Trademark Attorney Services
for Omaha NE
Companies.

Omaha, Nebraska Businesses Use Cohn Legal for Trademark Services

Serving Omaha, Nebraska companies, Cohn Legal, PLLC is a boutique law firm that focuses on trademarks and intellectual property protection for startups and entrepreneurs. Our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates. The trademark attorneys at Cohn Legal relish the opportunity to help their clients build something from the ground up.

Top Questions Omaha Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Omaha, Nebraska, 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 Omaha, Nebraska, 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 form of intellectual property that provides legal protection to a word, phrase, symbol, design, or a combination thereof, which is used to distinguish and identify the source of goods or services. In essence, it is a unique identifier that helps consumers differentiate between products or services offered by different businesses. By registering a trademark, a business gains exclusive rights to use that mark in connection with their goods or services, and they can take legal action against others who infringe upon those rights.

A trademark serves as a valuable asset for a business as it represents the goodwill and reputation associated with their products or services. It allows businesses to build brand recognition and consumer loyalty. Trademarks can be words (e.g., brand names like Coca-Cola), logos (e.g., the Nike swoosh), slogans (e.g., “Just Do It”), or even non-traditional marks like colors, sounds, or scents.

The primary function of a trademark is to prevent consumer confusion and protect consumers from purchasing inferior goods or services under the false belief that they are associated with a reputable brand. Trademarks also benefit businesses by creating a distinct market identity, establishing a competitive edge, and facilitating brand expansion.

To acquire trademark rights, the mark must be distinctive, meaning it must be capable of identifying the source of goods or services and distinguishing them from others in the marketplace. Trademarks that are generic or merely descriptive of the goods or services they represent are generally not eligible for protection. Therefore, it is crucial to select a strong and unique mark that is not already in use by others in a similar industry.

Trademark rights can be obtained through registration with the appropriate governmental authority, such as the United States Patent and Trademark Office (USPTO) in the United States. Registration provides additional benefits and legal presumptions of ownership and validity. However, common law rights may also be established by simply using a mark in commerce, even without registration, though these rights are generally limited to the specific geographic areas where the mark is being used.

In summary, a trademark is a distinctive symbol, word, or phrase used to identify and distinguish the source of goods or services. It is an important tool for brand recognition, consumer protection, and building business reputation.

Is there a difference between a trademark and service mark?

Yes, there is a distinction between a trademark and a service mark. While both are forms of intellectual property used to protect distinctive branding elements, they are used in different contexts. A trademark is used to identify and distinguish goods, such as physical products, while a service mark is used to identify and distinguish services provided by a business. Essentially, a trademark is associated with tangible goods, while a service mark is associated with intangible services.

The main purpose of both trademarks and service marks is to prevent consumer confusion and ensure that consumers can identify the source of the goods or services they are purchasing or using. For example, a trademark may be used by a company that produces and sells clothing, while a service mark may be used by a company that offers consulting services. The distinction between trademarks and service marks helps to categorize and differentiate the types of businesses and industries they apply to.

It’s worth noting that in some countries, including the United States, the term “trademark” is often used as a broad term to refer to both trademarks and service marks. In these jurisdictions, the same laws and regulations generally apply to both types of marks. However, it is still important to understand the distinction between trademarks and service marks to accurately describe and protect the intellectual property associated with goods versus services.

In summary, while trademarks and service marks serve a similar purpose of protecting distinctive branding elements, trademarks are used to identify and distinguish goods, whereas service marks are used to identify and distinguish services. Understanding this distinction is crucial when selecting the appropriate type of mark to protect and enforce your intellectual property rights.

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

The ® symbol, often referred to as the “circle R,” indicates that a trademark is registered with the appropriate trademark office. It signifies that the mark has been officially recognized and granted legal protection. The use of the ® symbol is restricted to registered trademarks only. It serves as a notice to the public that the mark is protected and that unauthorized use may result in legal consequences. In countries like the United States, using the ® symbol without a valid registration is prohibited and may lead to penalties.

On the other hand, the TM symbol is used to indicate that a person or business claims rights to a trademark, regardless of whether it is registered or not. It serves as a notice to the public that the mark is being used as a source identifier. Unlike the ® symbol, the TM symbol does not provide the same level of legal protection as a registered trademark. However, it can still deter others from using a similar mark and can serve as evidence of the trademark owner’s intent to claim rights to the mark.

The TM symbol is commonly used before a trademark is registered or in situations where registration is not feasible or necessary. It is a way for businesses to assert their rights to a mark and put others on notice of their claim. Once a trademark is registered, the owner may choose to replace the TM symbol with the ® symbol to indicate the registered status.

It’s important to note that the use of the ® or TM symbols alone does not grant or establish trademark rights. These symbols are simply tools to provide notice and indicate the status of a mark. The legal protection and rights associated with a trademark come from registration and proper use in commerce.

In summary, the ® symbol is used to indicate a registered trademark, while the TM symbol is used to indicate a claim of rights to a trademark, whether registered or not. Proper use of these symbols helps inform the public about the status of a mark and can aid in protecting and enforcing trademark rights.

How will registering my trademark protect my business?

Registering your trademark is an essential step in protecting your business and your brand. Once you have a registered trademark, your trademark is protected from infringement in all 50 states. That means, if there’s a competitor or a third party using your trademark or something similar without your permission, you can take legal action.

How can I determine if a trademark is available?

Determining the availability of a trademark involves conducting a comprehensive trademark search. This search aims to identify existing trademarks that may conflict with the mark you intend to use or register. It’s crucial to conduct a thorough search to minimize the risk of infringing on someone else’s trademark rights and potential legal disputes in the future.

Trademark searches typically involve examining various sources, including trademark databases, business directories, industry-specific sources, and even internet searches. The goal is to identify any identical or similar marks that are already in use or registered for similar goods or services. It’s essential to review both registered trademarks and unregistered common law trademarks, as common law rights can still be enforceable in some cases.

