TRADEMARK REGISTRATION SERVICES

Seeking to federally register your mark or obtain international protection? Let us prepare and file your application today.

TRADEMARK SEARCH SERVICES

Deciding on a name or logo for a new venture can be difficult. Let us help you by performing a clearance search to see if your trademark is available or if you may be infringing another's trademark rights.

OFFICE ACTION RESPONSES

Did the trademark office reject your application? Let us simply the process and quickly get your application back on the right track.

MAINTENANCE AND MONITORING

Don't let your trademark registration lapse. You must file specific documents and fees after registration to maintain the validity of your mark. Also, you must actively police your mark to maintain its validity.

OPPOSITION & CANCELLATION PROCEEDINGS

Did someone oppose your trademark application? Need to prevent a trademark from registering or cancel an existing registration? Let us reduce your stress and handle the opposition or cancellation proceeding. 

For our clients, developing, maintaining, protecting, and enforcing a distinctive brand identity is the foundation for their success in our global economy. A powerful brand represents a valuable business asset and serves as an integral component to a robust intellectual property portfolio. The attorneys of Emory Legal know the significance of building and protecting a brand, and we do it every day. Regardless of the industry, product, or service, the trademark expertise of Emory Legal’s professionals allow our firm to effectively counsel clients across the full spectrum of trademark issues they face. We team with our clients and tailor solutions that fit their business goals, provide leverage in the marketplace, and safeguard their rights in the brands they create. Emory Legal offers a comprehensive suite of trademark services, including:

  • Trademark clearance searches and opinions.
  • Trademark application preparation, filing, prosecution (e.g. office action responses), and registration services for U.S. and international trademarks.
  • Trademark counseling and portfolio development.
  • Trademark licensing agreements.
  • Trademark infringement opinions.
  • Trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”).
  • Trademark litigation in federal and state courts.
  • Domain name disputes.
  • ICANN, UDRP, and WIPO disputes.
  • Recordation of trademarks with the customs office in the U.S. and abroad.
  • Trademark maintenance and renewal services for U.S. and international trademarks.
  • Trademark monitoring services.

Moreover, if enforcement of your trademark rights is necessary or defending against charges of trademark infringement becomes unavoidable, the experienced litigation attorneys at Emory Legal are there for you, whether it be the preparation of a cease-and-desist demand, take-down notice, trademark opposition or cancellation proceeding, and/or the initial of a trademark infringement or cybersquatting proceeding.

To talk with an experienced trademark attorney about your trademark needs, please contact Emory Legal at 619-752-0249 or info@emorylegal.com.

What is a trademark or service mark?

A trademark or service mark can be any word, name, symbol, device, or any combination, used by an individual or company that identifies and distinguishes the source of their goods/services from those of another. Non-traditional marks are also capable of registration such as marks based on their appearance, color, shape, sound, smell, taste and texture.

What is the difference between a trademark, patent and copyright?

Trademark protection attaches to any word, name, symbol, device, or any combination thereof, used by an individual or company to identify and distinguish their goods and/or services from those of another, and to indicate the source of the goods and/or services. Trademark rights bestow the owner the right to prevent others from using a confusingly similar trademark, but not to prevent others from making the same goods or from selling the same goods or services under a different mark.

Copyrights protect an original works of authorship fixed in a tangible medium of expression including literary, dramatic, musical, artistic, and certain other works, both published and unpublished. A copyright protects the form of expression rather than the subject matter of the writing. For example, a product description can be copyrighted, but this only prevents others from copying the product description; it does not prohibit others from writing their own product description and from using the product.

A patent is the grant of a property right to the inventor, which confers the holder the exclusive right to exclude others from making, using, offering for sale, or selling the claimed invention or from importing the claimed invention into the United States.

What is the difference between trademarks, domain names, and business name registrations?

A trademark can be any word, name, symbol, device, or any combination thereof, used by an individual or company that identifies and distinguishes the source of their goods and/or services from those of another.

