Trademark Attorney Services
for Orlando FL
Companies.

Orlando, Florida Businesses Use Cohn Legal for Trademark Services

Cohn Legal is a startup and trademark legal firm and providing service to clients in Orlando, Florida, throughout the United States, Europe, and Israel. Cohn Legal attorneys operate with the singular goal of acting as your legal consigliere, continuously striving to provide you with the best legal advice and strategies to protect your trademarks and intellectual property.

Top Questions Orlando Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Orlando, Florida, 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 Orlando, Florida, 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 distinctive sign or symbol that sets apart the goods or services of one business from those of others. It can be a word, phrase, logo, design, or even a combination of these elements. The main purpose of a trademark is to help consumers easily identify and distinguish the source of a particular product or service. When consumers see a trademark, they associate it with a specific brand, quality, or reputation.

Trademarks play a crucial role in the business world by protecting the commercial identity and goodwill of companies. They allow businesses to establish a unique brand identity and build customer loyalty. By using trademarks, companies can differentiate themselves in the marketplace, create a recognizable image, and establish a level of trust and quality associated with their products or services.

Registering a trademark provides the owner with exclusive rights to use the mark in connection with specific goods or services. In the United States, the registration process is overseen by the United States Patent and Trademark Office (USPTO). Once registered, the trademark owner can prevent others from using a similar or confusingly similar mark in the same industry or related fields. This protection extends to the use of the mark on similar goods or services that may cause consumer confusion.

Trademarks can be valuable assets for businesses, as they can be licensed, sold, or used as collateral for loans. They can also play a significant role in marketing and advertising efforts, as they help consumers easily identify and remember a brand.

It’s important to note that trademarks are jurisdiction-specific, meaning that protection is granted on a country-by-country basis. To obtain international protection, one can pursue registration in individual countries or consider filing for protection under international treaties such as the Madrid Protocol or the Paris Convention.

Is there a difference between a trademark and a service mark?

Yes, there is a distinction between a trademark and a service mark, although the underlying concept is similar.

A trademark is used to identify and distinguish the source of goods. It applies to physical products that are sold or traded in the marketplace. For example, a trademark can be a logo on a product label, a word mark on packaging, or a combination of both. The purpose of a trademark is to indicate the origin and quality of the goods to consumers.

On the other hand, a service mark is specifically used to identify and distinguish the source of services rather than goods. It is utilized to represent and promote services offered by a particular business. Service marks can take various forms, such as a word mark in advertising, a logo on a website, or a slogan associated with a service. The purpose of a service mark is to indicate the source and quality of the services being provided.

In essence, the key difference lies in the nature of what is being identified. Trademarks relate to physical products, while service marks pertain to services being offered. However, it’s worth noting that the legal protections and registration processes for both trademarks and service marks are generally similar. The choice between using a trademark or a service mark depends on the type of business and the nature of the offerings.

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

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

The ® symbol, commonly referred to as the “registered trademark symbol,” is used to indicate that a trademark is registered with the appropriate government authority, such as the United States Patent and Trademark Office (USPTO) in the United States. It signifies that the mark has been officially registered and provides the owner with certain legal rights and protections. The use of the ® symbol without proper registration is prohibited and can lead to legal consequences.

On the other hand, the TM symbol is used to indicate that a trademark is being claimed by the owner, but it is not yet registered with a government authority. The TM symbol stands for “trademark” and serves as a notice to the public that the owner considers the mark to be a trademark. It can be used for both goods and services. Unlike the ® symbol, the TM symbol does not provide the same level of legal protection as a registered trademark. However, it can still help establish the owner’s claim to the mark and deter others from using a similar mark.

It’s important to note that the use of these symbols may vary by country and jurisdiction. Some countries may have their own specific symbols or regulations regarding trademark usage. It’s always advisable to consult the trademark laws and regulations of the relevant jurisdiction to ensure proper usage and compliance.

