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Rochester, New York Businesses Use Cohn Legal for Trademark Services
Cohn Legal, PLLC specializes in intellectual property protection and corporate law for startups, entrepreneurs, and small business owners in Rochester, New York. Our trademark attorneys absolutely love helping companies protect their brand names and logos. On the most fundamental level, our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates.
Top Questions New York Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Rochester, New York, 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 Rochester, New York, 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 legal concept that refers to a recognizable sign, symbol, design, or expression that distinguishes the goods or services of one business from those of others. It can be a word, phrase, logo, symbol, color, sound, or even a combination of these elements. The primary purpose of a trademark is to identify the source of a product or service and to protect the owner’s rights to prevent others from using a similar mark in a way that could cause confusion among consumers.
Trademarks play a crucial role in branding and marketing strategies as they help build brand recognition and consumer trust. They allow businesses to establish a unique identity and differentiate themselves from competitors in the marketplace. By registering a trademark, business owners can obtain exclusive rights to use the mark and take legal action against anyone who infringes upon those rights.
A trademark serves as a valuable asset for a business, representing its reputation and goodwill. It can create a sense of familiarity and quality in the minds of consumers, making it easier for them to choose products or services associated with a trusted mark.
In summary, a trademark is a distinctive symbol or sign that helps identify and distinguish the goods or services of a business, protecting its brand identity and ensuring its exclusivity in the marketplace.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, although the terms are often used interchangeably. The distinction lies in the nature of the goods or services being protected.
A trademark is used to identify and distinguish goods, such as physical products, that are offered for sale in the marketplace. It can be a brand name, logo, or any other distinctive symbol associated with a particular product.
On the other hand, a service mark is used to identify and distinguish services provided by a business. It applies to intangible offerings, such as professional services, consulting, banking, or entertainment. Service marks serve the same purpose as trademarks but are specific to services rather than tangible goods.
To put it simply, trademarks protect products, while service marks protect services. However, from a legal standpoint, both trademarks and service marks receive similar protections under intellectual property laws. The application process and requirements for obtaining registration may also be similar.
Overall, the key difference lies in the type of offering being protected—physical goods for trademarks and services for service marks—but the purpose and legal principles behind them remain largely the same.
What’s the difference between the ® and TM symbols?
The ® (circled R) and TM symbols have different meanings and implications.
The ® symbol indicates that a trademark is registered with the appropriate trademark office, providing the owner with certain legal protections and exclusive rights to use the mark in connection with the registered goods or services. Only trademarks that have been officially registered with the relevant trademark authority can use the ® symbol. Unauthorized use of the ® symbol is prohibited and may result in legal consequences.
On the other hand, the TM symbol is used to indicate a trademark that is being used by a person or business but has not been officially registered with the trademark office. It serves as a notice to the public that the mark is being claimed as a trademark. While it doesn’t provide the same level of legal protection as a registered trademark, it can still help establish some level of common law rights and put others on notice of your claim to the mark.
In summary, the ® symbol signifies a registered trademark, while the TM symbol indicates an unregistered trademark that is being claimed by the owner. The use of these symbols depends on the registration status of the mark and the jurisdiction in which it is being used.
How can I determine if a trademark is available?
To determine if a trademark is available, it is important to conduct a comprehensive trademark search. This search aims to identify existing trademarks that may conflict with the one you intend to use or register. By conducting a thorough search, you can assess the potential risks and make an informed decision about moving forward with your desired trademark.
There are a few key steps you can take to conduct a trademark search:
- Online Search: Start by conducting an online search using search engines, business directories, and trademark databases. Check the websites of trademark offices such as the United States Patent and Trademark Office (USPTO) or the World Intellectual Property Organization (WIPO) to search their databases. Look for any similar or identical trademarks that could be potential obstacles.
- Trademark Databases: Utilize official trademark databases provided by the relevant trademark offices. These databases allow you to search for registered and pending trademarks, including information on their owners, descriptions, and classifications. In the United States, the USPTO’s Trademark Electronic Search System (TESS) is a valuable resource.
- Professional Trademark Search Services: Consider employing the services of professional trademark search firms or trademark attorneys who specialize in conducting comprehensive searches. They have access to advanced search tools and databases that can provide more comprehensive results and help identify potential conflicts.
- Consult an Attorney: It is advisable to consult with a trademark attorney who can guide you through the search process and provide legal advice based on their expertise. They can assess the search results, analyze potential conflicts, and advise you on the availability and registrability of your desired trademark.