While it’s possible to conduct a basic preliminary search on your own using online databases and search engines, it is highly recommended to seek the assistance of a professional trademark attorney or trademark search service. These experts have access to specialized databases and tools, enabling them to conduct more comprehensive searches and provide legal analysis and guidance based on the results.

A professional trademark search typically involves assessing the similarity of the marks, the relatedness of the goods or services, and the overall likelihood of confusion between the marks. This analysis helps determine the risk of potential trademark conflicts and whether it’s advisable to proceed with registering or using the mark.

Remember that a trademark search is not a guarantee of availability or clearance. It provides valuable information to make an informed decision, but there is always a chance of overlooking certain trademarks or potential disputes. Consulting with a trademark attorney can provide additional insights and guidance based on their expertise and knowledge of trademark law.

In summary, determining the availability of a trademark involves conducting a comprehensive trademark search to identify existing marks that may conflict with the mark you intend to use or register. Professional assistance from a trademark attorney or search service is recommended to ensure a thorough search and accurate analysis of the results. Taking these steps helps minimize the risk of trademark conflicts and legal issues in the future.

Can I file a trademark application if I haven’t opened my business yet?

You can file a trademark application even if you’re not yet doing business. In fact, it’s the smart thing to do. You want to make sure you have rights to your mark before you start investing money in marketing materials, store signage, advertising, product labels, etc.

Your first step is to contact a trademark attorney who can help you submit an Intent-To-Use (ITU) trademark application to the USPTO. If the ITU application gets accepted, you’ll receive a Notice of Allowance (NOA), which gives you 6 months to submit your Statement of Use. A Statement of Use is proof that you are using your trademark in commerce.

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

No, it is not necessary to sell a product or service to obtain a registered trademark. In many jurisdictions, including the United States, you can file a trademark application based on your bona fide intent to use the mark in the future. This means that if you have a genuine intention to use the mark in connection with specific goods or services, you can apply for a trademark even before actually selling or providing those goods or services.

Filing a trademark application based on an intent to use provides several advantages. It allows you to secure priority rights to the mark while you are still in the process of developing your business or preparing to launch a new product or service. It provides a level of protection by reserving the mark for your future use, preventing others from registering a confusingly similar mark in the meantime.

However, it’s important to note that in order to complete the registration process and obtain a registered trademark, you will eventually need to demonstrate actual use of the mark in commerce. This typically requires submitting evidence of the mark’s use in connection with the specified goods or services. The specific requirements and deadlines for submitting this evidence vary depending on the jurisdiction in which you are seeking registration.

In summary, while you do not need to sell a product or service at the time of filing a trademark application, you will eventually need to demonstrate actual use of the mark in commerce to obtain a registered trademark. Filing a trademark application based on an intent to use allows you to secure priority rights to the mark and prevent others from registering a similar mark during the application process.

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

Yes, it is possible to obtain a federal trademark even if you provide services only locally. In the United States, for example, you can apply for a federal trademark through the United States Patent and Trademark Office (USPTO) regardless of whether your services are limited to a specific geographic area.

The USPTO allows for the registration of trademarks based on the use of the mark in commerce. While the mark must be used in connection with the specified goods or services, there is no requirement that the goods or services be offered nationwide or globally. As long as you can demonstrate the use of the mark in commerce and establish a valid basis for the application, you can seek federal registration.

It’s important to note that obtaining a federal trademark provides several benefits. It grants you exclusive rights to use the mark in connection with the specified goods or services throughout the entire country. This can be advantageous if you plan to expand your services beyond the local area in the future or if you want to prevent others from using a similar mark in different geographic regions.

However, if your services remain strictly local and you have no intention of expanding beyond that region, you may also consider registering a state trademark. State trademark registrations provide protection limited to the specific state in which the mark is registered. While the scope of protection is narrower compared to federal registration, it can still offer valuable rights within your local market.

Consulting with a trademark attorney can help you determine the most appropriate type of trademark registration for your specific circumstances. They can guide you through the application process, assess the potential for conflicts with existing marks, and advise you on the best strategies to protect your trademark rights.

In summary, even if you provide services only locally, you can still obtain a federal trademark registration. The use of the mark in commerce is the key requirement, and federal registration offers broader protection nationwide. However, if your services remain strictly local, you may also consider registering a state trademark for more localized protection. Consulting with a trademark attorney can help you navigate the registration process and make informed decisions about protecting your trademark rights.

How do I register a federal trademark?

If you want a registered trademark, you need to first submit a trademark application to the United States Patent and Trademark Office, or USPTO. An examining attorney at the USPTO will review your application to ensure all is in good order and conduct a search to identify any existing or pending trademarks that may similar to your desired mark. If your application is rejected or the examining attorney needs additional information from you, then you will receive a notification called an Office Action.

If your application gets approved for publication, then your trademark is printed in the USPTO’s Official Gazette for 30 days. During that time, any third party can submit an “opposition” to the application if they feel that your trademark infringes upon theirs. Assuming no oppositions come forward, your trademark will be approved for final registration.

This entire process can take 8 to 10 months, on average. However, it can take longer depending on how many issues raised by the USPTO need to be resolved.

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 is generally recommended to prioritize the registration of your business name or the name under which you offer your goods or services.

Registering the name of your business as a trademark provides broader protection as it covers the use of that name in connection with various goods or services that your business may offer. It establishes exclusive rights to use the business name and helps prevent others from using a similar name that could cause confusion among consumers.

On the other hand, a brand logo is typically considered a specific design element or visual representation of your business. While registering your logo as a trademark is important for protecting its distinctiveness and preventing others from using a similar design, it provides narrower protection compared to the registration of your business name.

It’s worth noting that if your brand logo includes stylized or unique elements that are integral to your branding and significantly contribute to the overall distinctiveness of your business, it may be beneficial to register both your business name and your brand logo as separate trademarks. This ensures comprehensive protection for both elements of your brand identity.

