner are adequately protected.

In summary, trademark licensing allows you to grant permission to others to use your trademark under specific conditions and for a defined period. Licensing agreements should include quality control provisions, monitoring and enforcement measures, financial terms, and termination or renewal provisions. Seeking legal advice is important to ensure that your trademark rights are protected and that the licensing arrangement is mutually beneficial.

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 territorial, meaning they are generally limited to the country or region in which the mark is registered or used. Therefore, if you wish to protect your trademark in other countries, you will need to pursue registration in each individual country or consider international treaties and agreements that offer streamlined processes for seeking trademark protection in multiple jurisdictions.

If you intend to expand your business and establish a presence in foreign markets, it is important to consider trademark protection in those countries. Failing to do so could leave your mark vulnerable to unauthorized use or infringement by others.

To protect your trademark internationally, you have a few options:

1. National Applications: File trademark applications directly with the trademark offices in the countries where you seek protection. This requires compliance with the specific filing requirements and procedures of each country. It can be a time-consuming and costly process, especially if you are seeking protection in multiple jurisdictions.
2. Regional Applications: Some regions, such as the European Union, offer regional trademark systems that allow for streamlined registration across multiple member countries. For example, the European Union Intellectual Property Office (EUIPO) offers the European Union Trademark (EUTM) system, which provides protection in all EU member states.
3. International Applications: Consider utilizing international treaties or agreements that provide a centralized filing system for multiple countries. The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows for the filing of an international trademark application, which can designate multiple countries that are members of the system.

It is crucial to engage the services of a trademark attorney or an intellectual property professional with expertise in international trademark law. They can guide you through the process, assess your international trademark strategy, conduct trademark searches in relevant countries, and assist with the filing and prosecution of your applications.

In summary, a trademark registered in the United States is generally not automatically protected in other countries. To obtain trademark protection in foreign jurisdictions, you will need to pursue registration in each individual country or consider regional or international filing systems. Consulting with a trademark attorney with international experience is recommended to navigate the complexities of international trademark protection and ensure the proper safeguarding of your mark.

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

While there is no specific “International Trademark” that grants worldwide protection in a single registration, there are international systems and treaties that facilitate the process of seeking trademark protection across multiple countries. These systems provide a centralized mechanism for filing trademark applications and managing trademark rights in multiple jurisdictions.

The most notable international trademark system is the Madrid System, administered by the World Intellectual Property Organization (WIPO). The Madrid System allows trademark owners to file a single international application, known as an International Registration, which can cover multiple countries that are members of the system. This simplifies the process and reduces the administrative burden of filing separate national applications in each country.

Under the Madrid System, the International Registration is based on a “home” or “basic” application or registration filed in the applicant’s home country, known as the “Office of Origin.” The International Registration can then be extended to any of the member countries by designating them in the application. The designated countries examine the application based on their own national laws and regulations.

It is important to note that the Madrid System does not create a unified “International Trademark” with a single registration. Instead, it provides a cost-effective and streamlined way to seek trademark protection in multiple countries. Each designated country evaluates the application individually and has the authority to grant or refuse protection.

Furthermore, it’s worth mentioning that not all countries are members of the Madrid System. It is essential to check the list of member countries and determine the specific requirements and procedures for each jurisdiction where you seek protection.

While the Madrid System offers significant advantages for international trademark registration, it is still important to consider the unique legal requirements and practices of each individual country. Consulting with a trademark attorney or a qualified intellectual property professional is highly recommended to navigate the complexities of international trademark protection and to ensure compliance with the specific rules and regulations of each jurisdiction.

In summary, while there is no “International Trademark” that provides automatic worldwide protection, the Madrid System offers an international framework for filing trademark applications across multiple countries. This system simplifies the process and allows trademark owners to manage their trademark rights more efficiently on an international scale. Consulting with a trademark attorney is advisable to understand the intricacies of international trademark registration and to ensure the best protection for your mark in different jurisdictions.

What is a trademark office action?

A trademark office action is an official communication issued by the trademark office, such as the United States Patent and Trademark Office (USPTO), in response to a trademark application. It indicates that the examining attorney has reviewed the application and identified issues, concerns, or requirements that need to be addressed before the mark can proceed towards registration. Office actions serve as a means for the trademark office to communicate with the applicant and clarify or resolve any potential obstacles to registration.