By conducting a diligent trademark search, you can minimize the risk of infringing upon existing trademarks and increase the likelihood of successfully obtaining and protecting your own trademark. Remember, it’s crucial to thoroughly evaluate the search results and seek legal guidance to ensure a comprehensive analysis of the availability of your desired trademark.
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 rights can be obtained based on either actual use in commerce or intent to use.
- Actual Use: If you are already using a trademark in connection with goods or services in commerce, you can file for a trademark registration based on actual use. This means that you have already been using the mark in the marketplace to identify and distinguish your goods or services. In this case, you would need to provide evidence of your use of the mark, such as examples of product packaging, labels, marketing materials, or a website displaying the mark in connection with the goods or services.
- Intent to Use: Alternatively, you can file for a trademark registration based on an intent to use the mark in commerce. This allows you to secure your rights to the mark before you actually start using it. However, you will need to demonstrate a bona fide intention to use the mark in the near future. Once the intent-to-use application is approved, you will need to provide evidence of actual use before the trademark registration can be completed.
It’s important to note that trademark rights are granted based on the use of the mark in commerce. Merely having an idea or a concept for a product or service without any use or intent to use the mark would not be sufficient for obtaining a registered trademark.
Can I file a trademark application to cover products I don’t plan on selling?
As a trademark applicant, you can only apply for trademarks on goods that you are actually selling or intend to sell in the near future.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can still obtain a federal trademark even if you only provide your services locally. Trademarks are not limited to geographic boundaries, and you can seek federal registration regardless of the geographical scope of your services.
The key factor for obtaining a federal trademark registration is whether your mark is used in interstate commerce. This means that your mark must be used or intended to be used in connection with services that are offered or rendered across state lines or have an impact on commerce between different states.
While local services may not directly cross state lines, if there is any form of commerce, such as advertising, marketing, or providing services to customers or clients from outside your local area, you may still meet the requirement of interstate commerce. For example, if you offer online services or engage in any form of commerce that involves customers or clients from other states, you would likely meet the criteria for federal trademark registration.
It’s important to consult with a trademark attorney who can assess your specific circumstances and guide you through the registration process. They will be able to determine whether your services meet the requirements for federal registration and provide you with the necessary guidance to protect your trademark rights.
What should I register first: the name of my business or my brand logo?
When deciding what to register first, it is generally advisable to register the name of your business rather than just the brand logo. This is because the name of your business serves as the primary identifier and is often more important in terms of establishing brand recognition and protecting your overall brand identity.
By registering the name of your business as a trademark, you gain exclusive rights to use that name in connection with the goods or services you offer. This provides legal protection and prevents others from using a similar name that could cause confusion among consumers.
While registering your brand logo is also important for visual recognition, it is typically seen as a secondary element to the business name. If your brand logo includes distinctive design elements that are unique and separate from the business name, you may also consider registering it as a separate trademark. This can provide additional protection for the visual aspects of your brand.
However, it’s important to note that registering a trademark for your business name does not automatically grant you exclusive rights to use a logo that includes that name. To fully protect both the name and logo, you may need to file separate trademark applications for each.
When making decisions about trademark registration, it’s always a good idea to consult with a trademark attorney who can guide you based on your specific business and branding needs. They can help you determine the most effective and comprehensive trademark registration strategy to protect your business and brand.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that consists of a made-up or coined word that has no dictionary or common meaning. It is a mark that is created solely for the purpose of functioning as a trademark and has no other significance or use apart from identifying and distinguishing the goods or services of a particular business.
Fanciful trademarks are considered to be the strongest and most distinctive types of trademarks. Since these marks are entirely invented, they are highly unique and have a strong inherent capacity to identify and distinguish the source of goods or services. Examples of fanciful trademarks include brands like Kodak, Xerox, and Exxon.
The distinctiveness of a fanciful trademark makes it easier to establish a stronger level of protection under trademark law. Fanciful trademarks are afforded a higher level of trademark protection because they are inherently distinctive and less likely to be confused with other marks in the marketplace.
When selecting a fanciful trademark for your business, it’s important to ensure that the mark is truly unique and not already in use by another party. Conducting a thorough trademark search, as mentioned earlier, is crucial to avoid potential conflicts with existing trademarks.
Registering a fanciful trademark can provide you with exclusive rights to use that mark in connection with your goods or services and strengthen your brand identity. However, it’s always recommended to consult with a trademark attorney to ensure compliance with trademark laws and to guide you through the registration process.