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 one you wish to use or register. Here are some steps you can take to assess the availability of a trademark:

1. Preliminary Search: Begin by conducting a preliminary search yourself. Start by searching online databases, search engines, and social media platforms to check if there are any identical or similar trademarks already in use. Additionally, explore industry-specific directories, trade publications, and relevant websites to gather information.
2. Professional Trademark Search: Consider engaging the services of a professional trademark search firm or an experienced trademark attorney. They have access to specialized databases and resources that can conduct a more thorough search, including registered trademarks, pending applications, and common law marks. This can provide a more comprehensive assessment of potential conflicts.
3. USPTO Trademark Database: In the United States, you can search the United States Patent and Trademark Office (USPTO) database. This database allows you to search for registered trademarks, pending applications, and other relevant information. Keep in mind that variations in spelling, wording, or design can still create conflicts, so it’s important to be thorough in your search.
4. International Trademark Databases: If you’re seeking international protection, you should consult trademark databases in the relevant jurisdictions. Many countries have their own trademark databases, such as the European Union Intellectual Property Office (EUIPO) for the European Union and the World Intellectual Property Organization (WIPO) for international registrations.
5. Consultation with a Trademark Attorney: It’s advisable to consult with a trademark attorney who specializes in intellectual property law. They can provide guidance, evaluate search results, and advise you on the availability and potential risks associated with your desired trademark.

Remember that a comprehensive trademark search is crucial to avoid potential conflicts with existing marks. It’s essential to assess not only identical marks but also similar marks that may cause confusion among consumers. By conducting a thorough search, you can make an informed decision about the availability and potential registration of your desired trademark.

Why do I need to conduct a trademark search before filing my trademark application?

There’s no requirement or mandate from the USPTO that says you must conduct a trademark search before filing an application, but it’s certainly smart to do so. If the search reveals that there’s an existing trademark that’s similar to your desired mark, then it’s better that you find out before submitting your application. Speak with a trademark attorney about conducting a comprehensive clearance search for potentially conflicting marks that already exist or are pending.

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, you do not necessarily need to sell a product or service to obtain a registered trademark. Trademark protection can be obtained for both goods and services, but actual use in commerce is typically required to obtain full registration.

In the United States, for example, the USPTO requires applicants to demonstrate either actual use of the mark in commerce or a bona fide intent to use the mark in commerce 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 file an intent-to-use (ITU) application. This allows you to secure a filing date and priority for your mark while providing a window of time to commence actual use before obtaining full registration.

However, it’s important to note that simply having an idea or intention to use a mark in the future is not sufficient to obtain trademark rights. You must have a bona fide intent and a concrete plan to use the mark in commerce. Additionally, there are specific deadlines and requirements to provide evidence of actual use to proceed with the registration process.

It’s advisable to consult with a trademark attorney to understand the specific requirements and procedures for obtaining a registered trademark in your jurisdiction. They can guide you through the process and help ensure compliance with the relevant laws and regulations.

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 only provide services locally. The scope of trademark protection is not limited to geographical boundaries. In the United States, for instance, you can obtain a federal trademark registration through the United States Patent and Trademark Office (USPTO) regardless of whether your services are offered locally or nationwide.

When applying for a federal trademark, you need to demonstrate that your mark is used in connection with interstate commerce. This means that your services, even if provided locally, must affect commerce that crosses state lines. For example, if you advertise your services online, engage in transactions across state borders, or provide services to customers located in other states, you would likely satisfy the interstate commerce requirement.

It’s important to note that obtaining a federal trademark registration offers certain benefits and protections, such as nationwide priority, the ability to bring a lawsuit in federal court, and a public record of your rights. However, if your services are strictly limited to a local area and you do not engage in any activities that would impact interstate commerce, you may also consider seeking state-level trademark protection instead.

Consulting with a trademark attorney can provide you with valuable guidance specific to your situation. They can assess the nature of your services, advise on the appropriate level of protection, and guide you through the trademark application process.

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

When it comes to trademark registration, it is generally recommended to register both the name of your business and your brand logo if they are distinctive and integral to your brand identity. Both the name and the logo can function as trademarks and provide valuable protection for your business.

The name of your business is typically the primary identifier of your brand, and it’s important to secure trademark rights for it. Registering the business name as a trademark can help prevent others from using a similar name in connection with similar goods or services, reducing the likelihood of consumer confusion.

In addition to the business name, if you have a unique and distinctive brand logo, it’s advisable to register it as a separate trademark. A brand logo can be a powerful visual representation of your brand and can help consumers easily recognize and associate your products or services with your business. By securing trademark rights for your logo, you can prevent others from using similar logos that may create confusion in the marketplace.

Ultimately, the decision to register the business name, brand logo, or both depends on the specific circumstances of your business. It’s recommended to consult with a trademark attorney who can assess the distinctiveness and protectability of both elements and guide you on the best trademark registration strategy for your brand.