There are two main types of trademark office actions:

1. Non-Final Office Action: A non-final office action is an initial response from the examining attorney after reviewing the trademark application. It may request additional information, clarification, or amendments to the application. Non-final office actions typically provide the applicant with an opportunity to address any deficiencies or objections raised by the examiner.
2. Final Office Action: A final office action is issued when the examining attorney concludes the examination of the application and maintains objections or refusals. It sets forth the final determination and requires a persuasive response from the applicant. A final office action can be appealed or responded to by filing a timely response with appropriate arguments and evidence.

Some common reasons for receiving an office action include:

– Likelihood of Confusion: The examining attorney may find that the proposed mark is similar to an existing registered or pending mark, raising concerns about consumer confusion.

– Descriptiveness: If the mark is considered descriptive or generic, the examining attorney may require the applicant to provide evidence of acquired distinctiveness or secondary meaning.

– Specimen of Use: If the specimen submitted with the application is deemed unacceptable or insufficient to show proper use of the mark in commerce, the examining attorney may request a proper specimen.

– Inadequate Description: The examining attorney may find issues with the description of the goods or services associated with the mark, requesting clarification or more specificity.

It is important to carefully review and understand the office action and its specific requirements or objections. Failure to respond to an office action within the designated time frame can result in abandonment of the application. It is advisable to consult with a trademark attorney who can analyze the office action, provide guidance on the best course of action, and assist in preparing a persuasive response.

In summary, a trademark office action is an official communication issued by the trademark office in response to a trademark application. It highlights issues, objections, or requirements that need to be addressed before the mark can proceed towards registration. Understanding and responding to office actions in a timely and effective manner is crucial to advancing the trademark application process.

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

Receiving an office action on your trademark application can be a normal part of the registration process. It is important to carefully review the office action and take appropriate steps to respond within the designated timeframe. Here are some recommended actions to consider:

1. Read and Understand the Office Action: Thoroughly review the office action to understand the specific objections, requirements, or issues raised by the examining attorney. Pay close attention to the examiner’s explanations and instructions. If needed, seek clarification from the trademark office or consult with a trademark attorney to fully grasp the content and implications of the office action.
2. Determine a Response Strategy: Evaluate the objections raised in the office action and develop a response strategy. This may involve addressing any legal or factual errors, providing additional evidence or arguments, making amendments to the application, or seeking a resolution through negotiations or compromises. A trademark attorney can provide valuable guidance in formulating an effective response.
3. Gather Supporting Evidence: If the office action requests additional information or evidence, gather the necessary documentation to support your position. This may include evidence of acquired distinctiveness, consumer recognition, or market surveys to demonstrate the strength and distinctiveness of your mark. Ensure that all evidence is relevant, credible, and properly organized.
4. Consult with a Trademark Attorney: Engage the services of a trademark attorney experienced in trademark prosecution to assist you with the response process. They can assess the office action, advise you on the best course of action, help draft a persuasive response, and communicate with the trademark office on your behalf. Their expertise can significantly increase the chances of a successful outcome.
5. Prepare and Submit a Response: Based on the response strategy, draft a well-organized and comprehensive response to the office action. Ensure that all required information, arguments, and evidence are clearly presented. Follow the specific instructions provided in the office action regarding format, timing, and filing procedures. It is crucial to submit the response within the designated timeframe to avoid abandonment of the application.
6. Monitor the Application Status: After submitting your response, monitor the status of your trademark application to track any further updates or actions by the trademark office. Be prepared for the possibility of receiving subsequent office actions or examiner’s amendments that may require additional responses or actions.

Remember, office actions are a normal part of the trademark registration process, and they provide an opportunity to address and resolve issues identified by the examining attorney. By promptly and effectively responding to the office action, you can increase the likelihood of securing registration for your trademark. Consulting with a trademark attorney throughout the process can help navigate any challenges and optimize your chances of success.

Will the USPTO let me know if a competitor is infringing on my trademark?

No, the USPTO won’t alert you if a competitor is infringing on your trademark. The USPTO does not keep track of trademark infringement.

It is the responsibility of the trademark owner to monitor the competition to ensure no one is infringing on the mark. Many legal firms, like Cohn Legal Group, can be hired to watch for trademark infringement on your behalf.

How do I enforce my trademark rights?