What is the difference between a fanciful trademark and an arbitrary trademark?
Fanciful trademarks are made-up words that have no meaning unless applied to an underlying product. Exxon® gasoline and Pepsi® soft drinks are examples of fanciful trademarks.
Unlike fanciful trademarks, arbitrary marks are real words that have definitions, but the true definition of the word has no association with the underlying products. Apple® computers and Comet® cleanser are both examples. Registering just the words “apple” or “comet” would not be acceptable, but when used in association with the underlying products, they become unique and strong trademarks.
What is TEAS?
TEAS stands for the Trademark Electronic Application System. It is an online filing system provided by the United States Patent and Trademark Office (USPTO) that allows individuals and businesses to electronically submit their trademark applications and related documents.
The TEAS system provides an efficient and convenient way to file various types of trademark applications, including applications based on actual use, intent to use, and applications for renewals, assignments, and other trademark-related matters. It offers different forms tailored to specific application types and requirements.
There are three main types of TEAS applications:
- TEAS Plus: This is the most cost-effective option for filing a trademark application. To qualify for TEAS Plus, the applicant must meet certain requirements, such as providing goods or services from the USPTO’s pre-approved Acceptable Identification of Goods and Services Manual (ID Manual), agreeing to use electronic communication throughout the application process, and fulfilling specific application content requirements.
- TEAS Reduced Fee (TEAS RF): This option allows applicants to save some filing fees while still providing some flexibility in terms of the identification of goods and services and other application requirements.
- TEAS Regular: This is the standard filing option that provides the most flexibility in terms of application content and requirements, but it may be subject to higher filing fees compared to TEAS Plus and TEAS RF.
The TEAS system streamlines the trademark application process, reduces paperwork, and allows for faster communication with the USPTO. It also provides access to other services, such as monitoring the status of applications, responding to office actions, and maintaining and managing existing trademark registrations.
When using TEAS, it is important to carefully follow the instructions provided by the USPTO and ensure accurate and complete submission of all required information and documents. Working with a trademark attorney can be beneficial to navigate the application process and ensure compliance with the necessary requirements.
What is the United States Patent and Trademark Office?
The United States Patent and Trademark Office, also known as the USPTO, is the federal office responsible for accepting, reviewing, and making approval decisions on trademark applications. The USPTO keeps records of all existing and pending trademarks.
Note that the USPTO isn’t responsible for alerting trademark registrants if someone is infringing on their trademark. It’s the trademark owner’s responsibility to protect and enforce their trademark rights.
What is the role of an examining attorney?
Examining attorneys are employees of the USPTO. When you submit a trademark application to the USPTO, it’s the examining attorney who will review the application and ultimately decide to move it forward or deny it. Remember, the examining attorney doesn’t give legal advice to trademark applicants. If you need legal advice, then you should contact a trademark attorney.
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 application, and whether any issues or objections arise during the examination process. However, it’s important to note that the trademark application process can be a lengthy one, often taking several months to several years to complete.
In the United States, the timeline for a trademark application can generally be broken down into the following stages:
- Filing and Examination: After submitting the trademark application, it undergoes an initial examination by the trademark office to assess compliance with formal requirements, such as proper classification and payment of fees. This examination can take several months.
- Publication for Opposition: If the application passes the initial examination, it is published for a period of time, typically 30 days, to allow others to oppose the registration of the mark. During this period, third parties who believe they would be harmed by the registration can file an opposition. If no opposition is filed, the application can proceed to the next stage.
- Office Actions: If any issues or objections are raised during the examination or opposition period, the trademark office may issue an office action. This requires the applicant to address the concerns raised or provide additional information or arguments in support of the application. Office actions can significantly prolong the process, as responses and further examination can go back and forth between the applicant and the trademark office.
- Registration: If the application successfully passes all examination stages, including any necessary responses to office actions, the trademark will be approved for registration. The registration process itself can take several months, and once completed, the trademark will be officially registered and the applicant will receive a registration certificate.
It’s important to note that the timeframe provided above is a general guideline and can vary on a case-by-case basis. It’s advisable to consult with a trademark attorney to get a more accurate estimate based on your specific circumstances and jurisdiction.
How long does a trademark last?
Once a trademark is registered, it is not valid indefinitely. Trademark protection can last as long as the mark is actively used in commerce and the necessary renewal filings are made.
