Winston-Salem, North Carolina Businesses Use Cohn Legal for Trademark Services
At Cohn Legal, PLLC our attorneys have the knowledge and expertise to deliver work of truly extraordinary quality to business owners in Winston-Salem, North Carolina. You can expect the attorneys of Cohn Legal Group to act as your legal consigliere, and provide you with the best possible legal advice about protecting your trademarks and intellectual property. Whether you need us from day one or you’re in the middle of existing negotiations, we’re here for you.
Top Questions Winston-Salem Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Winston-Salem, North Carolina, 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 Winston-Salem, North Carolina, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark?
A trademark is a type of intellectual property that helps distinguish and identify the source of goods or services provided by a specific individual, business, or organization. It can be in the form of a word, phrase, symbol, design, logo, or any combination of these elements. By registering a trademark, the owner gains exclusive rights to use the mark in connection with the goods or services it represents, and it also provides legal protection against unauthorized use by others.
The primary purpose of a trademark is to prevent consumer confusion and to protect the reputation and goodwill associated with a particular brand. When consumers see a registered trademark, they can easily identify the origin and quality of the product or service, which fosters trust and brand loyalty.
Trademarks can be invaluable assets for businesses, as they can become recognizable and synonymous with the company’s products or services. They also allow trademark owners to take legal action against infringers, providing a means to safeguard their brand’s integrity and reputation 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 both serve a similar purpose in identifying the source of goods or services.
A trademark is used to protect marks associated with tangible goods, such as physical products, merchandise, or commodities. On the other hand, a service mark is used to protect marks associated with services offered by a company or individual.
For instance, if a business is primarily engaged in selling smartphones, they would use a trademark to protect the name or logo of the smartphones they manufacture. On the contrary, if a company offers consulting services, they would use a service mark to protect their business name or logo, which identifies the services they provide.
In practical terms, the distinction between a trademark and a service mark is often minimal. Many countries, including the United States, use the term “trademark” to refer to both goods and services marks. Therefore, the process of obtaining protection and the legal implications are generally the same for both trademarks and service marks.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol are used to indicate the status of a trademark, but they carry different meanings.
The ® symbol is used to indicate a registered trademark. A registered trademark is one that has been officially registered with the appropriate government authority, such as the United States Patent and Trademark Office (USPTO) in the United States. The registration provides the trademark owner with enhanced legal protections and rights to enforce the trademark against infringers. Only trademarks that have completed the registration process can use the ® symbol.
On the other hand, the TM symbol is used to indicate an unregistered trademark. This symbol is commonly used to assert a claim of ownership over a mark that is being used in connection with goods or services but has not yet completed the formal registration process. While the TM symbol does not provide the same level of legal protection as a registered trademark, it can still help establish the owner’s rights to the mark and discourage others from using it without authorization.
Using the ® symbol without proper registration is illegal and can result in penalties and fines. Therefore, it is essential for trademark owners to wait until their mark is officially registered before using the ® symbol to denote their registered trademark status.
What are the benefits of registering my trademark?
Registering your trademark with the USPTO provides you with several advantages including:
- Public notice that you own the mark
- A legal presumption that you own the trademark and have exclusive rights to it
- The ability to file a lawsuit in federal court if someone infringes on your mark
- The ability to get your mark registered in foreign countries if desired
- The right to use the ® symbol with your mark
- A listing in the USPTO’s databases1
How can I determine if a trademark is available?
Determining the availability of a trademark is a crucial step before proceeding with the registration process. Conducting a comprehensive trademark search is essential to ensure that the desired mark is not already in use by another company or individual for similar goods or services. Here are some steps to help you determine the availability of a trademark:
- Online Search: Begin by conducting a preliminary search on search engines and social media platforms to check if the mark is already in use. This can give you a basic idea, but it’s not comprehensive enough.
- USPTO Trademark Database: For more thorough research in the United States, you should search the United States Patent and Trademark Office (USPTO) trademark database. This database contains both registered and pending trademark applications. Search for similar names, phrases, or logos that may conflict with your proposed mark.
- Trademark Databases in Other Countries: If you plan to use the mark internationally, it’s essential to check trademark databases in other relevant countries.
- Hire a Trademark Attorney or Search Firm: Trademark attorneys and professional search firms can conduct more comprehensive searches using specialized databases and resources. They can help identify potential conflicts that a regular online search might miss.
- Consider Similar Industries: Look beyond identical matches and consider marks used in related industries that might cause consumer confusion. Trademarks do not need to be identical to conflict; they only need to be similar enough to cause confusion.
- Search Common Law Trademarks: Not all trademarks are registered. Some may have acquired common law rights through use. These common law rights can still be enforced in specific geographic areas.
- Assess Risk Tolerance: If you find similar marks during your search, consider the level of risk you’re willing to take. Some marks might be used in unrelated industries or geographically distant regions, reducing the likelihood of confusion.
Remember that even if your desired mark appears available after your search, the final determination of trademark availability lies with the examining authority (e.g., USPTO) during the registration process.
Will the USPTO conduct a trademark search for me?
The USPTO will conduct a trademark search, but not for your benefit. After you submit your trademark application, an examining attorney at the USPTO will search their databases to see if there is an existing trademark that’s similar to your desired mark. If they find a mark that’s confusingly similar to your desired mark, then they will reject your application and the application fee will not be refunded.
It’s always best to conduct your own trademark search prior to submitting your trademark application so you can be absolutely sure that it’s available.
Do I need to sell a product or service to obtain a registered trademark?
No, you do not necessarily need to be currently selling a product or service to apply for a registered trademark. In many jurisdictions, including the United States, you can apply for a trademark based on “intent to use” rather than actual use in commerce.