A domain name is part of an internet web address; for example, in the web address “www.emorylegal.com” the domain name is “emorylegal.com.” A domain name is registered with an accredited domain name registrar. Registration and use of a domain name, in and of itself, does not confer any trademark rights. When a domain name, apart from being used solely as a web address, is used in a manner that identifies and distinguishes the source of their goods and/or services from those of another, such use may confer trademark rights. In other words, if a domain name is registered but fails to qualify as use of a trademark, the domain name holder may be required to surrender the registered domain if it infringes another’s valid trademark rights.

Like domain names, use of a business name, in and of itself, may not qualify as trademark use. While states or other local jurisdictions may require a license or registration under the assumed name to operate as a corporation, LLP or LLC, etc., the mere filing of these documents in and of itself does not confer trademark rights. In other words, a state’s authorization to form a business with a particular name does not grant trademark rights.

What is a certification, collective or collective membership mark?

A certification mark is any word, phrase, symbol or design, or any combination thereof, that is owned by a party who certifies that the goods and/or services of another meet certain standards. In other words, the owner of a certification mark exercises control over the use of the mark by others to indicate that certain standards have been met.

A collective mark is any word, phrase, symbol or design, or any combination thereof owned by an association, cooperative, group or organization and is used by its members to indicate the source of the goods and/or services.

A collective membership mark is any word, phrase, symbol or design, or any combination thereof that is owned by an association, cooperative, group or organization, which indicates that the user of the mark is a member of the particular association, cooperative, group or organization.

Must a trademark be federally registered and what are the benefits?

No. Federal registration is not mandatory, but it confers many benefits to the owner, including:

  • Ability to bring an action for trademark infringement of your registered mark in federal court;
  • Nationwide exclusive right to use the mark on or in connection with the goods and/or services listed in the registration and the ability to prevent subsequent users from using or registering a confusingly similar mark.
  • Nationwide constructive notice to the public of your trademark ownership claim;
  • Nationwide legal presumption of ownership;
  • Right to use the federal registration symbol ®;
  • Use of the federal registration as a basis to obtain trademark registration in foreign countries;
  • Ability to prevent domain name cybersquatting;
  • Various statutory remedies for infringement, such as treble, statutory damages, and/or attorney’s fees; and
  • Ability to record the federal trademark registration with the U.S. Customs and Border Protection Agency to prevent importation of foreign goods bearing a confusingly similar mark.

How are trademark rights acquired?

Trademark rights are acquired through the use of a mark in commerce on or in connection with goods and/or services.

In the U.S. trademarks rights can be established by: (1) use in commerce (“Common Law rights”); (2) registration in any of the 50 States (“State Registration”), and/or (3) registration with the United States Patent and Trademark Office (“Federal Registration”). While federal law protects unregistered marks, such protection is limited. It is strongly advised that a federal trademark registration be obtained.

Any person who acquires a federal registration that predates another’s use of the same or confusingly similar mark has superior rights to the mark throughout the United States, regardless of whether the other person was subsequently granted a state trademark registration or has used the mark in commerce. In other words, a prior federally registered mark (i.e. Senior User) takes priority over subsequent common law acquired trademark rights or State Registrations (i.e. Junior User). If a Senior User of a federally registered trademark shows a likelihood of entry into an area where a Junior User exists, the Junior User must cease use of the mark. An exception to this exists, for example, when the Senior User only has Common Law rights or a Stare Registration prior to the federal registration of the Junior User. In this scenario, the Senior User may have some rights to use the mark, but those rights are limited to a specific geographical area.

When can the 'TM,' 'SM,' or ® symbols be used?

Anyone who claims trademark rights in a particular mark may use the “TM” trademark symbol or “SM” service mark symbol to alert the public to their claim of ownership in that mark, regardless of whether they have filed an application with the USPTO. However, the ® symbol may only be used after the United States Patent and Trademark Office grants your trademark registration. The ® symbol may not be used when a trademark application is pending.