What is a Common law Trademark?

While one obtains maximum protection by registering one’s trademark with the United States Patent and Trademark Office (USPTO), it is somewhat less known (and obvious) that one obtains trademark rights in a limited geographic area from the moment a trademark is used in connection with the sale of goods/services. So, if you own a pizza shop in Orlando called DYNO PIZZA, you automatically obtain “common law trademark rights” to that name in Orlando and no other pizza shop can call itself, DYNO.

What is a fanciful trademark?

A fanciful trademark, also known as a coined mark, is a type of trademark that is created by inventing a completely new word or phrase that has no meaning or association with the goods or services it represents. Fanciful trademarks are highly distinctive and inherently strong because they are unique and have no prior associations in the minds of consumers.

Unlike descriptive or generic terms, which directly describe the nature or characteristics of a product or service, fanciful trademarks are invented solely for the purpose of functioning as a trademark. They require consumers to associate the word or phrase exclusively with the specific brand or company.

Examples of fanciful trademarks include well-known brands like “Kodak” for cameras and imaging products, “Xerox” for photocopiers, and “Google” for internet search services. These words were coined and had no meaning prior to their adoption as trademarks. Their distinctiveness and uniqueness have helped these brands establish strong identities in the marketplace.

Fanciful trademarks enjoy a high level of legal protection because they are considered inherently distinctive. They are typically easier to register and enforce compared to marks that are descriptive or suggestive in nature. However, it’s still important to conduct a comprehensive trademark search to ensure that the coined mark is not confusingly similar to existing trademarks.

If you have a unique and invented word or phrase that you intend to use as a trademark, consult with a trademark attorney who can provide guidance on its distinctiveness and the registration process.

What is TEAS?

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

The TEAS system provides an efficient and streamlined process for submitting trademark applications, making it easier for applicants to navigate the registration process. Through TEAS, applicants can file new trademark applications, respond to office actions, make amendments to existing applications, and maintain their registered trademarks.

There are different versions of TEAS available, each tailored to specific types of applications. These include TEAS Plus, TEAS Reduced Fee (RF), and TEAS Regular. The different versions vary in terms of requirements, fees, and the level of assistance provided by the USPTO during the application process.

TEAS Plus, for example, offers lower filing fees but has stricter requirements, such as providing a complete and accurate identification of goods or services from the pre-approved USPTO list. TEAS Regular, on the other hand, allows for more flexibility in terms of the identification of goods or services, but it has higher filing fees compared to TEAS Plus.

Using the TEAS system offers several benefits, including convenience, cost savings, and faster processing times. It also allows applicants to track the status of their applications and receive electronic notifications regarding any updates or actions related to their trademarks.

It’s important to note that while the TEAS system simplifies the application process, it is still recommended to seek guidance from a trademark attorney to ensure proper filing and compliance with the USPTO’s requirements.

How long does the trademark application process take?

The duration of the trademark application process can vary depending on several factors, including the jurisdiction, the complexity of the mark, and the efficiency of the trademark office. In general, the trademark application process can take several months to a few years to reach completion. Here is a breakdown of the key stages involved in the process:

1. Filing and Initial Review: The initial step is submitting the trademark application to the relevant trademark office. The application is reviewed for compliance with formalities and completeness. This stage typically takes a few weeks to a few months.
2. Examination and Publication: The trademark office conducts a substantive examination of the application to assess its registrability. This involves checking for conflicts with existing trademarks, assessing distinctiveness, and evaluating other legal requirements. This examination stage can vary in duration, ranging from a few months to over a year, depending on the workload of the trademark office.
3. Office Actions and Responses: If the trademark office raises objections or issues during the examination, they will issue an office action detailing the reasons for refusal or requesting additional information. The applicant must respond to these office actions within the given time frame, typically within six months to a year. This stage can add several months or more to the overall timeline, depending on the complexity of the issues raised.
4. Publication and Opposition: After the application successfully passes examination, it may be published in an official gazette or publication for a specified period, usually around 30 days. During this time, third parties have an opportunity to oppose the registration of the mark if they believe it conflicts with their existing rights. If an opposition is filed, it can significantly extend the application process, potentially adding months or even years to the timeline.
5. Registration: If no oppositions are filed or if they are successfully overcome, the trademark office will issue a registration certificate. The time taken for the registration certificate to be issued can vary, but it typically ranges from a few weeks to a few months.