In the United States, a trademark registration is initially valid for ten years from the date of registration. However, to maintain the registration beyond the initial ten-year period, the trademark owner must file a renewal application with the United States Patent and Trademark Office (USPTO). The renewal application can be filed within one year before the expiration date or within a grace period of six months after the expiration date, with an additional fee.
After the initial ten-year period, subsequent renewals can be filed every ten years, as long as the mark continues to be in use and the renewal requirements are met. It is essential to actively monitor and renew your trademark to ensure ongoing protection and prevent it from becoming abandoned.
It’s worth noting that trademark protection can potentially last indefinitely if the mark continues to be used in commerce and the necessary renewal applications are filed on time. However, failure to renew the registration or a prolonged period of non-use can result in the loss of trademark rights.
It’s advisable to work with a trademark attorney to ensure compliance with renewal requirements and to maintain the registration of your trademark for as long as you continue to use and protect it.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights can be acquired through actual use of the mark in commerce, even without formal registration. These are known as common law trademark rights.
By using a trademark in connection with your goods or services, you establish common law rights in the geographic areas where you actually use the mark. These rights provide some level of protection against others using a similar or confusingly similar mark in the same or related industry.
However, relying solely on common law rights has limitations compared to having a registered trademark. Unregistered trademarks generally receive less protection and can be more difficult to enforce compared to registered trademarks. Additionally, common law rights are limited to the specific geographic areas where the mark is used, which may restrict your ability to expand your business and brand.
Registering a trademark with the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO), provides significant advantages. It grants you nationwide protection, a legal presumption of ownership and validity, and the ability to bring a federal lawsuit for infringement. Registering a trademark also serves as public notice of your rights and can act as a deterrent against potential infringers.
While registration is not mandatory, it is generally recommended to seek formal registration if you intend to build a strong and valuable brand. Consulting with a trademark attorney can help you understand the benefits of registration and guide you through the process.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is advisable at various stages of the trademark process to ensure that your rights are protected and that you navigate the complexities of trademark law effectively. Here are some situations in which it is recommended to consult with a trademark lawyer:
- Trademark Search and Clearance: Before adopting and using a trademark, conducting a comprehensive trademark search is crucial. A trademark lawyer can assist you in conducting the search and analyzing the results to identify potential conflicts and risks.
- Trademark Application Preparation: Filing a trademark application requires careful attention to detail and knowledge of the legal requirements. A trademark lawyer can assist you in preparing and filing the application, ensuring that it is properly drafted and includes all necessary information.
- Responding to Office Actions: If you receive an office action from the trademark office raising objections or issues with your application, a trademark lawyer can help you understand the concerns and guide you in preparing a strong response.
- Trademark Opposition or Cancellation Proceedings: If your trademark application is opposed by another party or if you need to initiate an opposition or cancellation proceeding against someone else’s mark, a trademark lawyer can provide the necessary expertise to represent your interests.
- Trademark Infringement Issues: If you believe your trademark rights are being infringed upon or if you are accused of infringing someone else’s mark, a trademark lawyer can help you understand your rights, assess the situation, and guide you through enforcement actions or defense strategies.
- Trademark Portfolio Management: If you have a growing portfolio of trademarks, a trademark lawyer can assist you in managing and protecting your intellectual property rights, including monitoring for potential infringements, filing renewal applications, and handling trademark maintenance.
Trademark law can be complex, and the guidance of a qualified trademark lawyer can help ensure that your rights are protected, your applications are properly filed, and you navigate any potential legal challenges effectively.
What is a trademark’s specimen?
In the context of trademark registration, a specimen refers to a sample or example of how the trademark is being used in commerce. It serves as evidence to demonstrate the actual use of the mark in connection with the goods or services specified in the trademark application.
The purpose of submitting a specimen is to show the trademark office and the public how the mark is being presented to consumers. It helps establish that the mark is being used as a source identifier and assists in determining the distinctiveness and appropriateness of the mark for registration.
The type of specimen required depends on whether the mark is associated with goods or services:
- Specimens for Goods: If the mark is used in connection with tangible goods, acceptable specimens can include labels, tags, packaging, product displays, or photographs showing the mark displayed on the goods or their packaging.
- Specimens for Services: If the mark is used in connection with services, acceptable specimens can include advertisements, brochures, website printouts, business cards, or photographs showing the mark displayed in conjunction with the services.
It’s important to ensure that the specimen accurately reflects how the mark is being used in commerce and that it meets the specific requirements set by the trademark office. Failure to provide an acceptable specimen can result in a refusal or delay in the registration process.