Additionally, it’s important to consider the likelihood of changes to your business name or logo in the future. If you anticipate potential rebranding or updates to your visual identity, it may be wise to prioritize the registration of your business name initially. This way, you can maintain trademark protection even if your logo undergoes modifications.

Ultimately, the decision of what to register first depends on the specific circumstances of your business and branding strategy. Consulting with a trademark attorney can provide valuable guidance on the best approach for your particular situation. They can assess the distinctiveness and protectability of your business name and logo, evaluate potential conflicts with existing trademarks, and help you navigate the trademark registration process effectively.

In summary, it is generally recommended to prioritize the registration of your business name as a trademark before registering your brand logo. Registering your business name provides broader protection and exclusive rights to use that name in connection with various goods or services. However, if your brand logo has unique and distinct design elements integral to your branding, it may be beneficial to register both your business name and your brand logo as separate trademarks. Consulting with a trademark attorney can help you make informed decisions about protecting your brand identity.

What is a fanciful trademark?

A fanciful trademark is a type of trademark that consists of a coined or made-up word, phrase, or symbol that has no inherent meaning or connection to the goods or services it represents. Fanciful trademarks are considered to be the strongest and most distinctive types of trademarks because they are entirely unique and have no existing associations in the minds of consumers.

Unlike descriptive or generic marks that directly describe the qualities or characteristics of the goods or services, fanciful trademarks are created solely for the purpose of identifying a particular brand or source. Examples of fanciful trademarks include made-up words like “Kodak” for cameras, “Xerox” for copiers, or “Google” for internet search engines. These marks have no dictionary meaning and were specifically chosen and developed to serve as strong brand identifiers.

The distinctiveness of fanciful trademarks makes them easier to protect and enforce. They are immediately recognizable and less likely to be confused with other marks in the marketplace. Additionally, because they are unique and unrelated to the goods or services they represent, fanciful trademarks often enjoy a broader scope of protection, allowing the trademark owner to prevent others from using similar marks in unrelated industries.

However, it’s important to note that while fanciful trademarks are inherently distinctive, they can still face challenges during the trademark registration process. The USPTO and other trademark offices require evidence of use and distinctiveness to support the registration of fanciful marks. This may include providing information on the marketing and promotion efforts that have been undertaken to create recognition and association with the mark.

In summary, a fanciful trademark is a coined or made-up word, phrase, or symbol that has no inherent meaning or connection to the goods or services it represents. These marks are highly distinctive and unique, making them strong identifiers of a particular brand. Fanciful trademarks enjoy a higher level of protection and are less likely to be confused with other marks. However, evidence of distinctiveness and use is still required during the trademark registration process.

What is TEAS?

TEAS stands for the Trademark Electronic Application System, which is an online platform provided by the United States Patent and Trademark Office (USPTO) for filing and managing trademark applications. TEAS allows applicants to submit their trademark applications, respond to office actions, maintain their registrations, and perform various other tasks related to the trademark registration process.

There are different versions of TEAS available, each designed to accommodate different types of trademark applications and filing requirements. The main versions of TEAS include TEAS Plus, TEAS Reduced Fee (RF), and TEAS Regular.

TEAS Plus is the most cost-effective option and offers a reduced filing fee. However, it comes with stricter requirements, such as providing a detailed description of goods or services using pre-approved terms from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual). Additionally, TEAS Plus applicants must agree to use electronic communication throughout the application process.

TEAS Reduced Fee (RF) is similar to TEAS Plus but allows for more flexibility in the identification of goods or services. Applicants using TEAS RF still benefit from a reduced filing fee compared to TEAS Regular.

TEAS Regular is the standard option and provides greater flexibility in the application process. It allows for a broader description of goods or services and does not require the use of pre-approved terms. However, the filing fee is higher compared to TEAS Plus and TEAS RF.

When using TEAS, applicants are guided through the application process, providing information about the mark, the goods or services associated with it, and the basis for filing (such as actual use in commerce or intent to use). The system allows for the electronic submission of documents and payment of fees.

TEAS also provides a portal for tracking the progress of the application, receiving office actions from the USPTO, and responding to any issues or requirements raised during the examination process.

In summary, TEAS is the online system provided by the USPTO for filing and managing trademark applications. It offers different versions, such as TEAS Plus, TEAS Reduced Fee (RF), and TEAS Regular, each with varying requirements and fees. TEAS streamlines the application process, allows for electronic document submission and payment, and provides a platform for tracking the progress of the application and responding to office actions.

How long does the trademark application process take?

The length of the trademark application process can vary depending on several factors, including the jurisdiction in which you are filing, the complexity of the application, and the workload of the trademark office. Generally, the trademark application process can take anywhere from several months to several years to complete.

In the United States, the average time for a trademark application to proceed to registration is around 8 to 12 months. However, this timeframe can vary based on factors such as the number of applications being processed by the USPTO at a given time and whether any issues or objections arise during the examination process.

The application process typically consists of several stages. After the initial filing, the application undergoes examination by a trademark examiner at the trademark office. The examiner reviews the application for compliance with legal requirements and conducts a search for conflicting marks. If any issues or objections are raised during this stage, the applicant has an opportunity to respond and address the concerns.

If the examiner determines that the application meets all requirements and no objections or conflicts exist, the mark will be approved for publication in the official trademark gazette. This publication allows third parties to oppose the registration of the mark if they believe it may infringe upon their existing rights. The opposition period usually lasts for 30 days, but it can be extended if an opposition is filed.

If no oppositions are filed or any oppositions are successfully resolved, the trademark office will issue a registration certificate, and the mark will be officially registered.

It’s important to note that the timeframe mentioned above is an estimate and can be influenced by various factors. Delays can occur if additional documentation or information is required, if objections are raised and need to be resolved, or if there are backlogs or administrative delays within the trademark office.