It’s important to note that the timelines provided are general estimates and can vary depending on the specific circumstances of each application. It’s advisable to consult with a trademark attorney or the relevant trademark office for more accurate information and updates on current processing times.

How long does a trademark last?

A registered trademark can last indefinitely, as long as it is properly maintained and renewed. Trademark protection is not subject to a fixed expiration date like patents or copyrights. Instead, trademarks can be renewed as long as the mark continues to be used in commerce and the renewal fees are paid on time.

In the United States, for example, once a trademark is registered with the United States Patent and Trademark Office (USPTO), it is initially granted protection for a period of ten years. However, between the fifth and sixth year after registration, the owner must file a Declaration of Use and Application for Renewal to maintain the registration. If these requirements are met, the trademark registration can be renewed indefinitely in successive ten-year periods.

It’s important to keep track of renewal dates and ensure that the necessary filings and fees are submitted on time to maintain the validity of the trademark. Failure to renew a trademark can result in the loss of legal protection and potentially open the door for others to use similar marks.

It’s worth noting that trademark rights can also be established and maintained through continuous and extensive use of an unregistered mark, commonly known as common law trademark rights. While these rights may not provide the same level of protection as a registered trademark, they can still offer some degree of legal recourse against infringers.

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. This is known as common law trademark rights.

Common law trademark rights are automatically acquired by using a distinctive mark in connection with goods or services. By using the mark, you gain limited protection in the geographic areas where the mark is used and where you can demonstrate your mark has gained recognition and has developed goodwill among consumers.

While common law trademark rights offer some level of protection, they are generally narrower in scope and can be more difficult to enforce compared to registered trademarks. Registration provides several advantages, such as nationwide protection, a legal presumption of ownership, and the ability to bring a lawsuit in federal court. It also serves as a public record of your rights, which can help deter others from adopting similar marks.

Registering your trademark with the appropriate government authority, such as the United States Patent and Trademark Office (USPTO) in the United States, provides stronger and more extensive legal protection. It is recommended to seek registration for important trademarks that are critical to your business and brand identity, especially if you plan to expand your business nationally or internationally.

Consulting with a trademark attorney can help you determine the best strategy for protecting your trademarks, whether through common law rights, federal registration, or a combination of both.

When should I hire a trademark lawyer?

It is advisable to consider hiring a trademark lawyer when you have important trademarks that require protection or when you encounter complex issues during the trademark process. Here are some specific scenarios in which consulting a trademark lawyer can be beneficial:

1. Trademark Clearance and Search: A trademark lawyer can conduct a comprehensive trademark search to assess the availability and potential conflicts with existing marks. They have access to specialized databases and expertise in analyzing search results, helping you make informed decisions about the viability of your proposed mark.
2. Trademark Application Preparation: A trademark lawyer can assist with preparing and filing your trademark application. They can help ensure that the application is correctly filled out, provide guidance on selecting the appropriate class of goods or services, and draft a strong description of the mark to maximize protection.
3. Responding to Office Actions: If you receive an office action from the trademark office, a lawyer can provide guidance on how to respond effectively. They can help address any objections or refusals and strengthen your position to overcome potential issues.
4. Trademark Portfolio Management: If you have multiple trademarks or a growing portfolio, a lawyer can assist in managing and maintaining your trademarks. They can provide advice on renewal requirements, monitoring for potential infringement, and enforcing your trademark rights.
5. Trademark Litigation and Disputes: If your trademark rights are infringed upon or if you need to defend against an infringement claim, a trademark lawyer can represent you in legal proceedings. They can help protect your interests and navigate the complexities of trademark litigation.
6. International Trademark Protection: If you plan to expand your business internationally, a lawyer with expertise in international trademark law can guide you through the process of obtaining trademark protection in foreign jurisdictions and help ensure your trademarks are adequately safeguarded.

Trademark law can be complex, and the guidance of a knowledgeable attorney can help you navigate the process, avoid potential pitfalls, and maximize the protection of your trademarks. They can provide personalized advice based on your specific needs and objectives.

What is a trademark’s specimen?

In the context of trademark law, a specimen refers to a sample or example of how the trademark is used in commerce. It serves as evidence to demonstrate that the mark is actually being used in connection with the goods or services specified in the trademark application.