Can a federal trademark application be filed before I start using a mark?

Yes, this is called an Intent-to-Use (“ITU”) application. An ITU application for the mark can be filed with the United States Patent and Trademark Office, which permits an individual to reserve a trademark for future use while they develop their business, brand or other product or service line.

Does my trademark qualify for federal registration?

In general, a trademark may be successfully registered with the United States Patent and Trademark Office if it is (1) inherently distinctive* in the legal sense and (2) does not create a likelihood of confusion** with any existing trademarks. Other grounds also exist that may prohibit registration, including but not limited to: marks that are surnames; marks that are geographically descriptive; marks that are disparaging or offensive; foreign marks that translate to a descriptive or generic term; and marks that are a title of a single book and/or movie.

*Inherent Distinctiveness:

Whether a trademark is inherently distinctive in the legal sense is essentially a determination of whether the mark is “strong” or “weak.” “Strong” marks are easier to protect than “weak” marks. Generally, the spectrum of distinctiveness, from “strong” to “weak” trademarks, breaks down into four categories: fanciful or arbitrary, suggestive, descriptive, or generic.

Marks that are fanciful or arbitrary are the best candidates for registration. Fanciful marks are invented words with no dictionary or other known meaning. Arbitrary marks are actual words with a known meaning that have no association or relationship with the goods or services being offered under the mark. Fanciful and Arbitrary marks are considered “strong” marks. Suggestive marks suggest, but do not describe, the goods or services. Suggestive marks are also considered “strong” marks. Descriptive marks merely describe the goods and/or services and are considered “weak” marks. Descriptive marks are generally not capable of registration unless they have acquired distinctiveness. Acquired distinctiveness may be established by extensive use of a mark in commerce for at least a five-year period or longer. Generic marks are never capable of registration.

**Likelihood of confusion:

A multifactor test is used to determine whether your trademark infringes another’s trademark (i.e. creates a likelihood of confusion). This multifactor test considers, among other things, the relative strength of the marks, the similarity of the marks, and the similarity of the goods and/or services. Therefore, it is imperative that before filing your trademark application you determine whether your proposed mark is likely to cause confusion with another’s trademark. This determination can be made only after doing a trademark search.

Should a trademark search be conducted?

ABSOLUTELY! Performing a trademark search prior to seeking registration is very important and may save you significant time and money down the road from, among other things, prevention of a costly trademark infringement suit.

Can I conduct my own free trademark search?

Yes, you can use the United States Patent and Trademark Office’s, Trademark Electronic Search System (“TESS”) free of charge, at http://tess2.uspto.gov; however, that being said, the TESS system should only be used to conduct preliminary research. Even though a trademark cannot be found through the TESS database, it does not mean that the mark isn’t being used and/or is registered. The TESS system does not include the capability to search common law, state, and/or foreign trademark databases, nor are the search capabilities of TESS comprehensive. Conducting a proper trademark search is an art form, and should be performed by a professional.

Who can file a trademark application?

Only the owner of a trademark can file an application, and, of course, their appointed attorney. A trademark owner may be an individual or any type of legal entity, such as a partnership, LLC, corporation, etc.

Must the trademark owner be a U.S. citizen?

No.

What is a specimen of use?

A specimen of use is a sample of how the mark is actually being used in commerce on or in connection with the identified goods and/or services listed in the application (e.g. product label, product packaging, image of product bearing the mark, use of the mark on a website for services). Improper specimens of use are likely invoices, order forms, leaflets, brochures, publicity releases, letterhead, and business cards, which fail to establish the connection of the mark to how it is being used in commerce on or in connection with the goods and/or services.

What is a drawing of the mark?

A drawing of the mark is a clear image of the mark that the applicant seeks to register and can be either a “standard character” drawing (e.g. word mark consisting solely of words, letters or numbers) or “special form” drawing (e.g. mark + design elements like logo, color, and stylization elements).

Once a trademark application is filed, is the registration guaranteed?