By filing an “intent to use” application, you reserve the right to use the mark in connection with the specified goods or services once you start offering them in the marketplace. This allows you to secure priority over others who may attempt to use a similar mark during the period between filing the application and actual use in commerce.
Once the application is approved, you will need to file a “Statement of Use” to demonstrate that you have started using the mark in commerce. This is usually done by providing evidence of the mark’s use, such as photographs of the product with the mark on it or advertisements featuring the mark in connection with the services.
Keep in mind that you will need to use the mark in commerce within a certain time frame (usually six months to three years, depending on the jurisdiction) after receiving the approval of your “intent to use” application. Failure to do so may result in the abandonment of your trademark application.
Filing an “intent to use” application can be advantageous if you have not yet launched your product or service but want to secure exclusive rights to the mark before entering the market. It provides you with a certain level of protection while you finalize your business plans and marketing strategies.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can obtain a federal trademark even if you provide your services only locally. In the United States, the basis for trademark registration can be either “use in commerce” or “intent to use.”
If you are already using your trademark in connection with your services in the local area and can demonstrate that use, you can apply for registration based on “use in commerce.” In this case, you will need to submit evidence showing how you are using the mark to provide your services in the specific geographic area where you operate.
On the other hand, if you have not yet used the trademark but have a bona fide intention to use it in the future, you can apply for registration based on “intent to use.” This is particularly useful if you plan to expand your services beyond the local area or if you want to secure exclusive rights to the mark before launching your services in other regions.
Registering your trademark with the United States Patent and Trademark Office (USPTO) provides several benefits, regardless of whether your services are local or national:
- Nationwide Protection: Federal registration grants you protection throughout the entire United States, even if you initially only offer services in a specific locality.
- Priority and Ownership Rights: Trademark registration establishes your priority date, giving you a legal presumption of ownership and the exclusive right to use the mark nationwide.
- Enhanced Enforcement: Registered trademarks carry stronger legal protection, making it easier to enforce your rights against potential infringers.
- Deterrence: A federally registered trademark acts as a deterrent to others who might consider using a similar mark for related services.
- Brand Reputation: Having a registered trademark can enhance your brand’s reputation and credibility, potentially attracting more clients or customers.
- International Recognition: A federal trademark registration can be beneficial if you plan to expand your services into international markets in the future.
It is important to note that while a federal trademark provides broader protection, you must continue to use the mark in commerce to maintain and renew the registration. Failure to use the mark or demonstrate sufficient use may result in the cancellation of the registration.
If you are unsure about the scope of protection you need or whether to apply for a federal or state trademark, it’s advisable to consult with a trademark attorney who can guide you through the process and provide personalized advice based on your specific business needs.
What should I register first: the name of my business or my brand logo?
Deciding whether to register the name of your business or your brand logo first depends on several factors and your business’s overall branding strategy. Both elements are crucial for brand identity and recognition, and each has its unique advantages when it comes to trademark registration.
- Registering the Business Name (Word Mark): Registering the name of your business as a word mark provides protection for the textual representation of your brand. This means that the specific wording, spelling, and arrangement of the business name are protected. It offers flexibility as you can use the name with different fonts and styles while maintaining the same protection. However, it does not cover any particular design or graphical element associated with the name.
- Registering the Brand Logo (Design Mark): Registering your brand logo provides protection for the visual design or graphical representation of your brand. It covers the specific combination of colors, shapes, images, and fonts that make up your logo. This option is ideal if you have a unique and visually distinctive logo that you want to safeguard. However, it may not protect the use of the business name without the specific design elements.
- Combining Both (Word and Design Mark): If your brand logo incorporates the name of your business in a unique and stylized manner, it may be beneficial to consider both a word mark and a design mark. This will protect the individual components separately and the combination as a whole. It offers the broadest level of protection for both the textual and graphical elements of your brand.
- Budget and Resources: Registering trademarks involves fees and resources, so consider your budget and priorities. If you can only register one at the moment, assess which element is more critical for your business’s overall branding and protection strategy.
- Brand Strategy: Think about your long-term brand strategy and expansion plans. If you foresee changes in your logo design but plan to keep the same business name, focusing on the word mark might be a better option. Conversely, if your logo is central to your brand’s identity and you are unlikely to change it significantly, prioritizing the design mark could be more beneficial.
Ultimately, a comprehensive trademark strategy should consider both the name and logo of your business. If possible, it is advisable to register both elements to secure maximum protection for your brand identity. Additionally, consulting with a trademark attorney can help you navigate the registration process, identify potential risks, and make informed decisions regarding your trademark applications.
Am I required to hire a trademark attorney?
If you’re an applicant living outside of the United States or its territories, then you are required to hire a U.S.-licensed attorney to represent you before the USPTO.
If you’re an applicant living in the United States or its territories, then you don’t need a trademark attorney. You can represent yourself in front of the USPTO. However, the USPTO strongly encourages that all trademark applicants consult with a trademark attorney who can help ensure the trademark registration process goes as smoothly as possible.
What is TEAS?
TEAS stands for the “Trademark Electronic Application System,” and it is an online platform provided by the United States Patent and Trademark Office (USPTO) to facilitate the electronic filing of trademark applications and related documents. TEAS is designed to streamline the trademark registration process and make it more accessible and efficient for applicants.
The TEAS system offers different application forms to accommodate various types of trademark filings. Here are the three main types of TEAS application forms:
- TEAS Plus: TEAS Plus is a streamlined and cost-effective application option available to applicants who meet specific requirements. To use TEAS Plus, applicants must agree to certain conditions, such as providing a detailed description of the goods or services that strictly follows the USPTO’s Acceptable Identification of Goods and Services Manual. The filing fee for TEAS Plus is lower than other options, but it is non-refundable, even if the application is refused.