To navigate the application process efficiently, it is advisable to consult with a trademark attorney. They can guide you through the process, help ensure the application meets all legal requirements, and respond to any issues or objections that may arise.

In summary, the trademark application process can take several months to several years to complete, depending on various factors. It involves stages such as filing, examination, publication, potential opposition, and registration. Working with a trademark attorney can help streamline the process and increase the chances of a successful registration.

How long does a trademark last?

A trademark can last indefinitely as long as it continues to be used in commerce and the necessary renewal requirements are fulfilled. Unlike patents or copyrights, which have limited terms of protection, trademarks can potentially provide ongoing rights and exclusivity for as long as they are actively used and maintained.

In many countries, including the United States, the initial term of trademark registration is typically ten years. However, trademark owners can renew their registrations indefinitely, usually in increments of ten years, as long as they continue to use the mark and comply with the renewal requirements set by the trademark office.

To maintain the validity of a registered trademark, owners must file renewal applications within the designated time frames specified by the respective trademark office. These renewal applications typically require a fee and confirmation that the mark is still in use in connection with the registered goods or services.

It’s important to note that trademark rights can be lost if the mark is not actively used or if the renewal requirements are not met. Non-use of a trademark for a certain period of time, often referred to as abandonment, can result in the cancellation or expiration of the registration. Therefore, it is crucial to actively use and protect your trademark to maintain its rights and prevent it from becoming vulnerable to challenges.

It’s also worth mentioning that some countries, such as the United States, recognize common law rights to a trademark, which can be established through continuous and extensive use of the mark in commerce, even without registration. These common law rights can exist as long as the mark is used in connection with the goods or services and remains distinctive and recognizable in the marketplace.

In summary, a trademark can potentially last indefinitely as long as it is actively used in commerce and the necessary renewal requirements are fulfilled. Trademark registrations typically have an initial term of ten years, with the possibility of indefinite renewals. However, non-use or failure to meet renewal requirements can lead to the loss of trademark rights. It’s important to actively use and protect your trademark to maintain its validity and exclusivity.

Can I use a trademark without registering it?

Yes, you can use a trademark without registering it. Trademark rights can be established through actual use of the mark in commerce, even without formal registration. This is often referred to as common law trademark rights.

Common law trademark rights arise from the use of a mark to identify and distinguish goods or services in the marketplace. By using a mark consistently and prominently in connection with your business, you can develop what is known as “common law” or unregistered trademark rights. These rights can provide some level of protection within the geographic area where the mark is used and where you have established a reputation and goodwill.

However, it’s important to note that common law trademark rights are generally limited in scope compared to registered trademarks. Without registration, your rights may be confined to the specific geographic area where you have established the mark’s recognition and reputation. This means that someone in a different geographic area may be able to use a similar mark without infringing on your common law rights.

Furthermore, relying solely on common law rights can make it more challenging to enforce your trademark against potential infringers. Registration provides several advantages, such as a legal presumption of ownership and validity, nationwide or international protection (depending on the jurisdiction), and the ability to bring legal action in federal courts. Registration also acts as public notice of your claim to the mark, making it easier for others to discover and avoid potential conflicts.

Registering a trademark with the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States, enhances your rights and provides stronger protection for your mark. It is generally advisable to seek registration for your valuable trademarks to maximize their legal protection and enforceability.

In summary, while you can use a trademark without registering it, relying solely on common law rights has limitations. Common law rights provide some level of protection within the specific geographic area where the mark is used and recognized. However, registration offers broader protection, legal presumptions, and stronger enforcement capabilities. Registering your trademark with the appropriate trademark office is generally recommended to enhance your rights and obtain the full benefits of trademark protection.

Am I required to hire a U.S.-licensed attorney to represent me at the USPTO?

U.S. citizens are not required to hire an attorney. Of course, hiring an experienced trademark lawyer is beneficial as USPTO proceedings can be complex and have strict deadlines. By hiring a US Attorney, you also meaningfully reduce the chances of being hit with an Office Action.

Foreign-domiciled trademark applicants or registrants must be represented at the USPTO by a trademark attorney –  this is non-negotiable and if the foreign applicant is not represented by a US Attorney, his/her application will be rejected.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is highly recommended when navigating the trademark process, especially if you want to ensure the best possible outcome for your trademark application and the protection of your brand. A trademark lawyer specializes in trademark law and can provide valuable expertise and guidance throughout the entire process.

Here are some situations when it is advisable to hire a trademark lawyer:

1. Trademark search and clearance: Conducting a comprehensive trademark search to assess the availability of your desired mark and evaluate potential conflicts can be complex. A trademark lawyer has access to specialized databases and search tools, allowing for a more thorough search and analysis. They can help identify potential issues and guide you in making informed decisions regarding the registrability and potential risks associated with your mark.
2. Trademark application preparation and filing: A trademark lawyer can assist in preparing and filing your trademark application to ensure it meets all legal requirements. They will help you accurately describe your goods or services, determine the appropriate trademark classification, and provide guidance on selecting the strongest and most protectable mark. This helps increase the chances of a successful application and minimizes the risk of objections or rejections.
3. Responding to office actions: If the trademark examiner issues an office action, which is a formal response requiring clarification or addressing objections, a trademark lawyer can help prepare a strong response. They understand the nuances of trademark law and can craft persuasive arguments and legal strategies to overcome objections and maximize the chances of successful registration.
4. Trademark portfolio management: If you have multiple trademarks or plan to expand your brand, a trademark lawyer can assist in managing your trademark portfolio. They can provide advice on maintaining registrations, monitoring for potential infringements, filing renewal applications, and ensuring compliance with ongoing maintenance requirements.
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 assess the strength of your case, pursue appropriate legal actions, negotiate settlements, or represent you in trademark litigation if necessary.

Trademark law is complex, and the guidance of a skilled professional can greatly benefit your trademark journey. A trademark lawyer’s knowledge and experience can help you make informed decisions, protect your brand effectively, and navigate any legal complexities that may arise.