When filing a trademark application, it is necessary to submit a specimen to the trademark office to provide proof of the mark’s use in commerce. The type of specimen required depends on whether the mark is used for goods or services.

For goods: A specimen for goods typically consists of a label, tag, packaging, or other form of product branding that displays the mark directly on the goods or their packaging. It should clearly show the mark in use in a way that consumers encounter it when purchasing or consuming the goods.

For services: A specimen for services typically consists of advertising materials, such as brochures, websites, or other promotional materials, that demonstrate the mark’s use in connection with the services being offered. The specimen should show the mark being used in a way that indicates the services are associated with the mark.

It’s important to note that the specimen should accurately represent the actual use of the mark in commerce. It should display the mark as it is used by consumers in the ordinary course of business, without any alterations or modifications that could potentially misrepresent the mark or its use.

Submitting an acceptable specimen is crucial for the trademark application process. Incomplete or improper specimens may result in rejection or delay of the application. Therefore, it’s advisable to consult with a trademark attorney to ensure you provide appropriate specimens that meet the requirements of the specific jurisdiction where you are filing your application.

Can I request an expedited approval of my trademark registration?

Yes, it is possible to request an expedited approval of a trademark registration under certain circumstances. The availability of expedited processing varies depending on the jurisdiction and the specific procedures of the trademark office.

In the United States, for example, the United States Patent and Trademark Office (USPTO) offers a program called the “USPTO’s Accelerated Examination Program.” This program allows applicants to request expedited examination of their trademark applications in exchange for meeting certain requirements and paying an additional fee. To qualify for expedited processing, applicants must provide a statement explaining why their application should receive priority and submit a pre-examination search and analysis.

Other jurisdictions may have similar programs or procedures in place for expediting trademark registrations. It’s important to consult the specific guidelines and requirements of the relevant trademark office to determine if expedited processing is available and if you meet the necessary criteria.

It’s worth noting that expedited processing does not guarantee immediate approval or registration. The timeline for expedited processing can still vary, and the decision ultimately rests with the trademark office. Additionally, expedited processing typically involves additional fees above the standard filing fees.

If you have a time-sensitive trademark matter or need to expedite the registration process, consulting with a trademark attorney can provide guidance on the available options and help navigate the specific requirements and procedures.

Can I trademark a phrase?

Yes, it is possible to trademark a phrase under certain conditions. In order to obtain a trademark registration for a phrase, the phrase must meet the requirements for trademark protection, which include distinctiveness and non-generic nature.

1. Distinctiveness: To be eligible for trademark protection, the phrase must be distinctive and capable of distinguishing your goods or services from those of others. There are different categories of distinctiveness:
2. Fanciful or coined phrases: These are invented words or phrases that have no existing meaning and are created solely as trademarks. Examples include “Google” or “Xerox.”
3. Arbitrary phrases: These are words or phrases that have a common meaning but are used in a way unrelated to the actual goods or services. For example, “Apple” for computers or “Amazon” for online retail.
4. Suggestive phrases: These phrases suggest a quality or characteristic of the goods or services but require imagination or thought to understand the connection. An example would be “Microsoft” for software products.

Non-Generic Nature: A phrase that is generic or descriptive of the goods or services it represents cannot be registered as a trademark. Generic phrases are terms that are commonly used to refer to the category of goods or services, such as “Computer” for computers or “Pizza” for pizza delivery services. Descriptive phrases are those that merely describe a characteristic, quality, or feature of the goods or services.

It’s important to conduct a thorough trademark search to ensure that the phrase you want to trademark is not already in use by others in a similar manner. Consulting with a trademark attorney can provide guidance on the distinctiveness of your phrase and help navigate the registration process.

Can I trademark a logo?

Yes, you can trademark a logo. In fact, logos are commonly registered as trademarks to protect the visual representation and identity of a brand.

When seeking trademark protection for a logo, it’s important to ensure that the logo meets the requirements for trademark registration, particularly with regard to distinctiveness. A logo should be distinctive and capable of distinguishing your goods or services from those of others.

To enhance the distinctiveness of your logo, it is recommended to create a unique and original design that is not merely descriptive or generic. A distinctive logo can be highly valuable in establishing brand recognition and preventing others from using similar logos that may cause confusion among consumers.

When applying for a trademark registration for a logo, it is crucial to provide a clear and accurate representation of the logo in the application. This can be done by submitting a digital image or a drawing that accurately depicts the logo’s design elements, colors, and proportions.