- TEAS Reduced Fee (TEAS RF): This application option is available to applicants who are not eligible for TEAS Plus or choose not to meet its requirements. While the filing fee is higher than TEAS Plus, it is still lower than the fee for the regular TEAS option.
- TEAS Regular: The TEAS Regular option allows more flexibility in the description of goods and services but comes with a higher filing fee compared to TEAS Plus and TEAS RF.
Using TEAS offers several advantages over traditional paper filing, including faster processing times, real-time validation of information, immediate filing date assignment, and the ability to track the status of the application online. Additionally, electronic filing reduces paperwork and mail processing, contributing to a more environmentally friendly and cost-effective process.
When using TEAS, applicants can submit the following trademark-related documents:
– New trademark applications (TEAS Plus, TEAS RF, or TEAS Regular)
– Amendments to the application
– Responses to office actions
– Statements of use
– Extension requests for statements of use
– Renewals of trademark registrations
It is essential to complete the TEAS application accurately and provide all required information to avoid potential delays or issues with the application. The USPTO offers resources, guides, and video tutorials to assist applicants in using the TEAS system effectively.
Using TEAS for trademark registration provides a convenient and efficient way to protect your brand and gain exclusive rights to your mark for the goods and services you provide.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on several factors, including the type of application, the complexity of the mark, and the backlog of applications at the United States Patent and Trademark Office (USPTO) or the relevant trademark office in other countries. On average, the trademark application process in the United States can take anywhere from several months to more than a year to complete. Here is a breakdown of the different stages of the application process:
- Initial Application Filing: The first step is submitting the trademark application through the online Trademark Electronic Application System (TEAS) or via paper filing. Once the application is submitted, it receives a filing date.
- Examination Phase: After filing, the application undergoes examination by a trademark examiner at the USPTO. The examiner reviews the application to ensure compliance with formal requirements and assesses whether the mark is eligible for registration. The examination phase typically takes a few months.
- Office Actions: If the trademark examiner identifies any issues with the application, they will issue an office action, which is a formal letter detailing the objections or requirements. The applicant then has a set period (usually six months) to respond to the office action and address any concerns.
- Publication for Opposition: If the trademark application survives examination and any objections are overcome, it is published in the Official Gazette, which is an online publication by the USPTO. This publication allows the public and other trademark owners to review the application and file oppositions if they believe the mark may cause confusion with their own marks.
- Opposition Proceedings: If someone files an opposition, it initiates a legal proceeding where the parties can argue their case before the Trademark Trial and Appeal Board (TTAB). Opposition proceedings can significantly extend the overall application process.
- Registration: If there are no oppositions or if the opposition is resolved in favor of the applicant, the mark proceeds to registration. The USPTO issues a Certificate of Registration, and the trademark becomes officially registered.
It is important to note that the timeline for the trademark application process can vary based on the individual circumstances of each application. Delays may occur if the application encounters complex legal issues, if the applicant fails to respond to office actions promptly, or if there is a high volume of applications at the USPTO.
To help expedite the process, applicants can consider using TEAS Plus or TEAS RF application options, which often have shorter processing times compared to TEAS Regular applications. Additionally, engaging the services of a trademark attorney can ensure that the application is prepared correctly, potentially reducing the risk of delays and improving the chances of successful registration.
How long does a trademark last?
Unlike some forms of intellectual property, such as patents, which have a limited term of protection, trademarks can potentially last indefinitely, as long as certain conditions are met. Trademarks are protected for as long as they are actively used in commerce and continue to be renewed at regular intervals.
In the United States, once a trademark is registered with the United States Patent and Trademark Office (USPTO), it initially receives protection for ten years from the date of registration. However, to maintain the trademark’s active status and prevent it from being canceled or abandoned, the owner must file a renewal application between the fifth and sixth year after registration and then again at each successive ten-year interval.
The renewal application process involves verifying that the trademark is still in use for the goods or services listed in the registration. The owner must also pay the required renewal fee. As long as the owner continues to actively use the trademark in commerce and properly renews it at the specified intervals, the trademark can remain in force indefinitely.
It is essential to keep track of the renewal deadlines because failing to file a renewal application in a timely manner can lead to the cancellation of the trademark registration. Additionally, if a trademark is not used in commerce for an extended period (usually three consecutive years in the U.S.), it may become vulnerable to cancellation due to non-use.
In some countries, such as the European Union, trademarks are initially registered for ten years, and subsequent renewals are generally required every ten years as well. The specific renewal requirements and procedures may vary depending on the country’s trademark laws.
It is crucial for trademark owners to be diligent in maintaining and protecting their trademarks throughout their active use. A registered trademark provides significant benefits, including exclusive rights to the mark, legal recourse against infringers, and enhanced brand recognition. Regularly monitoring and enforcing the use of the trademark can help protect its distinctiveness and value in the marketplace.
For businesses and individuals seeking long-term protection for their brands, registering a trademark and ensuring proper renewal and maintenance can provide enduring legal protection and help build and safeguard brand identity over time.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it, and doing so establishes what is known as “common law” rights. Common law trademark rights are based on actual use of the mark in commerce to identify your goods or services. These rights arise automatically upon the first use of the mark in connection with your business activities in a specific geographic area.
Using a trademark without registration does provide you with some level of protection, but it is limited compared to the benefits of federal trademark registration. Common law rights generally offer protection only in the specific geographic area where you are actively using the mark. This means that others in different regions could potentially use the same or similar mark for similar goods or services without infringing on your rights.