In summary, hiring a trademark lawyer is recommended when conducting a trademark search, preparing and filing applications, responding to office actions, managing a trademark portfolio, or dealing with enforcement and litigation matters. Their expertise can help increase the likelihood of a successful trademark registration, protect your brand, and navigate any legal challenges that may arise along the way.

What is a trademark’s specimen?

A trademark specimen is a sample or evidence that demonstrates how the mark is used in commerce to identify and distinguish the goods or services associated with the mark. It serves as proof of the mark’s actual use in connection with the claimed goods or services and is typically required during the trademark application process.

The purpose of submitting a trademark specimen is to show the trademark office that the mark is being used in a way that meets the legal requirements for registration. It helps establish that the mark is not merely an idea or intention, but a tangible representation of how it appears in the marketplace.

The acceptable types of specimens can vary depending on whether the mark is used in connection with goods or services. For goods, acceptable specimens often include labels, tags, packaging, or photographs showing the mark displayed on the actual product or its packaging. For services, acceptable specimens may include website screenshots, advertisements, brochures, or photographs showing the mark used in promoting and offering the services.

The trademark specimen must accurately depict how the mark is used in the ordinary course of trade and should clearly display the mark in a manner that allows consumers to associate it with the goods or services being offered. It should be submitted as part of the trademark application and must meet the specific requirements set by the trademark office where the application is filed.

It’s important to note that the specimen requirement applies to both initial applications and certain post-registration maintenance filings. Failure to submit an acceptable specimen or providing an inadequate specimen can result in the denial of the application or cancellation of the registration.

Consulting with a trademark attorney can be helpful in ensuring that you submit appropriate and acceptable specimens that meet the requirements of the trademark office. They can guide you on the specific specimen requirements and assist in selecting the most suitable evidence to support your trademark application.

In summary, a trademark specimen is a sample or evidence that demonstrates the actual use of the mark in commerce to identify and distinguish goods or services. Submitting an acceptable specimen is important to establish the mark’s use and meet the legal requirements for trademark registration. Consulting with a trademark attorney can help ensure that you provide appropriate specimens that meet the specific requirements of the trademark office.

Can I request an expedited approval of my trademark registration?

Yes, it is possible to request an expedited approval of your trademark registration under certain circumstances. In the United States, the United States Patent and Trademark Office (USPTO) offers a program called the “TEAS Plus Pilot Program” that allows applicants to expedite the examination of their trademark applications.

To qualify for expedited processing under the TEAS Plus Pilot Program, you must meet specific requirements. These include:

1. Filing electronically: The application must be filed using the Trademark Electronic Application System (TEAS) online filing system.
2. Meeting TEAS Plus filing requirements: The application must meet the TEAS Plus filing requirements, which include using pre-approved identifications of goods or services from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual). This option requires careful selection and accurate description of your goods or services.
3. Paying the additional fee: There is an additional fee associated with requesting expedited processing. This fee is in addition to the regular filing fee.

By meeting these requirements, your trademark application can receive expedited processing, potentially leading to a quicker examination and approval of your trademark registration.

It’s important to note that while expedited processing can speed up the examination process, it does not guarantee immediate approval or bypass the substantive examination conducted by the trademark examiner. The application will still undergo a thorough review to ensure compliance with all legal requirements.

It’s also worth mentioning that expedited processing is not available in all jurisdictions or for all types of trademark applications. Each trademark office may have its own procedures and requirements for expediting applications. Consulting with a trademark attorney can help you understand the options and requirements specific to your jurisdiction and application.

In summary, it is possible to request expedited processing of your trademark registration under certain circumstances, such as through the TEAS Plus Pilot Program in the United States. By meeting specific filing requirements and paying an additional fee, you can potentially expedite the examination and approval process. However, expedited processing does not guarantee immediate approval and does not bypass the substantive examination conducted by the trademark examiner. Consulting with a trademark attorney can provide valuable guidance on the options and requirements for expediting your trademark application.

Can I trademark a phrase?

Yes, it is possible to trademark a phrase under certain conditions. In trademark law, phrases can be protected as trademarks if they meet the requirements for trademark registration. To be eligible for trademark protection, a phrase must be distinctive and capable of identifying the source of goods or services.

When considering trademarking a phrase, there are different categories to consider:

1. Descriptive Phrases: Phrases that merely describe the goods or services being offered are generally not considered inherently distinctive and may be difficult to register as trademarks. However, if a descriptive phrase has acquired secondary meaning through extensive use and has become associated with a specific source of goods or services, it may be eligible for trademark protection.
2. Slogans and Taglines: Slogans or taglines that are creative, catchy, and distinctive can often be registered as trademarks. These phrases are typically short and serve as a memorable identifier for a particular brand or company. Examples of famous trademarked slogans include “Just Do It” for Nike or “I’m Lovin’ It” for McDonald’s.
3. Unique and Coined Phrases: Phrases that are unique, coined, or invented have a higher likelihood of being considered inherently distinctive and are generally easier to register as trademarks. These phrases are created specifically for branding purposes and have no prior associations. Examples of coined phrases include “Verizon,” “Kodak,” or “Xerox.”

It’s important to conduct a thorough trademark search to ensure that the phrase you intend to trademark is not already in use by others in a similar or related field. A trademark attorney can assist you in conducting a comprehensive search and assessing the registrability and potential risks associated with your chosen phrase.

Additionally, keep in mind that the trademark application process may require you to provide evidence of actual use of the phrase in commerce or a bona fide intent to use the phrase if it has not been used yet. The specific requirements vary depending on the jurisdiction in which you are seeking registration.

In summary, it is possible to trademark a phrase if it is distinctive and capable of identifying the source of goods or services. Descriptive phrases may be more challenging to register, but slogans, taglines, and unique coined phrases often have a higher likelihood of being considered inherently distinctive. Conducting a trademark search and consulting with a trademark attorney can help determine the registrability and potential risks associated with your chosen phrase.