It’s important to conduct a thorough trademark search to ensure that your logo does not infringe upon existing trademarks or logos that may create confusion among consumers. Consulting with a trademark attorney can provide guidance on the registrability of your logo and help navigate the application process.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances, but it can be more challenging than trademarking a word, logo, or phrase. Trademark protection for a color is generally limited to situations where the color has acquired distinctiveness and is strongly associated with a particular brand or product in the minds of consumers.

To successfully register a color as a trademark, you need to demonstrate that the color has acquired secondary meaning, meaning that consumers primarily recognize the color as an indicator of the source of the goods or services rather than simply an ornamental or functional aspect.

In general, the color must have attained a level of distinctiveness that sets it apart from the colors commonly used in the industry. Examples of famous color trademarks include the distinctive shade of brown used by UPS for its delivery trucks and the specific shade of pink used by Owens-Corning for its fiberglass insulation.

When applying for a color trademark, you will need to provide evidence and arguments to support the claim of acquired distinctiveness. This can include evidence of extensive and continuous use of the color in commerce, consumer surveys showing recognition and association of the color with your brand, and any other relevant documentation or information that demonstrates the distinctiveness of the color in relation to your goods or services.

It’s worth noting that the bar for trademarking a color is quite high, and not all color trademarks are granted. It is recommended to consult with a trademark attorney who can evaluate the distinctiveness of the color and guide you through the application process.

Can I transfer my trademark to someone else?

Yes, you can transfer your trademark to someone else through a process called trademark assignment. Trademark assignment involves transferring the ownership or rights of a registered trademark from one party (the assignor) to another (the assignee).

The transfer of a trademark can occur through a formal agreement, typically in the form of a trademark assignment agreement. This agreement should clearly outline the details of the transfer, including the specific trademark being assigned, the rights and obligations of both parties, and any financial considerations involved.

To complete the transfer, it is important to record the trademark assignment with the relevant trademark office or authorities. In the United States, for example, the United States Patent and Trademark Office (USPTO) requires the submission of a trademark assignment document along with the appropriate filing fee.

Recording the assignment with the trademark office serves as evidence of the transfer and helps ensure that the new owner is recognized as the legal owner of the trademark. It also helps maintain the accuracy of the trademark register.

It’s important to consult with a trademark attorney to ensure that the assignment process is properly executed, the necessary legal requirements are met, and the rights and interests of both parties are protected.

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 owner of the trademark, to grant permission to another party (the licensee) to use your trademark in connection with specified goods or services.

The trademark licensing agreement sets out the terms and conditions of the license, including the scope of the license, the duration of the agreement, quality control measures, royalty or licensing fees, and any other obligations or restrictions both parties must adhere to.

Licensing your trademark can offer several benefits, such as generating additional revenue, expanding brand reach through collaborations or partnerships, and leveraging the licensee’s expertise or resources to promote your brand.

However, it’s important to exercise caution when licensing your trademark. Maintaining quality control over the use of your mark is crucial to ensure that the licensed goods or services meet your standards and maintain the reputation associated with your brand. Proper monitoring and enforcement of the licensing agreement are essential to protect the integrity of your trademark.

Consulting with a trademark attorney can help ensure that your licensing agreement is properly drafted, covers all necessary provisions, and complies with the applicable laws and regulations. They can also provide guidance on negotiating terms and reviewing the licensee’s qualifications and capabilities.

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, registering a trademark in the United States does not automatically provide protection in other countries. Trademark rights are generally territorial, meaning they are specific to the country or region where the trademark is registered or used in commerce.

If you wish to protect your trademark in other countries, you will need to seek trademark registration in each individual country or through regional trademark systems, such as the European Union’s Trademark (EU TM) system or the Madrid Protocol for international trademark registrations.

Registering your trademark in other countries typically involves filing a separate application with the relevant trademark office in each jurisdiction. The requirements, procedures, and fees can vary between countries, so it’s important to familiarize yourself with the specific rules and regulations of each country you wish to protect your trademark in.

Working with a trademark attorney or an intellectual property professional with international expertise can be beneficial. They can guide you through the process, help you determine the best strategy for protecting your trademark internationally, and assist with the necessary filings and requirements.