Registering a trademark with the United States Patent and Trademark Office (USPTO) or the trademark office in other countries provides several advantages over common law rights:
- Nationwide Protection: Federal registration grants you exclusive rights to use the mark nationwide, regardless of where you are currently using it.
- Public Notice: Registration puts the public on notice of your claim to the mark, making it more difficult for others to claim they were unaware of your rights.
- Presumption of Ownership: Registration creates a legal presumption of ownership and validity of the mark, making it easier to enforce your rights against potential infringers.
- Enhanced Remedies: Registered trademarks provide more substantial remedies in case of infringement, such as the possibility of recovering statutory damages and attorney’s fees.
- Prevent Importation of Counterfeit Goods: Federal registration can help prevent the importation of counterfeit goods bearing your mark.
- Building Brand Value: A registered trademark can add significant value to your brand and business, especially in the eyes of investors and potential buyers.
While registration provides significant advantages, some businesses may choose to rely on common law rights initially, especially if they are operating on a limited scale or have budget constraints. However, as the business grows or expands into other regions, federal registration becomes essential to secure broader protection and prevent potential conflicts with other businesses using similar marks.
It’s crucial to conduct a comprehensive trademark search before using a mark to ensure it is not already in use by another party. Additionally, seeking legal advice from a trademark attorney can help you navigate the complexities of trademark law and make informed decisions about registration based on your business goals and branding strategy.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is highly recommended, especially when navigating the complexities of trademark law and the registration process. A trademark lawyer can provide valuable expertise and guidance at various stages of your trademark journey, helping to ensure the best possible protection for your brand. Here are some key situations when you should consider hiring a trademark lawyer:
- Trademark Search and Clearance: Before adopting a new trademark, it’s crucial to conduct a comprehensive search to ensure the mark is available and does not infringe on existing trademarks. A trademark lawyer can perform a thorough search and analyze the results, helping you avoid potential conflicts and costly legal disputes.
- Trademark Application Filing: The process of preparing and filing a trademark application requires attention to detail and knowledge of the specific requirements of the trademark office. A trademark lawyer can assist with the proper preparation and submission of the application, increasing the chances of successful registration.
- Responding to Office Actions: If the trademark examiner issues an office action with objections or requirements, a trademark lawyer can help you craft a well-reasoned response to address the issues effectively and overcome any potential barriers to registration.
- Opposition Proceedings: If your trademark application faces opposition from third parties, a trademark lawyer can represent you in the opposition proceedings before the Trademark Trial and Appeal Board (TTAB) and advocate for your rights.
- Trademark Infringement Issues: If you believe someone is using a mark that infringes on your trademark rights or if you receive a cease-and-desist letter alleging infringement, a trademark lawyer can assess the situation, advise you on your rights and options, and represent you in enforcing your trademark rights or defending against infringement claims.
- Maintenance and Renewals: Trademark registrations require periodic maintenance, including renewal filings. A trademark lawyer can ensure that you meet all necessary deadlines and continue to protect your trademark rights.
- Licensing and Assignment: If you plan to license your trademark to others or transfer ownership through assignment, a trademark lawyer can help draft the necessary agreements and ensure your rights are protected during the process.
- International Trademark Protection: If you are considering expanding your business into international markets, a trademark lawyer with experience in international trademark law can assist with the complex process of seeking protection in other countries.
Working with a trademark lawyer provides you with professional legal advice tailored to your specific circumstances. They can help you make informed decisions to safeguard your brand, navigate potential challenges, and maximize the value of your trademarks. Ultimately, engaging a trademark lawyer can save you time, money, and potential legal headaches down the road.
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. The United States Patent and Trademark Office (USPTO) and other trademark offices require applicants to submit a specimen as evidence of the mark’s actual use in connection with the goods or services listed in the application.
The purpose of providing a specimen is to demonstrate to the examining authority that the mark is being used as a source identifier for the claimed goods or services and is not merely an idea or concept without actual commercial use.
The acceptable format and requirements for a specimen can vary depending on whether the mark is used for goods or services:
- Specimens for Goods: For trademarks used with tangible products, acceptable specimens may include labels, tags, packaging, or containers bearing the mark, as well as photographs showing the mark displayed on the actual goods or their packaging at the point of sale.
- Specimens for Services: For trademarks used to identify services, specimens may include advertising materials, brochures, website screenshots showing the mark used in connection with the services, or other promotional materials.
It’s essential that the specimen reflects the actual use of the mark and provides a clear link between the mark and the goods or services being offered. The specimen must also show the mark in the same manner as it was presented in the trademark application.
For online services or digital products, the USPTO generally accepts website screenshots or printouts showing the mark displayed in connection with the services, as well as other electronic samples of the services offered.
Submitting an inadequate or incorrect specimen can lead to delays in the application process or even the refusal of the trademark. Therefore, it is crucial to carefully follow the USPTO’s guidelines for submitting specimens and provide clear and accurate evidence of the mark’s use in commerce.
It’s worth noting that specimens are typically required for both initial trademark applications and for statements of use in “intent to use” applications. After registration, trademark owners must also continue to submit specimens during renewal filings to demonstrate continued use of the mark in commerce.
Working with a trademark lawyer can be beneficial when preparing and submitting specimens, as they can ensure that the specimens meet the necessary requirements and increase the chances of a successful trademark registration.
Can I request an expedited approval of my trademark registration?
Yes, in certain situations, you can request an expedited or accelerated examination of your trademark application. The United States Patent and Trademark Office (USPTO) offers an option known as “TEAS Plus with a Petition to Make Special” to expedite the examination process under specific circumstances.