When preparing a trademark application, it’s advisable to work with a trademark attorney who can guide you on the appropriate specimens to submit and ensure compliance with the trademark office’s requirements.
What is a priority date?
The date your trademark application is submitted to the USPTO is the priority date. If anyone submits an application to register a mark similar to yours after your priority date, then your application will be given preference.
Simply submitting an application provides you with a certain degree of protection. That’s why it’s advantageous to submit your trademark application sooner rather than later.
Can I request an expedited approval of my trademark registration?
In some cases, it is possible to request an expedited or accelerated examination of a trademark application. However, the availability of expedited processing varies depending on the jurisdiction and the specific circumstances of the application.
For example, in the United States, 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 additional fees. To qualify for expedited processing, applicants must demonstrate that they have a good reason for expedited treatment, such as pending litigation, potential infringement, or other legitimate business reasons.
It’s important to note that expedited processing is not available for all trademark applications and is subject to the discretion of the trademark office. Additionally, expedited processing does not guarantee approval of the application. The mark still needs to meet all the substantive requirements for registration, including distinctiveness, non-confusion, and compliance with other trademark laws.
If you believe you have valid reasons for expedited processing, it’s advisable to consult with a trademark attorney. They can assess your situation, determine if expedited processing is available and appropriate, and guide you through the application process.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase, provided that the phrase meets the requirements for trademark protection. Like any other trademark, a phrase must be distinctive and capable of identifying the source of goods or services in order to be eligible for registration.
When considering trademarking a phrase, it’s important to keep the following factors in mind:
- Distinctiveness: The phrase should be distinctive, meaning it should set your goods or services apart from others in the marketplace. Distinctiveness can be achieved through creative or unique wording, slogans, or catchphrases that are not commonly used in the industry.
- Descriptive vs. Suggestive: A descriptive phrase that directly describes the characteristics or qualities of the goods or services may be more difficult to register as a trademark. However, if the phrase is suggestive, meaning it requires some level of interpretation or imagination to understand the connection to the goods or services, it may have a higher chance of being registered.
- Secondary Meaning: If the phrase is initially descriptive, it may still be eligible for trademark protection if it has acquired secondary meaning. This means that over time, through extensive use and consumer recognition, the phrase has come to be associated exclusively with your goods or services.
- Functionality: A phrase that serves a functional purpose or merely describes the goods or services is generally not eligible for trademark protection. Trademarks are meant to identify and distinguish the source of goods or services, not to monopolize generic or functional terms.
- Potential Conflicts: Before filing a trademark application for a phrase, it’s important to conduct a thorough search to ensure that the phrase is not already in use or registered by another party for similar goods or services. This helps avoid potential conflicts and challenges during the registration process.
It’s advisable to consult with a trademark attorney who can guide you through the process of trademarking a phrase, conduct a comprehensive search, and assist you in preparing and filing the trademark application.
Can I trademark a logo?
Yes, you can trademark a logo. In fact, logos are one of the most common types of trademarks registered with the intent to protect and distinguish a business’s visual brand identity.
To successfully trademark a logo, it must meet the requirements for trademark protection, which include being distinctive and capable of identifying the source of goods or services. Here are some key considerations when trademarking a logo:
- Distinctiveness: The logo should be unique and not similar to existing logos in your industry. A distinctive logo that sets your brand apart can have a higher chance of being registered as a trademark.
- Originality: Your logo should be original and not copied or closely resemble existing trademarks or copyrighted material. It’s important to ensure that your logo does not infringe upon the intellectual property rights of others.
- Design Elements: The design elements of your logo, such as colors, shapes, symbols, or fonts, should contribute to its distinctiveness and help consumers identify your brand. A well-designed logo that is both creative and distinctive can enhance your chances of successful registration.
- Class of Goods or Services: When applying for a logo trademark, you must specify the class of goods or services associated with the logo. It’s important to accurately describe the goods or services that your logo represents.
- Logo Variations: If you have different versions or variations of your logo, you may consider trademarking each version separately to ensure broader protection. This can include variations with different color schemes or minor design modifications.
It’s advisable to work with a trademark attorney who can guide you through the trademark application process, conduct a thorough search to ensure the uniqueness of your logo, and assist in preparing and filing the application to maximize your chances of successful registration.
Can I trademark a color?
Yes, it is possible to trademark a color, but it can be more challenging compared to traditional trademarks such as words, logos, or symbols. In order to successfully register a color as a trademark, it must meet certain requirements and demonstrate that it has acquired distinctiveness or secondary meaning in the marketplace.
