Trademarks

When a unique word(s), phrase, slogan, logo, shape, color, sound, smell or other unique element is used in conjunction with the sales of goods or services of a business, it is entitled to trademark protection. A trademark must be distinguishable from other trademarks for similar goods and services and may not merely describe the goods or services that it identifies. Like patents, trademarks are territorial; that is, they are only valid in the country granting the rights.

Trademark rights in United States and other British common law countries are the result of use of the mark in connection with certain goods or services. Therefore, it is important to remember that an individual or company may have trademark rights even though they have never obtained a federal or state trademark registration. In other countries, trademark rights come from registration meaning that the first person to register the mark has the sole right to use it.U.S. Federal trademark registrations are available to those individuals and businesses who are actually engaged in interstate commerce. It is, however, possible to file a trademark application based on a bona fide intention to use the mark in commerce. It should be noted that a registration certificate will not issue until the applicant proves use of the mark in interstate commerce. Federal trademark registrations prohibit others from using confusingly similar trademarks for similar goods and services. The registration of trademarks, like patent prosecution, involves correspondence and negotiation with the U.S. Patent and Trademark Office. However, unlike a patent, trademark rights can be renewed and therefore can be enforced indefinitely unless the trademark is abandoned or becomes generic.

A trademark registration may be applied for in the name of an individual or individuals, a partnership or corporate entity. Once the trademark application is filed, the trademark office will examine the application against other pending or registered federal United States trademarks to determine if there is a likelihood of confusion with another pending or registered mark. This first examination typically takes approximately 6 months. Once the US trademark office approves the application, the trademark will be published for opposition by third parties who feel they might be damaged in some way by registration of the subject mark. If no opposition is filed, the trademark registration will subsequently issue. Assuming no problems or delay, it typically takes 12 to 13 months from the filing of a trademark application based on use to the Government's issuance of the trademark registration certificate.

The Firm's Attorneys can help in determining if a trademark is available for use by our clients and what can be done, thereafter, to preserve and enforce our client's trademark rights.