It’s important to note that certain regional or international agreements, such as the Paris Convention for the Protection of Industrial Property and the Madrid Protocol, provide mechanisms that can facilitate the process of obtaining trademark protection in multiple countries. These agreements can streamline the registration process and offer cost and time efficiencies.

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

While there is no single “International Trademark” that provides worldwide protection, there are mechanisms and agreements in place to simplify the process of obtaining trademark protection in multiple countries.

One such mechanism is the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO). The Madrid System allows trademark owners to file a single international application, based on their existing national or regional trademark registration, and designate multiple countries where they seek protection. This system provides a centralized and streamlined process for obtaining trademark protection across multiple jurisdictions.

However, it’s important to note that the Madrid System does not grant a single international trademark registration. Instead, it facilitates the management and administration of trademark applications and registrations in multiple countries through a centralized system.

Under the Madrid System, the international registration is dependent on the underlying national or regional trademark registration. If the national or regional registration is canceled, the international registration may also be affected. Additionally, the Madrid System does not guarantee automatic acceptance by all designated countries, and each country has the right to examine and determine the registrability of the mark based on their own laws and regulations.

In summary, while there is no single “International Trademark” that provides automatic and comprehensive worldwide protection, mechanisms like the Madrid System offer a convenient way to pursue trademark protection in multiple countries through a centralized filing system.

What is a trademark office action?

A trademark office action is a written communication issued by the trademark office in response to a trademark application. It outlines any issues, objections, or requirements that need to be addressed before the application can proceed to registration.

Office actions are typically issued after the initial examination of the trademark application by an examiner at the trademark office. The purpose of an office action is to notify the applicant of any potential obstacles or deficiencies in the application that need to be resolved.

There are different types of office actions that can be issued, depending on the specific circumstances of the application. Common types of office actions include:

1. Non-Substantive Office Action: This type of office action typically addresses procedural or administrative matters, such as deficiencies in the application form or requirements for additional information or clarification.
2. Substantive Office Action: A substantive office action raises substantive issues with the trademark application, such as objections based on likelihood of confusion with existing trademarks, lack of distinctiveness, or descriptiveness of the mark. These issues must be resolved to demonstrate the mark’s eligibility for registration.
3. Office Action of Suspension: In some cases, the trademark office may issue an office action of suspension, which temporarily halts the examination process due to pending related proceedings or prior applications. The applicant is usually given an opportunity to respond and provide information or arguments to overcome the suspension.

It’s important to carefully review and understand the contents of an office action and to respond within the specified timeframe. Failure to respond or address the issues raised in the office action can result in the abandonment or refusal of the trademark application.

If you receive an office action, it is recommended to consult with a trademark attorney who can guide you through the response process and help you address the issues effectively.

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 common occurrence. It’s important to carefully review the office action and take appropriate steps to address the issues raised. Here are some recommended steps to follow:

1. Read the office action carefully: Review the office action in its entirety to understand the objections or requirements outlined by the trademark office. Take note of any deadlines or response periods mentioned.
2. Analyze the objections: Determine the specific objections raised by the trademark office, such as likelihood of confusion with existing trademarks, descriptiveness, or lack of distinctiveness. Understand the reasoning behind the objections and consider how best to respond.
3. Consult with a trademark attorney: It is advisable to consult with a trademark attorney who can provide guidance on how to respond to the office action effectively. An attorney can assess the strength of the objections and help develop a strategy to overcome them.
4. Gather supporting evidence or arguments: Collect any relevant evidence or arguments to support your position and address the objections. This may include evidence of acquired distinctiveness, consumer surveys, or legal arguments based on applicable laws or precedents.
5. Prepare a response: Craft a well-reasoned and thorough response to the office action, addressing each objection individually and providing supporting evidence or arguments. Ensure that your response is clear, concise, and persuasive.
6. Submit the response within the specified timeframe: Pay attention to the deadline mentioned in the office action and ensure that your response is submitted within the given timeframe. Late or missed responses can lead to abandonment or refusal of the trademark application.
7. Follow up with the trademark office: After submitting your response, monitor the progress of your application and follow up with the trademark office if necessary. Be prepared to provide additional information or address further inquiries.

It’s important to note that each office action is unique, and the specific response required will depend on the objections raised. Consulting with a trademark attorney is highly recommended to ensure that your response is tailored to the specific issues in your case.

Will the USPTO help me enforce my trademark rights?