Enforcing your trademark rights is crucial to protecting your brand and maintaining its distinctiveness in the marketplace. Here are some steps to consider when enforcing your trademark rights:

1. Monitor for Infringement: Regularly monitor the marketplace for potential trademark infringement. Keep an eye on competitors, online platforms, advertisements, and relevant industry publications to identify unauthorized use of your mark or similar marks that may cause confusion among consumers.
2. Document Infringements: Document instances of infringement by collecting evidence such as screenshots, photographs, advertisements, packaging, or any other materials that clearly show the unauthorized use of your mark. Maintain a detailed record of these instances, including dates, locations, and relevant details.
3. Assess the Infringement: Determine the nature and extent of the infringement. Assess the potential impact on your business, the likelihood of consumer confusion, and the geographical scope of the infringement. This evaluation will help determine the appropriate course of action.
4. Cease and Desist Letter: In many cases, the first step in enforcing your trademark rights is to send a cease and desist letter to the infringing party. The letter should clearly state your rights, the basis of the infringement, and the actions required to cease the unauthorized use of your mark. It may also request compensation for damages, if applicable. Consult with a trademark attorney to ensure the letter is professionally drafted and legally sound.
5. Negotiation and Settlement: Following the cease and desist letter, there may be opportunities for negotiation and reaching a settlement with the infringing party. This could involve discussions on discontinuing the infringing activities, modifying their mark, or entering into a licensing agreement. The terms of any settlement should be carefully reviewed and agreed upon with the assistance of a trademark attorney.
6. Trademark Opposition or Litigation: If negotiations or settlements are unsuccessful, you may need to escalate the enforcement efforts through legal avenues. This may involve filing a trademark opposition or initiating trademark infringement litigation. Consult with a trademark attorney to evaluate the strength of your case and determine the best course of action.
7. Ongoing Monitoring and Enforcement: Enforcing your trademark rights is an ongoing process. Regularly monitor the marketplace for new potential infringements and take appropriate actions to address them promptly. Maintain a proactive approach to protect the integrity and exclusivity of your trademark.

It is important to work with a trademark attorney throughout the enforcement process. They can provide expert advice, assist with gathering evidence, navigate legal procedures, and represent your interests effectively. Their experience and knowledge in trademark law will help ensure that your enforcement efforts are strategic, efficient, and legally robust.

In summary, enforcing your trademark rights involves monitoring for infringement, documenting instances of infringement, assessing the situation, sending cease and desist letters, negotiating settlements, and, if necessary, pursuing legal avenues. Working with a trademark attorney is essential to guide you through the enforcement process and protect your brand’s integrity.

Why Trademark Registration Matters for Jackson Businesses

Jackson, Mississippi is known as the “City With Soul” because of the triumphant spirit of those who overcame hardships to help make the city the art and music mecca that it is today. That perseverance lives on today in the small business owners and entrepreneurs who call Jackson home.

These business owners know what it takes to start a successful venture. There’s product development, marketing, business plans, hiring staff, and so much more. It can be tempting to put off trademark registration since there’s so much to do. However, registering your mark as soon as possible is one of the most important things you can do to protect your brand and your business.

Imagine the following: After years of learning how to make whisky and spirits in distilleries around the world, Wally decides to return to his hometown of Jackson, Mississippi to start his own distillery. He wants to create high-quality craft gin along with other alcohols.

Wally decides to call his new distillery The Jackson Gin Room and he gets busy turning his dream into a reality. He finds an excellent location in the Fondren neighborhood of Jackson and signs the lease. Then he creates a marketing plan, orders new equipment, interviews potential staff, sets up a website, and more. Wally knows that trademark registration is important, but he thinks he can’t focus on that right now. He has so much more work to do.

Finally, it’s time for his grand opening. Residents and tourists alike are flocking to the Jackson Gin Room for Wally’s outstanding craft gin. Several liquor stores in Mississippi and Tennessee are even stocking his gin on their store shelves. It’s a dream come true for Wally.

Unfortunately, his dreams are about to go up in smoke. There’s another craft distillery in Jacksonville, Florida called the Jacksonville Gin Room. They found Wally’s business online and didn’t like the fact that the name of his distillery was so close to theirs. Since the Florida distillery trademarked the name of their business more than 5 years ago, they were well within their rights to have their lawyer send a cease-and-desist letter to Wally. The letter demands that Wally shut down his operations and not re-open until he rebrands. The letter even threatens legal action if Wally doesn’t comply.

Wally is completely blindsided by this news. He’s concerned because he knows that rebranding will be a laborious and costly process. He also doesn’t have the resources for a legal battle.

If Wally had gone to a trademark attorney before he started investing money into his business, he could have avoided all of this. The trademark attorney would have conducted a clearance search, found the Jacksonville distillery, and advised Wally to change the name of his business.

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

Trademarks Services for Jackson 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