Can I trademark a logo?

Yes, you can trademark a logo. In fact, logos are commonly registered as trademarks to protect the visual representation of a brand. A logo can be a powerful tool for identifying and distinguishing your goods or services from those of others, and obtaining a trademark registration for your logo helps establish and protect your rights in that design.

To successfully trademark a logo, it must meet the requirements for trademark registration. The logo should be distinctive and capable of identifying the source of goods or services. A logo that is unique, creative, and memorable has a higher likelihood of being considered inherently distinctive and easier to register as a trademark.

When applying for a trademark registration for a logo, it is important to provide a clear and accurate representation of the design. This can be done by submitting a digital image or drawing of the logo as part of the trademark application. The image should accurately depict the visual elements of the logo and how it appears when used in connection with the goods or services.

During the trademark application process, the trademark office will examine the logo to ensure it does not conflict with any existing registered trademarks or create a likelihood of confusion with other marks in the marketplace. It’s important to conduct a comprehensive trademark search to identify any potentially conflicting marks before applying for registration.

Additionally, it’s worth noting that if your logo includes any elements that are descriptive or generic, it may be more challenging to obtain trademark protection. However, if the logo has acquired distinctiveness through extensive use and has become associated with your brand, it may still be eligible for protection.

Working with a trademark attorney can greatly assist in the trademark registration process for your logo. They can help you conduct a thorough trademark search, prepare and file the application, and respond to any issues or objections raised by the trademark office during examination.

In summary, you can trademark a logo to protect its visual representation and establish your rights in that design. A distinctive and unique logo is more likely to be considered eligible for trademark protection. Conducting a trademark search and working with a trademark attorney can help ensure a smoother registration process for your logo.

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 challenging because colors are generally considered to be inherently functional or decorative elements.

To successfully trademark a color, you must demonstrate that the color has acquired distinctiveness or secondary meaning in connection with the goods or services you offer. This means that consumers have come to associate the specific color with your brand or identify the source of the goods or services based on that color alone.

In order to establish acquired distinctiveness, you may need to provide evidence such as consumer surveys, sales figures, advertising and marketing materials, and any other relevant information that demonstrates the public’s recognition and association of the color with your brand.

It’s important to note that trademark protection for a color is typically limited to a specific context or industry where the color has become distinctive and recognized as a source identifier. This means that while you may be able to obtain trademark protection for a specific color in connection with your goods or services, it does not grant exclusive rights to use that color in all contexts or industries.

Several well-known companies have obtained trademark registrations for specific colors. For example, the color brown is trademarked by UPS for its delivery services, and the color pink is trademarked by T-Mobile for its telecommunications services. These companies were able to establish that the respective colors had acquired distinctiveness and were associated with their brands.

If you are considering trademarking a color, it is crucial to consult with a trademark attorney who can guide you through the process and help you gather the necessary evidence to support your claim of acquired distinctiveness. They can assess the viability of your color trademark and provide advice on the best strategies to protect your brand identity.

In summary, it is possible to trademark a color, but it can be challenging. Acquired distinctiveness or secondary meaning must be demonstrated, showing that consumers recognize the color as a source identifier for your goods or services. Working with a trademark attorney can help navigate the complexities of color trademark registration and provide guidance on the requirements and evidence needed to support your application.

Can I transfer my trademark to someone else?

Yes, it is possible to transfer ownership of a trademark to another party. Trademark ownership can be transferred through a process called trademark assignment. A trademark assignment is a legal transfer of the rights and ownership of a trademark from one entity to another.

The transfer of a trademark can occur through an assignment agreement, which is a contract that outlines the terms and conditions of the transfer. The agreement typically includes details such as the names and addresses of the assignor (current owner) and assignee (new owner), a description of the trademark being transferred, and the terms of the transfer, including any financial considerations.

To ensure the transfer of ownership is legally recognized, it is advisable to record the trademark assignment with the appropriate trademark office. While recording the assignment is not always mandatory, it provides public notice of the transfer and establishes a clear chain of title for the trademark.

Recording the assignment with the trademark office typically involves submitting a formal request and providing the necessary documentation, such as the assignment agreement. The specific requirements and procedures for recording assignments may vary depending on the jurisdiction where the trademark is registered.

It’s important to note that the assignment of a trademark may have implications on the rights associated with the mark, such as the geographic scope of protection, the goods or services covered, and any existing licenses or agreements related to the mark. It is crucial to carefully review and consider these factors when entering into a trademark assignment agreement.

Consulting with a trademark attorney is highly recommended when transferring ownership of a trademark. They can help draft or review the assignment agreement, guide you through the recording process, and ensure that all necessary steps are taken to protect the rights of both the assignor and the assignee.

In summary, it is possible to transfer ownership of a trademark through a trademark assignment. The transfer occurs through a legally binding agreement between the current owner (assignor) and the new owner (assignee). Recording the assignment with the trademark office helps establish the transfer of ownership and provides public notice of the change. Working with a trademark attorney is advised to ensure a smooth and legally valid transfer of trademark ownership.

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 in connection with specific goods or services, under specified terms and conditions.

A trademark licensing agreement is a legal contract that outlines the rights and obligations of both the licensor and the licensee. It typically includes provisions such as the scope of the license, quality control measures, duration of the license, geographic restrictions, royalty or payment terms, and any other terms and conditions agreed upon by both parties.

By licensing your trademark, you can generate additional revenue streams, expand your brand’s reach, and benefit from the licensee’s expertise or distribution channels in certain markets. The licensee, in turn, can leverage the goodwill and reputation associated with your trademark to promote their products or services.

It’s important to note that as the licensor, you maintain control and ownership of the trademark. You have the right to set quality standards and ensure that the licensee maintains the integrity and reputation of the mark. Quality control provisions are typically included in the licensing agreement to safeguard the value of the trademark and ensure consistent standards of use.