The USPTO will register your trademark and keep a record of it, but they won’t help you enforce your trademark rights or give legal advice. It’s entirely your responsibility as the owner of the mark to scan the market for infringement and take legal action when necessary. Most trademark attorneys, including Cohn Legal, offer trademark monitoring services to alert you when possible infringement occurs.

How do I enforce my trademark rights?

Enforcing your trademark rights is important to protect your brand identity and prevent others from infringing upon your mark. Here are some steps you can take to enforce your trademark rights:

1. Monitor for infringement: Regularly monitor the marketplace for unauthorized use of your trademark. This can include monitoring online platforms, trade publications, and industry events to identify any instances of infringement or potential confusion with your mark.
2. Document evidence of infringement: Collect evidence of the unauthorized use of your trademark, such as photographs, screenshots, advertising materials, and any other relevant documentation that demonstrates the infringement. Ensure that you have clear records of the infringing activities.
3. Evaluate the strength of your case: Consult with a trademark attorney to assess the strength of your case and determine the best course of action. They can help you understand the legal options available and guide you through the enforcement process.
4. Cease and desist letter: In many cases, a cease and desist letter is the first step in enforcing your trademark rights. This letter, sent by your attorney, formally demands that the infringing party cease their infringing activities. It outlines your rights, provides evidence of the infringement, and sets a deadline for the infringer to respond.
5. Negotiation or settlement: In some cases, negotiations or settlement discussions may be initiated to resolve the infringement matter. This can involve discussions with the infringing party to reach a mutually agreeable resolution, such as ceasing the infringing activities, modifying their use of the mark, or entering into a licensing agreement.
6. Trademark litigation: If negotiations or settlements fail, you may choose to pursue legal action through trademark litigation. This involves filing a lawsuit against the infringing party to seek remedies, such as injunctive relief to stop the infringing activities, damages for any harm caused, or a court order for the destruction or transfer of infringing goods.
7. International enforcement: If your trademark is registered in multiple countries, you may need to engage in enforcement actions in each relevant jurisdiction. This can involve working with local counsel or intellectual property professionals to navigate the specific laws and procedures of each country.

Enforcing your trademark rights can be complex, and it is advisable to work with a trademark attorney who specializes in intellectual property law. They can guide you through the enforcement process, help protect your rights, and pursue the appropriate legal remedies to address infringement.

Will working with an attorney increase my chances getting my trademark application approved?

Hiring a trademark attorney will increase your chances of getting your trademark application approved. Prior to completing the application, your attorney will conduct a thorough search to ensure no marks similar to your desired mark exist. Your attorney can fill out the application on your behalf. Should your initial application get rejected, your attorney will know how to respond to the USPTO.

Bottom line: A trademark attorney is your advocate and will fight hard for your rights as a business owner to trademark your intellectual property.

Why Trademark Registration Matters for Orlando Businesses

Orlando, Florida is an up-and-coming community that’s attracting new business owners. Many of these entrepreneurs focus on product development, marketing, and creating an online presence. One aspect of opening a new business that they often overlook is trademark registration, which can be a costly mistake down the line.

Imagine the following: Denise knows that there are a lot of dog owners in her neighborhood, and that gives her a business idea. She decides to open a pet grooming salon called Woof & Purr Groomers.

The first thing she does is lease space for her new shop and purchase the equipment she’ll need. Then, she orders an expensive new sign to hang out front, develops a website, and creates marketing materials to let everyone in the Orlando area know that she’s ready to do business.

Denise doesn’t consider working with a trademark attorney. She figures that trademark registration isn’t something that small businesses need to worry about.

Denise opens her salon and business is booming. After about 6 months she already has a steady stream of repeat customers. One day, however, Denise gets bad news in the mail. There’s a cease-and-desist letter from a large pet supply. It turns out that they have a line of pet shampoos coming out called Woof & Purr Shampoo.

Their product hasn’t hit store shelves yet, but they trademarked the name a year ago when they first started developing it. The pet supply company is demanding that Denise close her shop and cease operations until she rebrands her salon.

That means Denise has to take down her sign, redesign her website, and throw out all of the marketing materials she created. On top of that, she’ll risk losing the loyal customers that she cultivated over the past several months.

Every new business, no matter how small or large needs to conduct a thorough trademark search and registration as soon as possible. It’s the only way to ensure their brand will be protected.

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

Trademarks Services for Orlando 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