To establish trademark protection for a color, you generally need to demonstrate that the color has become associated with your specific goods or services and that consumers recognize it as a source identifier. This typically requires a showing of extensive use and promotion of the color in connection with your brand or product.
There are two main types of color trademarks:
- Single-Color Trademarks: These are trademarks that seek protection for a specific single color used in connection with goods or services. Examples of famous single-color trademarks include Tiffany & Co.’s distinctive blue color for jewelry boxes and UPS’s brown color for its delivery trucks.
- Color Combinations or Trade Dress: These trademarks seek protection for a combination of colors or the overall color scheme associated with a specific brand or product. This can include a unique arrangement of colors or a distinct color pattern.
It’s important to note that the distinctiveness and exclusivity of color trademarks can vary depending on the industry and the specific circumstances of the application. Generally, color trademarks are more likely to be granted for unique and non-functional color choices that have become strongly associated with a specific brand.
When considering trademarking a color, it is recommended to consult with a trademark attorney who can guide you through the application process, assess the distinctiveness of your color choice, and help you gather the necessary evidence to establish acquired distinctiveness in the marketplace.
Can I transfer my trademark to someone else?
Yes, trademarks can be transferred from one party to another. This transfer is typically referred to as an assignment. The assignment of a trademark involves the transfer of ownership rights from the current owner (assignor) to another party (assignee).
Here are some key points to consider regarding the transfer of a trademark:
- Trademark Assignment Agreement: The transfer of a trademark requires a written agreement between the assignor and assignee. This agreement, known as a trademark assignment agreement, outlines the terms and conditions of the transfer, including the rights being transferred, any restrictions or limitations, and any financial considerations involved.
- Recording the Assignment: To ensure the transfer of ownership is legally recognized, it is advisable to record the trademark assignment with the relevant trademark office. In the United States, for example, the assignment can be recorded with the United States Patent and Trademark Office (USPTO). Recording the assignment helps establish a clear chain of ownership and provides notice to the public.
- Goodwill and Associated Rights: When a trademark is assigned, the associated goodwill, which is the reputation and customer recognition associated with the mark, is also transferred. Other rights tied to the mark, such as licenses, domain names, and related intellectual property, can also be included in the assignment agreement.
- Licensing vs. Assignment: It’s important to note the distinction between an assignment and a license. While an assignment transfers full ownership rights to the assignee, a license grants permission to use the mark while the ownership remains with the licensor. Licensing arrangements allow the licensor to maintain control over the mark while permitting others to use it.
- Consult with a Trademark Attorney: When considering a trademark assignment, it is recommended to consult with a trademark attorney who can guide you through the legal process, ensure compliance with the necessary requirements, and help protect your rights throughout the assignment.
Can I license my trademark to others?
Yes, you can license your trademark to others. 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, while you retain ownership of the mark.
Here are some key points to consider regarding trademark licensing:
- Licensing Agreement: A trademark licensing agreement is a legally binding contract between the licensor and the licensee. This agreement outlines the terms and conditions of the license, including the scope of the license, quality control measures, duration, royalties or fees, and any limitations or restrictions on the use of the mark.
- Quality Control: As the trademark owner, it is important to maintain quality control over the goods or services associated with your mark. The licensing agreement should include provisions that allow you to monitor and enforce quality control standards to ensure that the licensed products or services maintain the reputation and distinctiveness of the trademark.
- Exclusive vs. Non-Exclusive Licenses: A license can be exclusive or non-exclusive. An exclusive license grants the licensee sole rights to use the mark within a defined territory or industry, while a non-exclusive license allows multiple licensees to use the mark simultaneously. The choice between exclusive and non-exclusive licensing depends on your business strategy and the level of control you wish to maintain over the mark.
- Termination and Renewal: The licensing agreement should include provisions for termination and renewal. It should specify the circumstances under which the agreement can be terminated and the process for renewing or extending the license.
- Consult with a Trademark Attorney: When entering into a trademark licensing agreement, it is advisable to consult with a trademark attorney who can help you draft the agreement, ensure compliance with legal requirements, and protect your rights as the licensor.
Trademark licensing can be a beneficial way to generate revenue, expand your brand presence, and leverage the value of your trademark. However, it’s important to carefully consider the terms of the licensing agreement and work with legal professionals to protect your trademark rights.
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 they are granted and enforced within the jurisdiction where the mark is registered.