ABSOLUTELY NOT. Once a trademark application is submitted to the USPTO it is reviewed by a trademark examining attorney for compliance with the applicable rules and statutes. It is quite common to receive a refusal from the trademark examining attorney, in the form of what is called an “office action.” Common refusals may be: (1) likelihood of confusion, (2) mark is descriptive of the goods and/or services, (3) mark is primarily merely a surname, (4) the identified goods and/or services need to be modified, (5) improper specimen of use.

If an Office Action issues, how long do I have to respond?

In general the Applicant has 6 months from the mailing date of the office action to respond.

How can I check the status of my trademark application?

You can check the status of your application through the USPTO’s Trademark Status and Document Retrieval (“TSDR”) system, at http://tsdr.uspto.gov.

May I expand or broaden the identification of goods/services after the application is filed?

No. You may not expand or broaden the goods and/or services listed in the trademark application, once it is filed, but it is permissible to clarify and/or limit the identified goods and/or services listed in the application. For example, if you filed the mark for “footwear” you may limit the application to a specific type of footwear, namely athletic footwear, beach footwear, or thongs, but, you may not broaden the goods to claim T-shirts. In this case, a new application will have to be filed.

What is the difference between a use-based vs an intent-to-use trademark application?

Applications claiming use of the mark in commerce, i.e. section 1(a) basis, must be using the mark in the sale or transport of goods or the rendering of services in interstate commerce, and the mark must appear on or in connection with the goods, the goods container, or displays associated with the goods; or for services, the mark must be used in the sale or advertising of the services.

Applications claiming intent-to-use basis, i.e. section 1(b) are for marks that have not yet been used in the sale or transport of goods or the rendering of services in interstate commerce but the Applicant plans to do so in the very near future.

If an Intent-to-use application is filed, when must actual use of the mark begin?

A statement of use must be filed before the application is approved for publication or within six months after a notice of allowance is received, or a request for a six-month extension of time to file the statement of use. A total of 5 extension requests may be requested; thus, if the applicant fails to use the mark in commerce and file the required statement of use, the mark will be considered abandoned. In general, an applicant has approximately 36 months to begin use of the mark in commerce following receipt of a notice of allowance.

What does it mean when my trademark is published for opposition?

Publication for opposition means that the examining attorney has approved your mark for publication in the Official Gazette, i.e. either the examiner found no basis for refusal or all identified issues have been resolved. After a mark is published for opposition in the Official Gazette, there is a 30-day period in which a third party may oppose the application and thereby prevent or delay the registration of the mark.

When will my trademark be registered?

f no opposition is filed against your application or you successfully overcome an opposition: (1) for use-based applications, the USPTO will generally issue a registration certificate in about 12 weeks after notice of allowance; or (2) for intent-to-use applications, the USPTO will issue a notice of allowance meaning the mark is allowed but not yet registered, and you have 6 months to: (1) use the mark in commerce and file a statement of use or (2) file a request for a time extension. Approximately 2 months after the statement of use is filed and approved, the USPTO will issue a registration.

How long is a federal trademark registration valid?

A federal trademark registration is valid as long as you continue to use the mark in commerce and file the required maintenance and renewal documents; in other words, a trademark will remain valid indefinitely if it is properly used and maintained. Specifically, you must file: (1) a Declaration of Continued Use or Excusable Nonuse under Section 8 between the fifth and sixth year after your registration date; and (2) a combined Declaration of Use and Application for Renewal under Sections 8 and 9 between the ninth and tenth year after your registration date, and every 10 years thereafter. If you do not file the required maintenance and renewal documents, your registration will be cancelled. In addition, throughout the life of your trademark, it is incumbent upon the holder to police his trademark rights or risk loss of rights via an abandonment or acquiesce of rights.

Is my trademark registration valid outside the United States?

No. However, your U.S. federal trademark registration may serve as the basis for filing an application to register a mark in certain foreign countries under the Madrid Protocol.