It is advisable to consult with a trademark attorney when entering into a trademark licensing agreement. They can help draft or review the agreement, ensure that it complies with relevant laws and regulations, and protect your rights as the trademark owner. They can also help you navigate any potential challenges or disputes that may arise during the licensing relationship.

In summary, licensing your trademark allows you to grant others permission to use your trademark in connection with specific goods or services. Through a trademark licensing agreement, both parties can benefit from the arrangement. As the licensor, you maintain ownership and control over the trademark while generating additional revenue and expanding your brand’s reach. Consulting with a trademark attorney can help ensure a well-drafted licensing agreement that protects your interests as the trademark owner.

My competitor didn’t trademark their logo. Can I register it for myself?

Speak to a trademark attorney about the advantages and disadvantages of trying to register a competitor’s mark. Keep in mind that even though a competitor’s mark may not have been federally registered, it may be protected under “common law” rules, which gives businesses certain rights to a mark if they’ve been using it commercially despite not registering it with the USPTO.

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, meaning that they are limited to the country or jurisdiction where the mark is registered. Therefore, if you wish to protect your trademark in other countries, you must seek registration in each specific jurisdiction where you desire protection.

Trademark protection is governed by the laws of each country or region, and the requirements and procedures for registration may vary. In order to secure protection for your trademark in other countries, you will need to file separate trademark applications with the relevant intellectual property offices or trademark authorities in those jurisdictions.

There are different ways to seek international trademark protection. One common approach is to file individual applications in each country where you want to secure protection. This can be a complex and time-consuming process, as you will need to navigate the specific requirements and procedures of each jurisdiction.

Alternatively, you can utilize international trademark systems such as the Madrid System or the European Union Trademark (EUTM) system. The Madrid System allows for the filing of a single international application through the World Intellectual Property Organization (WIPO), which can designate multiple countries for protection. The EUTM system provides a unified registration system for all member countries of the European Union, allowing for trademark protection across the entire EU with a single application.

It is important to note that the process and requirements for international trademark registration can vary significantly between jurisdictions. Working with a trademark attorney or an intellectual property professional experienced in international trademark matters is highly recommended. They can guide you through the intricacies of international trademark protection, help determine the most appropriate filing strategy, and assist with the registration process in each jurisdiction.

In summary, a trademark registration in the United States does not provide automatic protection in other countries. To secure trademark rights in other jurisdictions, you must file separate trademark applications in each country or utilize international trademark systems such as the Madrid System or the EUTM system. Consulting with a trademark attorney or an intellectual property professional is crucial for navigating the complexities of international trademark protection and ensuring the best approach for your specific needs.

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

While there is no universal “International Trademark” that provides worldwide protection, there are mechanisms in place to facilitate the process of seeking trademark protection in multiple countries. These mechanisms aim to simplify and streamline the registration process, making it more efficient for trademark owners seeking protection in multiple jurisdictions.

The two primary systems for international trademark registration are the Madrid System and the European Union Trademark (EUTM) system.

1. Madrid System: The Madrid System is administered by the World Intellectual Property Organization (WIPO). It allows trademark owners to file a single international application, called an International Registration, through their national or regional trademark office. This International Registration can designate multiple countries that are members of the Madrid Agreement and/or the Madrid Protocol. The application is then examined by each designated country’s trademark office according to their own national laws and regulations. The Madrid System simplifies the process by providing a centralized filing system and the ability to manage and renew trademark registrations across multiple jurisdictions through a single application.
2. European Union Trademark (EUTM) System: The EUTM system provides a unified registration system for trademark protection across the member countries of the European Union (EU). By filing a single application with the European Union Intellectual Property Office (EUIPO), trademark owners can secure protection for their mark in all EU member states. The EUTM system offers a cost-effective and efficient way to obtain trademark rights across the EU and allows for the management and renewal of those rights through a single registration.

It’s important to note that while these systems facilitate the international registration process, the actual protection and enforcement of trademarks still occur at the national level within each designated country or region. Each country has its own laws, regulations, and procedures for trademark registration and enforcement.

Additionally, there are international agreements and treaties, such as the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), that provide certain rights and benefits to trademark owners in multiple countries.

However, it’s important to consider that trademark laws and procedures can vary significantly from one jurisdiction to another. Working with a trademark attorney or an intellectual property professional experienced in international trademark matters is highly recommended. They can guide you through the complexities of international trademark registration, help determine the most appropriate filing strategy, and assist with the registration process in each jurisdiction.

In summary, while there is no universal “International Trademark,” there are systems in place, such as the Madrid System and the EUTM system, that facilitate the process of seeking trademark protection in multiple countries. These systems provide a centralized and streamlined approach to international trademark registration. However, trademark protection and enforcement still occur at the national level, and the laws and procedures can vary from one jurisdiction to another. Consulting with a trademark attorney or an intellectual property professional is crucial for navigating the complexities of international trademark registration and ensuring the best approach for your specific needs.

What is a trademark office action?

A trademark office action is an official correspondence or communication sent by the trademark office to the applicant in response to a trademark application. It typically outlines any issues, objections, or requirements that need to be addressed before the application can proceed to registration.

When a trademark application is examined by a trademark examiner, they review the application to ensure it meets all legal requirements for registration. If the examiner identifies any issues or has concerns regarding the application, they will issue an office action detailing their findings and requesting a response from the applicant.

There are various types of office actions that can be issued, depending on the specific issues identified by the examiner. Some common types of office actions include:

1. Formalities Office Action: This type of office action typically addresses minor procedural or administrative deficiencies in the application, such as missing information, incomplete forms, or incorrect filing fees. The applicant is usually given a specified period of time to correct the deficiencies and provide the requested information.
2. Substantive Office Action: This type of office action addresses substantive issues with the application, such as potential conflicts with existing trademarks, descriptive or generic nature of the mark, or inadequate specimen of use. The examiner may raise objections or request additional information or evidence to support the registrability of the mark. The applicant is usually given an opportunity to respond and provide arguments or evidence to overcome the objections.
3. Priority or Priority Document Office Action: If a claim for priority based on a foreign application is made, the trademark office may issue an office action requesting additional documentation or evidence to support the priority claim.