If you want to protect your trademark in other countries, you will need to seek trademark registration in those specific jurisdictions. This typically involves filing separate trademark applications with the relevant trademark offices of each country or utilizing international treaties and agreements that facilitate the registration process, such as the Madrid Protocol or the European Union Trademark system.
It’s important to consider the international expansion plans for your business and strategically file trademark applications in countries where you intend to operate or where there may be a significant market for your goods or services. Working with a trademark attorney who has experience in international trademark registration can help you navigate the complexities of protecting your trademark globally.
Is there such a thing as an “International Trademark”?
While there is no concept of a single “International Trademark” that provides worldwide protection, there are international systems and agreements in place that simplify the process of filing trademark applications in multiple countries.
The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to file a single international application, known as an International Registration, and designate multiple countries where they seek protection. This system streamlines the process by allowing for a centralized filing and management of trademark applications across various jurisdictions.
Similarly, within the European Union, the European Union Trademark (EUTM), now known as the European Union Intellectual Property Office (EUIPO), provides a unified registration system that allows for trademark protection in all member states of the European Union with a single application.
While these systems offer streamlined processes for international trademark registration, it’s important to note that the protection granted is still specific to the countries or regions designated in the application. Each country has its own rules and regulations regarding trademark rights and enforcement.
It’s advisable to consult with a trademark attorney who can guide you through the international trademark registration process, assess the best strategies for protecting your mark in various jurisdictions, and assist in managing your global trademark portfolio.
What is a trademark office action?
A trademark office action is an official communication from the trademark office regarding your trademark application. It outlines any issues, objections, or requirements that need to be addressed before your application can proceed to registration.
There are two types of office actions:
- Non-substantive Office Action: This type of office action typically relates to procedural or administrative issues with your application. It may request clarification or correction of certain information, such as the identification of goods or services, the wording of the application, or the payment of fees. Non-substantive office actions are usually considered less complex and can often be resolved by submitting the requested information or making the necessary corrections.
- Substantive Office Action: A substantive office action raises substantive issues with your application, such as potential conflicts with existing trademarks or issues related to the distinctiveness or registrability of your mark. It may cite specific sections of trademark law or regulations to explain the grounds for refusal or objection. Substantive office actions require careful analysis and a well-crafted response to address the concerns raised by the examiner.
Receiving an office action does not necessarily mean your trademark application will be denied. It is an opportunity for you to respond and provide additional information, arguments, or evidence to overcome the objections or issues raised.
What should I do if I receive an office action on my trademark application?
If you receive an office action on your trademark application, it is important to carefully review the document and understand the issues raised by the trademark office. Here are some steps to take:
- Read the Office Action: Thoroughly read the office action to understand the specific issues or objections raised by the trademark examiner. Pay attention to the language used, the cited sections of law or regulations, and any specific requirements or deadlines mentioned.
- Seek Legal Advice: Consider consulting with a trademark attorney who can provide guidance and assist you in crafting a response. They can help assess the strength of the objections, evaluate potential strategies, and ensure that your response addresses the concerns effectively.
- Analyze the Grounds for Refusal: Evaluate the reasons for the refusal or objection. Determine whether you have a valid argument or evidence to overcome the issues raised. Assess the possibility of amending your application, providing additional evidence, or presenting legal arguments to support your case.
- Prepare a Well-Crafted Response: Craft a comprehensive and persuasive response to the office action. Address each point raised by the examiner and provide clear explanations, evidence, or legal arguments to support your position. Ensure that your response is accurate, professional, and follows the guidelines provided by the trademark office.
- Meet the Deadline: Office actions typically have response deadlines. Make sure to comply with the deadline provided in the office action to avoid abandonment or further complications with your application.
- Submit the Response: File your response with the trademark office in the specified manner. Follow the filing instructions and include any necessary supporting documents, amendments, or additional evidence.
Responding to an office action requires careful attention to detail and an understanding of trademark law and practice. Working with a trademark attorney can significantly increase your chances of successfully overcoming the objections and securing the registration of your trademark.
Will working with a trademark attorney increase the chances of my trademark application getting approved?
A recent study published by the University of North Carolina found that applications for trademarks were 50% more likely to be approved if submitted with the help of an attorney. The reason your application is more likely to be approved is because your lawyer understands the trademark process. First, your lawyer will conduct a clearance search to ensure that no other marks similar to yours are in the USPTO database. A lawyer will also ensure that your application will be completed accurately, reducing the likelihood of you having to respond to Office Actions or answering inquiries from the USPTO.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand and maintain its distinctiveness in the marketplace. Here are some steps you can take to enforce your trademark rights:
- Monitor for Infringement: Regularly monitor the marketplace for unauthorized use of your trademark. This can involve conducting online searches, monitoring social media platforms, and keeping an eye on industry publications or trade shows. You can also consider employing professional trademark watch services that provide ongoing monitoring and alert you to potential infringements.