To qualify for expedited examination, your application must meet one of the following criteria:
- Infringement Lawsuit: If you are already involved in a trademark infringement lawsuit, you may request expedited examination to help resolve the dispute more efficiently.
- Foreign Registration: If you have obtained a registration for the same mark in another country that is a party to an international treaty with the United States, you may request expedited examination based on this foreign registration.
- Senior Citizens: If you are 65 years of age or older and the mark is used in connection with the applicant’s own products or services, you may be eligible for expedited examination.
- Safety or Health Emergency: If the mark is related to products or services that are critical to public safety or health, you may request expedited examination.
- Special Circumstances: In certain other exceptional circumstances, the USPTO may consider granting expedited examination at its discretion.
To request expedited examination, you need to submit the regular TEAS Plus application along with a separate “Petition to Make Special” explaining the basis for the expedited request. There may be additional fees associated with the petition.
It’s important to note that expedited examination does not guarantee immediate approval of your trademark application. While it can speed up the initial review process, the application will still undergo substantive examination by the trademark examiner, and all usual requirements for registration must be met.
For most trademark applicants, standard processing times apply, and the examination process can take several months to complete, depending on the complexity of the application and any issues that may arise during examination.
Before considering an expedited request, it is advisable to consult with a trademark attorney to assess whether your application qualifies for expedited examination and to explore the potential benefits and drawbacks of pursuing expedited processing based on your specific situation.
Can I trademark a phrase?
Yes, you can trademark a phrase under certain conditions. Phrases, slogans, catchphrases, and taglines can be eligible for trademark protection if they meet the requirements for distinctiveness and are used to identify and distinguish your goods or services from those of others in the marketplace.
To successfully trademark a phrase, it must satisfy the following criteria:
- Distinctiveness: The phrase must be distinctive and not merely descriptive or generic. Distinctiveness is a crucial factor in trademark law, as it helps consumers identify the source of the goods or services associated with the phrase. Fanciful, arbitrary, or suggestive phrases are generally more likely to receive trademark protection compared to descriptive or generic ones.
– Fanciful: Invented terms with no existing meaning, such as “Xerox” for copiers.
– Arbitrary: Common words used in an unrelated context, like “Apple” for computers.
– Suggestive: Phrases that hint at the nature of the goods or services but require some imagination to understand the association.
- Use in Commerce: To obtain a registered trademark, you must use the phrase in commerce in connection with the goods or services specified in the application. This means that the phrase should be associated with your business and actively used to identify and promote your products or services.
- Distinctive Design or Presentation: If the phrase is presented in a stylized or distinctive manner, the design or presentation may also be eligible for trademark protection. In such cases, both the phrase and the design may be protected under a single trademark registration.
- Not Confusingly Similar to Existing Trademarks: The phrase must not be confusingly similar to any existing trademarks. A trademark search is essential to ensure that your proposed phrase does not infringe on someone else’s rights.
Once you have confirmed that your phrase meets these requirements, you can proceed with the trademark application process. This involves filing a trademark application with the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States.
It’s important to note that trademark protection for a phrase is specific to its use in connection with the goods or services listed in the application. If you want to use the phrase for different products or services, you may need to file additional trademark applications to cover those classes.
To increase the likelihood of a successful application, consider consulting with a trademark attorney. They can assist with the application process, conduct a comprehensive trademark search, and provide guidance on protecting your brand effectively.
Can I trademark a logo?
Yes, you can trademark a logo, and doing so provides essential legal protection for the visual design or graphical representation of your brand. Registering a logo as a trademark helps establish your exclusive rights to use the logo in connection with the goods or services specified in the application.
To successfully trademark a logo, you need to consider the following key points:
- Distinctiveness: Like with phrases, the distinctiveness of the logo is critical for obtaining trademark protection. A logo that is unique, creative, and visually distinctive is more likely to be eligible for trademark registration. Logos that are generic or merely descriptive are generally not eligible for trademark protection.
- Use in Commerce: To apply for a trademark, you must demonstrate that you are actively using the logo in commerce in connection with the specific goods or services listed in the application. Actual use of the logo is essential for obtaining a registered trademark.
- Scope of Protection: The protection provided by a logo trademark extends to the specific design elements of the logo as filed in the application. This includes the colors, shapes, fonts, and any other visual elements that make up the logo. If you make changes to the logo in the future, you may need to file a new trademark application to cover the updated design.
- Representation of the Logo: To apply for a logo trademark, you must provide a clear and accurate representation of the logo in the application. This can be a digital image or a drawing that accurately depicts the design elements of the logo.
- Related Goods or Services: When filing a logo trademark application, you must specify the goods or services with which the logo is used. The protection provided by the trademark is limited to those specified goods or services.
- Trademark Search: Before applying for a logo trademark, it’s essential to conduct a comprehensive trademark search to ensure that your logo does not infringe on existing trademarks. This search helps identify potential conflicts and allows you to make informed decisions about the registrability of your logo.
Once you have confirmed that your logo meets the necessary requirements for trademark protection and have conducted a trademark search, you can proceed with the application process. This involves submitting the trademark application to the relevant trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States.
Working with a trademark attorney can be beneficial in the logo trademark process. They can help ensure that the application is accurately prepared, address any legal issues that may arise, and provide guidance on protecting your logo and brand effectively.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark for a color is more challenging than trademarking words, phrases, or logos. To successfully register a color as a trademark, you must demonstrate that the color has acquired “secondary meaning” in the minds of consumers, indicating a specific source of goods or services.