Receiving an office action does not necessarily mean that the application will be denied or rejected. It is a normal part of the trademark examination process, and the applicant has an opportunity to address the issues raised and provide a response to the examiner’s concerns.

How to respond to an office action will depend on the specific issues raised. It is important to carefully review the office action, seek guidance from a trademark attorney if needed, and prepare a comprehensive and well-supported response. The response should address each issue raised by the examiner and provide arguments, evidence, or amendments to overcome any objections.

It’s worth noting that the response to an office action is time-sensitive, and failure to respond within the specified deadline can result in the abandonment or refusal of the application. Therefore, it is crucial to act promptly and diligently when responding to an office action.

In summary, a trademark office action is an official communication issued by the trademark office in response to a trademark application. It identifies any issues, objections, or requirements that need to be addressed before the application can proceed to registration. It is important to carefully review the office action, seek guidance if needed, and prepare a well-supported response within the specified timeframe to overcome any objections raised by the examiner. Working with a trademark attorney can be beneficial in understanding the issues raised and crafting a strong response to the office action.

How do I enforce my trademark rights?

Enforcing your trademark rights is an essential step in protecting your brand and preventing unauthorized use or infringement by others. If you believe someone is infringing upon your trademark or using a similar mark that could create confusion in the marketplace, there are several actions you can take to enforce your rights:

1. Cease and Desist Letter: A cease and desist letter is often the first step in enforcing your trademark rights. This letter, sent by your attorney or yourself, notifies the alleged infringer of your trademark rights and demands that they immediately stop using the infringing mark. The letter may also request additional actions, such as the destruction of infringing goods or a response confirming their compliance.
2. Negotiation and Settlement: In some cases, it may be possible to resolve the dispute through negotiation and reaching a settlement agreement with the alleged infringer. This can involve discussions regarding the modification of the infringing mark, payment of damages or royalties, or other terms that protect your trademark rights.
3. Trademark Opposition or Cancellation: If the alleged infringement is in connection with a pending trademark application or a registered mark, you may consider filing a trademark opposition or cancellation proceeding with the appropriate trademark office. This legal process allows you to challenge the registration of a conflicting mark or request the cancellation of an existing registration.
4. Domain Name Disputes: If the alleged infringer is using a similar mark as a domain name, you can pursue a domain name dispute resolution process, such as a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding or a similar mechanism provided by the relevant domain name registrar or authority.
5. Legal Action: If the alleged infringement persists and other means of resolution are unsuccessful, you may need to initiate a legal action, such as a trademark infringement lawsuit, to protect your rights. It is crucial to consult with a trademark attorney experienced in intellectual property litigation to assess the strength of your case and guide you through the legal process.

It’s important to gather evidence to support your claim of infringement, such as examples of the infringing use, sales records, consumer confusion, or evidence of harm to your brand’s reputation. Working with a trademark attorney is highly recommended, as they can provide legal advice, assist in the enforcement strategy, and represent your interests in negotiations or legal proceedings.

In summary, enforcing your trademark rights involves taking appropriate actions to prevent unauthorized use or infringement. This can include sending cease and desist letters, negotiation and settlement, filing opposition or cancellation proceedings, pursuing domain name disputes, or initiating legal action. It is crucial to gather evidence, consult with a trademark attorney, and take prompt action to protect your brand and preserve your trademark rights.

How can a trademark attorney help me enforce my trademark rights?

Trademark attorneys can help you enforce your trademark rights in a number of ways. First of all, a trademark attorney can help make sure that you have all necessary trademarks in place. Then, a trademark attorney can provide counsel and represent you in court if you discover other parties are infringing on your trademark. An attorney can also help ensure that you are never at risk of losing your mark by competing all renewal documents accurately and on time.

Why Trademark Registration Matters for Omaha Businesses

Omaha is a classic American city with a rich history that dates back to colonial times. Each year tourists from around the country flock to the area to take in picturesque views of the Missouri River and visit the city’s museums, historical sites, and The Henry Doorly Zoo and Aquarium.

With so much tourist activity and a steady year-round population, there’s never been a better time to open a new business in Omaha. Every new business owner in the state capitol knows that they need to lease commercial space, develop marketing materials, purchase equipment, and do about a thousand other tasks to get their new venture up and running. However, they often fail to register their trademarks, which could turn out to be a costly mistake.

Imagine the following: Jasmine has always loved her hometown of Omaha. She knows its history and all of the best places to visit. She decides to turn her love of the city into a business.

Jasmine opens up a new business called Omaha Bike Rentals and Tours. She rents a storefront, purchases about 25 bikes, develop a website, and prints marketing materials. Her plan is to rent bikes to tourists on an hourly basis. She’ll also conduct guided bike tours of the city on the weekends.

Jasmine’s parents are excited about her new venture and ask if she’s trademarked her business name. Jasmine has heard of trademarks but doesn’t think it’s necessary for her to take that step just yet.

Jasmine finally opens her doors and has a successful start. After just 6 weeks, she’s giving 8 tours every weekend and is seriously considering hiring some help. Then, she receives a letter in the mail. It turns out that there’s a bike shop on the other side of town with a very similar name. Their regular customers were getting confused. They thought that Jasmine’s shop might have been a second location.

The other bike shop had trademarked the name of their shop more than 5 years ago, so they had the right to ask Jasmine to stop doing business and not reopen until she’s rebranded. Jasmine is devastated. The rebranding will take a considerable amount of time and money. She’s not sure she’ll be able to recover from this setback.

Don’t wait to register your trademark. Whether you’re just starting to write your business plan or you’ve been selling your products and services for a while, the time to register your trademark is now.

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

Trademarks Services for Omaha 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