- Document and Gather Evidence: Keep thorough records of your trademark use, including dates of first use, marketing materials, sales records, and any evidence that demonstrates the distinctiveness and reputation of your mark. This documentation can be crucial in enforcing your rights and proving the validity of your mark.
- Send Cease-and-Desist Letters: If you discover unauthorized use of your trademark, consider sending a cease-and-desist letter to the infringing party. The letter should clearly state your rights, provide evidence of your trademark registration or common law use, and demand that the infringer cease using the mark. Consult with a trademark attorney to ensure the letter is properly crafted and legally sound.
- Negotiate Settlements: In some cases, infringing parties may be willing to resolve the issue through negotiation. This could involve reaching a settlement agreement that includes discontinuing the infringing use, payment of damages or royalties, or other mutually agreed-upon terms. It’s advisable to involve a trademark attorney to guide you through the negotiation process and protect your interests.
- File a Lawsuit: If negotiations fail or the infringement persists, you may need to consider filing a lawsuit to enforce your trademark rights. This legal action can seek injunctive relief to stop the unauthorized use and potentially claim damages for any harm caused by the infringement. Engaging a skilled trademark attorney with litigation experience is crucial for navigating the legal process effectively.
Enforcing your trademark rights requires proactive monitoring, documentation, and decisive action when infringements occur. Working with a trademark attorney who specializes in trademark enforcement can provide valuable guidance and representation throughout the enforcement process.
I’ve already submitted my trademark application. Is it too late to hire an attorney?
It’s never too late to hire a trademark attorney. Even if you’ve already submitted your trademark application, an attorney can:
- Answer any questions or requests for more information from the USPTO.
- Monitor the marketplace to ensure that your trademark rights are not being infringed upon.
- Prosecute any instances of infringement in federal court.
- Submit trademark maintenance documents to the USPTO on your behalf.
- Devise a strategy to register other trademarks you may have.
Why Trademark Registration Matters for Rochester Businesses
Rochester, New York literally has something for everyone. Whether you enjoy nature, fine dining, festivals, shopping, wineries, or golf, Rochester has you covered. It’s no wonder that there are so many new businesses popping up in this exciting city.
Rochester business owners know how much work it takes to start a new venture. There’s product development, leasing space, marketing, signage, hiring staff, and more. The to-do list never seems to end. As a new business owner, it can be tempting to put trademark registration on hold while you take care of these other tasks. However, trademark registration should be the first item on your to-do list.
Imagine the following: Don is a retired carpenter and has been noticing an influx of new, young families buying old homes in the Rochester area. That gives him the idea to open up his own hardware store in the Washington Square neighborhood. He thinks that these new residents will appreciate having a local place to pick up supplies for their DIY projects.
Don finds a storefront to lease and gets to work. He calls his shop Hammer and Nail Hardware, and creates a business plan, orders signage for the store, interviews potential employees, and sets up a simple website. A friend of his asks if he’s going to trademark the name of his store, but Don says he’s way too busy. He may try to take care of that down the line.
Don opens his doors 3 months after signing the lease. His instincts are correct. Many of his customers are young families or couples who are fixing up their homes. Don enjoys meeting these new residents and giving them advice on their projects. He’s doing brisk business as well.
Unfortunately, Don’s good fortune is about to come to an end. One day, he receives a cease-and-desist letter in his mailbox. It turns out there’s a small hardware store chain that has a very similar name to Don’s shop. However, they own the trademark. That means they have every right to ask Don to close his doors and not reopen until he renames and rebrands his store.
Don now has to replace his marketing materials, signage, and everything else with the name of his store on it. Don’s not sure he can afford to do that. He may have to close permanently.
If Don had spoken to a trademark attorney before investing money into his store, this whole situation could have been avoided. All businesses need to protect their trademarks by submitting trademark applications as early in the process as possible.
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 Rochester and yet it can assist businesses from New York in registering a federal trademark because trademarks are governed under federal law.
Trademarks Services for Rochester Businesses
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Complete the Trademark Registration Form.
Our IP Attorneys will run a search of your trademark in the USPTO.
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We File the Application with the USPTO.