Here are some key considerations for trademarking a color:
- Distinctiveness: Like any other trademark, the color you want to trademark must be distinctive and not functional or essential to the product or service. It should serve as a unique identifier of the source of the goods or services.
- Secondary Meaning: The most significant hurdle in trademarking a color is proving that the color has acquired secondary meaning. Secondary meaning means that consumers associate the color specifically with your brand or product, rather than just the product itself. This association must result from extensive and consistent use of the color over time.
- Evidence of Use: To support your trademark application, you need to provide substantial evidence of how the color has been used in commerce and how consumers have come to identify the color with your brand.
- Limited Protection: If successful, a color trademark provides protection for the specific use of the color in connection with the specified goods or services. It does not give you exclusive rights to use that color in all contexts, nor does it prevent others from using the color in different industries or for different purposes.
- Trade Dress: Sometimes, a color can be protected as part of the trade dress of a product. Trade dress refers to the overall visual appearance and packaging of a product, which can include the use of a specific color in combination with other design elements. Trade dress protection requires a showing of non-functionality and distinctiveness, similar to color trademarks.
Famous examples of color trademarks include the distinct “Tiffany Blue” color used by Tiffany & Co. for their jewelry boxes and the specific shade of brown used by UPS for their delivery trucks and uniforms.
It’s important to note that trademarking a color can be complex, and the success of the application relies heavily on the strength of the evidence provided. Before pursuing a color trademark, it’s advisable to consult with a trademark attorney who can evaluate the distinctiveness and strength of your case 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 known as trademark assignment. Trademark assignment involves the transfer of ownership of the trademark rights from the current owner (assignor) to another party (assignee). The assignment must be recorded with the relevant trademark office to be legally effective.
Here are the key points to consider when transferring a trademark:
- Written Agreement: A trademark assignment must be documented in writing through a formal agreement between the assignor and the assignee. This agreement should clearly state the details of the transfer, including the specific trademark being assigned, the rights being transferred, and any relevant terms and conditions.
- Goodwill and Assets: In many jurisdictions, including the United States, a trademark assignment typically includes the transfer of both the trademark and the associated goodwill of the business. Goodwill refers to the reputation and value that the trademark holds in the minds of consumers.
- Recordation: To make the transfer legally effective against third parties, the trademark assignment should be recorded with the appropriate trademark office. In the United States, trademark assignments are recorded with the United States Patent and Trademark Office (USPTO). Other countries have similar procedures for recording trademark assignments.
- Validity of the Assignment: For a trademark assignment to be valid, the trademark must be in use or registered with the relevant trademark office. Additionally, the assignment must comply with the laws and regulations of the country where the trademark is registered.
- International Assignments: If the trademark is registered in multiple countries, the assignment process may differ from country to country. It’s essential to comply with the specific requirements of each country’s trademark office.
- Impact on Licensing: If the trademark is currently licensed to others, the assignment may affect the licensing agreements. It is crucial to review any existing licensing contracts and seek legal advice to ensure a smooth transfer of rights.
It is strongly recommended to work with a trademark attorney when dealing with trademark assignments. They can help draft the assignment agreement, ensure compliance with all legal requirements, and guide you through the recordation process to protect your rights and interests.
Transferring a trademark can be a complex process, but with proper legal assistance and careful attention to the requirements, you can smoothly transfer ownership and ensure the continued protection and value of the trademark.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark in connection with specific goods or services. The licensing agreement outlines the terms and conditions under which the licensee can use the trademark.
Here are the key points to consider when licensing your trademark:
- Written Agreement: A trademark licensing agreement must be in writing and should clearly define the rights and obligations of both the licensor and the licensee. The agreement should specify the scope of the license, including the specific goods or services covered, the duration of the license, and any territorial restrictions.
- Quality Control: As the trademark owner, you have a responsibility to maintain the quality and reputation associated with your trademark. Therefore, the licensing agreement should include provisions for quality control, ensuring that the licensee meets certain standards when using the trademark.
- Royalties or Fees: The licensing agreement may include provisions for royalties or fees that the licensee must pay to the licensor in exchange for using the trademark. Royalties can be based on a percentage of sales, a flat fee, or other agreed-upon arrangements.
- Termination Clause: The agreement should include a termination clause that specifies the circumstances under which the license may be terminated, such as for breach of the agreement or failure to meet quality standards.
- Recordation: In some countries, it may be beneficial or required to record the trademark licensing agreement with the relevant trademark office. This can help establish the licensor’s rights and avoid potential disputes.
- Approval Rights: The licensor may retain approval rights over certain aspects of the licensee’s use of the trademark, such as advertising materials or packaging design. This helps maintain consistency and ensures that the trademark is used in a manner consistent with the licensor’s brand identity.
- Geographical Limitations: The licensing agreement can specify whether the license is limited to a particular geographic area or if it grants the licensee the right to use the trademark globally.
Licensing your trademark can be a strategic way to expand your brand’s reach and generate additional revenue. However, it also involves legal complexities and potential risks, which is why it’s crucial to work with a trademark attorney to draft a comprehensive licensing agreement that protects your rights and interests.
By carefully structuring the licensing agreement and conducting due diligence on potential licensees, you can ensure that your trademark is used in a manner that upholds its reputation and maintains its distinctiveness in the marketplace.
If my trademark is registered in the United States, is it protected in other countries as well?
No, registering your trademark in the United States does not automatically provide protection in other countries. Trademark rights are territorial, which means that they are limited to the country or region where the mark is registered. Therefore, a trademark registered in the United States is only protected within the borders of the United States.
If you wish to protect your trademark in other countries, you must apply for trademark registration in each individual country or region where you seek protection. This involves complying with the specific requirements and procedures of each country’s trademark office or international registration system, if available.
There are a few ways to seek international trademark protection:
- Madrid System (International Trademark Registration): The Madrid System is an international treaty that allows trademark owners to seek protection in multiple member countries through a single application. By filing an international application with the World Intellectual Property Organization (WIPO) under the Madrid System, you can designate the member countries where you want protection. This simplifies the process and reduces costs compared to filing separate applications in each country.
- Regional Trademark Systems: Some regions, such as the European Union, have regional trademark systems that allow applicants to obtain protection in multiple countries within that region with a single application.
- National Applications: Alternatively, you can file separate trademark applications in each country where you wish to seek protection. This approach is more time-consuming and expensive but may be necessary for countries that are not part of international or regional trademark treaties.
When seeking international trademark protection, it is essential to consider factors such as the countries where you conduct or plan to conduct business, the level of protection needed in each market, and your budget for trademark registration.
International trademark protection is crucial for businesses that operate in global markets or plan to expand their activities internationally. It helps safeguard your brand from unauthorized use by others and strengthens your ability to enforce your trademark rights in different jurisdictions.
Working with a trademark attorney with experience in international trademark law can be highly beneficial, as they can guide you through the process, assess the best strategy for your specific situation, and help you navigate the complexities of international trademark registration.
Is there such a thing as an “International Trademark”?
While there is no single “International Trademark” that provides blanket protection worldwide, there are international treaties and systems that facilitate the process of obtaining trademark protection in multiple countries through a centralized procedure. These systems aim to simplify and streamline the international trademark registration process for businesses seeking protection in multiple countries.
The two primary international systems for trademark registration are:
- Madrid System (Madrid Protocol): The Madrid System is an international treaty administered by the World Intellectual Property Organization (WIPO). It allows trademark owners to seek protection in multiple member countries by filing a single international application. This application can be based on an existing national or regional trademark application or registration, such as in the United States or the European Union. Through the Madrid System, trademark owners can designate specific member countries where they wish to seek protection. The WIPO then forwards the application to each designated country for examination and registration. This system simplifies the process and reduces costs compared to filing separate applications in each country.
- European Union Trademark (EUTM): The European Union Trademark, now known as the European Union Intellectual Property Office (EUIPO), allows trademark owners to obtain protection in all 27 European Union member states through a single application. This system provides a unified trademark registration that covers a significant market of over 445 million consumers.
It’s important to understand that while these international systems streamline the application process, they do not create a single “International Trademark” that provides protection worldwide. Trademark rights are still territorial, and protection is limited to the countries or regions where the trademark is registered.
Additionally, there are other regional trademark systems in specific parts of the world, such as the African Regional Intellectual Property Organization (ARIPO) and the Eurasian Patent Organization (EAPO), which offer regional trademark registration options for certain groups of countries.
For countries that are not part of these international or regional treaties, businesses must pursue trademark protection through individual national applications in each desired country.
When considering international trademark registration, it is crucial to conduct a thorough trademark search and develop a comprehensive strategy based on the countries where you operate or plan to expand. Working with a trademark attorney experienced in international trademark law can be highly beneficial in navigating the complexities of global trademark protection and ensuring effective brand protection in the international marketplace.
What is a trademark office action?
A trademark office action is an official written communication from the trademark examining attorney at the relevant trademark office, such as the United States Patent and Trademark Office (USPTO), to the applicant of a trademark application. The purpose of the office action is to inform the applicant of any issues or deficiencies found in the application that need to be addressed before the trademark can proceed to registration.
There are two main types of trademark office actions:
- Non-Substantive Office Action: This type of office action typically addresses administrative or procedural issues in the application. Common non-substantive issues include missing or incorrect information in the application, improper classification of goods or services, or issues with the payment of fees. Non-substantive office actions usually do not affect the underlying eligibility of the trademark for registration.
- Substantive Office Action: A substantive office action raises substantive issues regarding the registrability of the trademark. The examining attorney reviews the application to determine if the proposed mark meets the legal requirements for registration. Substantive issues may include the mark being too descriptive or generic, likelihood of confusion with an existing registered mark, lack of distinctiveness, or failure to provide sufficient evidence of use.
The office action will provide specific reasons for the refusal or request for additional information and will give the applicant a deadline (usually six months) to respond. If the applicant fails to respond within the specified time frame, the application may be deemed abandoned, and the applicant would need to start the process again.
Responding to a trademark office action is a critical step in the trademark registration process. If the issues raised in the office action are not adequately addressed, the application may be refused, and the applicant may lose the opportunity to obtain federal trademark protection.
To respond to an office action, the applicant can make necessary amendments to the application, provide additional evidence or arguments, or seek legal advice from a trademark attorney to present a persuasive response to the examining attorney’s concerns.
If the applicant disagrees with the examining attorney’s decision, they can file an appeal with the trademark office or request reconsideration of the decision.
Navigating the trademark registration process and responding to office actions can be complex and requires a thorough understanding of trademark law. Consulting with a trademark attorney can be invaluable in ensuring that your trademark application moves forward smoothly and increases the likelihood of successful registration.
What should I do if I receive an office action on my trademark application?
Receiving an office action on your trademark application is a common occurrence, and it is essential to handle it promptly and effectively to ensure the best chance of successful registration. Here are the steps you should take if you receive an office action:
- Carefully Review the Office Action: Read the office action thoroughly to understand the specific issues or concerns raised by the trademark examining attorney. Identify the reasons for refusal or any requirements for additional information.
- Consult with a Trademark Attorney: Consider seeking advice from a trademark attorney who can provide legal expertise and guide you through the response process. An experienced attorney can help you understand the complexities of the office action and devise a strategic response.
- Assess the Grounds of Refusal: Determine whether the issues raised are substantive or non-substantive. Non-substantive issues are generally administrative in nature and can be addressed through simple corrections. Substantive issues may require more careful consideration and legal arguments to overcome.
- Gather Evidence and Prepare Arguments: For substantive issues, gather relevant evidence and documentation to support the registrability of your trademark. This could include evidence of acquired distinctiveness, consumer perception surveys, or other materials that demonstrate the mark’s use and recognition in the marketplace.
- Amend the Application, if Necessary: If the office action requests specific amendments to the application, such as clarifying the description of goods or services, make the necessary changes to the application.
- Craft a Persuasive Response: Prepare a clear and well-reasoned response to address each issue raised in the office action. If there are legal arguments to support the registrability of your trademark, present them convincingly.
- Meet the Deadline: The office action will specify a deadline for responding, typically six months from the date of the office action. Ensure that your response is submitted before the deadline to avoid abandonment of the application.
- Submit the Response: File the response to the office action through the appropriate channel specified in the office action. In the United States, responses are usually submitted through the Trademark Electronic Application System (TEAS).
- Wait for a Decision: After submitting your response, the examining attorney will review it and make a decision on the registration of your trademark. Be prepared for the possibility of further communication or requests for clarification.
It’s important to approach the response to an office action carefully and thoroughly. A well-prepared response can significantly increase the chances of overcoming the issues raised and achieving successful trademark registration.
Working with a trademark attorney is highly advisable, as they can provide valuable insights, legal expertise, and help you navigate the complexities of the response process, ultimately increasing the likelihood of a positive outcome for your trademark application.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand from unauthorized use and potential infringement by others. Trademark enforcement involves taking legal action against individuals or businesses that are using a similar mark in a way that could cause confusion among consumers or dilute the distinctiveness of your trademark. Here are the steps to effectively enforce your trademark rights:
- Monitor Trademark Use: Regularly monitor the marketplace for any unauthorized use of your trademark. This can be done through online searches, market research, or hiring a monitoring service to track potential infringing activities.
- Document Use and Ownership: Keep detailed records of your trademark use, including dates of first use, evidence of continuous use, and any registrations obtained. Proper documentation strengthens your case when enforcing your trademark rights.
- Cease and Desist Letter: If you discover unauthorized use of your trademark, the first step is often to send a cease and desist letter to the infringing party. This letter demands that they stop using the infringing mark and may include a request for damages or compensation.
- Negotiation and Settlement: In some cases, the infringing party may be willing to negotiate a resolution without litigation. This could involve the infringing party agreeing to cease use of the mark or modify their branding to avoid confusion.
- Opposition or Cancellation Proceedings: If a third party files a trademark application that conflicts with your rights, you can oppose the registration during the application process or file for cancellation of their registration if it has already been granted.
- Trademark Litigation: If negotiation and other measures do not resolve the issue, you may need to take legal action through trademark infringement litigation. This involves filing a lawsuit in court to protect your trademark rights and seek remedies, such as injunctive relief, damages, or the destruction of infringing goods.
- Enforcement in International Markets: If your business operates in international markets, you may need to enforce your trademark rights in other countries. This could involve working with local attorneys and utilizing international treaties to protect your mark globally.
Trademark enforcement requires careful consideration and adherence to the applicable laws and regulations. It is essential to consult with a trademark attorney who can evaluate the strength of your case, advise you on the most effective enforcement strategies, and represent your interests in court, if necessary.
Proactively enforcing your trademark rights not only protects your brand and reputation but also helps maintain the distinctiveness and value of your trademark in the marketplace.
Why Trademark Registration Matters for Winston-Salem Businesses
Named one of the “South’s Cities on the Rise, 2021” Winston-Salem, North Carolina is quickly becoming a hot tourist destination. People come from all over to experience the dining, the arts scene, and the charm of this classic American city.
Small business owners in Winston-Salem understand how much work goes into a new venture. There’s product development, marketing plans, hiring employees, and so much more. What many of them tend to overlook, however, is trademark registration, which can turn out to be a big mistake.
Imagine the following: Mark has worked at craft breweries for the past 10 years and is ready to start his own brewery. He finds the perfect location in the Industry Hill neighborhood of Winston-Salem and signs the lease. Mark names his new venture the North Carolina Brewing Company. A good friend of his asks him if he’s going to trademark the name. Mark considers it, but doesn’t want to invest the time and money into that right now.
Mark spend the next 6 months getting his business into shape. He designs a logo, orders signage for the brewery, hires staff, creates a website, and develops a marketing campaign.
Finally, Mark is ready to open his doors for business and things are going great at first. Tourists and residents alike love his beer. Unfortunately, Mark gets some upsetting news just 3 months after his grand opening in the form of a cease-and-desist letter.
There is another brewery in the city of Charlotte with a similar name. In fact, some of their customers think that their brewery and Mark’s brewery are connected. The Charlotte brewery does not like this confusion.
Since they trademarked their name 5 years ago, they are well within their rights to ask Mark to shut down his brewery and not reopen until he’s rebranded. That will require thousands of dollars and Mark is unsure he can afford it. Mark decides it’s time to contact a trademark attorney for advice on what he should do next.
If Mark had taken his friend’s advice right from the start and registered his trademark before he started investing time and money into his brewery, he wouldn’t be in this position.
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 Winston-Salem and yet it can assist businesses from North Carolina in registering a federal Trademark because trademarks are governed under federal law.