FAQ/IP 101s

Do I Need a Trademark Lawyer? Trademark Law Basics

FAQ/IP 101s

Do I Need a Trademark Lawyer? Trademark Law Basics

A trademark is a word, phrase, symbol, design, or a combination of the above that identifies a company’s goods or services. Trademarks set your brand apart and help your customers to recognize your brand in the marketplace.

“Trademark” can have two meanings: it can refer to both trademarks and service marks. A trademark is used specifically in referencing a business’ goods, while service marks reference a business’ services.

Trademarks help customers identify the source of a business’s goods or services and legally protect their brand, including against counterfeit goods and fraud.

Individuals and companies can establish their rights to a particular trademark by simply using the trademark in connection with their goods and services. However, their rights under this path are limited, and they only apply in the immediate geographical area where the company is providing goods and services.

For national protection, individuals and companies must register their trademark with the United States Patent and Trademark Office, or USPTO.

Registering a trademark ensures the USPTO lists it in its database of registered and pending trademarks. This notifies anyone conducting a trademark search for similar trademarks that you’ve obtained a trademark, the goods and services you provide, the date you applied for trademark registration, and the date your trademark was registered.

The Trademark Registration Process Made Simple

The trademark registration process can be lengthy. According to the USPTO, it typically takes between 12 to 18 months to complete. Here are the stages of the application process.

Pre-Application

Before you prepare your trademark application, there are several steps you want to take. First, determine whether trademark protection is right for you.

Next, you’ll want to consider what you want your mark to be, including what format it will take. Is it word-based, design-based, or a sound? What goods and services will you be associating the mark with? After you’ve answered these questions, it’s time to conduct a trademark search of the USPTO database to see if anyone’s already using the same mark.

Before moving on to preparing your application, you’ll want to do two more things: determine whether you are required to have a trademark lawyer to assist you and what your filing basis is.

You must have a basis under the Trademark Act to register your trademark. Examples of filing bases include the “intent to use” basis, where you intend to use the mark in commerce with your goods/services in the near future, or “use in commerce” basis, where you are currently using your mark in commerce with your goods and services.

Not every trademark applicant or registrant is required to have an attorney represent them before the USPTO. However, Trademark applicants or registrants located outside of the U.S. must have a U.S.-licensed attorney represent them.

Examination

Once you’ve done all the above, you’re ready to get to work filing a trademark application.

When you’ve filed and paid your fees and you’ve shown that you’ve met the minimum requirements to file, the USPTO assigns your application a serial number and sends it to an assigned examining attorney. The examining attorney reviews the application to make sure it complies with the law and various rules and includes fees.

The examining attorney’s review includes a full search for conflicting marks and an examination of the application. This stage alone can take from four to six months to complete.

If there are problems with the application, the examining attorney will issue an office action letter explaining why the office is refusing to register the trademark and possible suggestions to improve the application.

If you’ve received an office action letter, you must respond and make the corrections suggested by the deadline identified in the letter.

Publication

If you correct each of the issues identified, the examining attorney will approve the trademark for publication. The USPTO then publishes the mark in its weekly publication, the Official Gazette. This gives others who believe they’ll be harmed by the trademark the opportunity to formally oppose it by filing a Notice of Opposition. Opposition proceedings are similar to court proceedings, which are held before the Trademark Trial and Appeal Board, or TTAB.

In cases where no one opposes your trademark, your application will proceed in the process. Post-publication can take an additional three to four months until you receive an official notification that the trademark is registered.

International Trademarks

Outside of the United States, there is no single worldwide trademark registration process.

However, under the Madrid Protocol, an international treaty, individuals, and businesses can register their trademarks in multiple participating countries through a single application.

The treaty simplifies the trademark application process, but it doesn’t guarantee that an individual or company’s trademark will be registered in each country participating in the treaty: each reviews the application and decides separately whether to register the trademark in that country.

For countries that are not parties to the Madrid Protocol, individuals will need to directly file a trademark application with the countries’ patent offices.

Trademark Litigation

Registering your trademark is only half of the equation when it comes to protecting your trademark.

If infringement occurs — or someone else uses your trademark without permission in a way that is likely to create confusion, deception, or mistake about the source of goods or services — you can go to court to protect your intellectual property.

Trademark law allows trademark owners who believe their mark is being infringed to file a lawsuit in state or federal court for infringement, depending on the circumstances in their case. A trademark lawyer can help with filing the case in the right place.

If a trademark owner is successful in proving trademark infringement, they may be able to receive a court order, also known as an injunction, requiring the infringer to stop using the mark; an order requiring the destruction or forfeiture of the infringing goods; monetary relief including the plaintiff’s damages, the defendant’s profits and the costs to bring the suit; and an order that the infringer pay the plaintiff’s attorneys’ fees.

The Benefits of Hiring Trademark Lawyers

Engaging a trademark attorney to process your trademark registration comes with several benefits. Attorneys can help by:

  • Providing counseling about the trademark process and company branding
  • Conducting a comprehensive trademark search before filing an application
  • Ensuring your application is prepared correctly
  • Responding on your behalf to legal correspondence from the USPTO
  • Representing you before the TTAB and in litigation
  • Enforcing and maintaining your trademark rights
  • Handling trademark licensing

Although hiring a trademark attorney costs more than just the fees associated with filing, it can ultimately save you money and time in the long run.

Need a Trademark Lawyer?

Consider whether you can better protect your intellectual property through trademark registration. Trademark applications can be time-consuming and challenging for non-lawyers to complete. Seeking out a law firm with experience filing trademarks is crucial.

AEON Law’s trademark attorneys have significant experience in obtaining trademarks for our clients. Not only do we help clients get trademarks through the USPTO, but we also assist with foreign filings, under the Madrid Protocol and through direct IP filings in foreign jurisdictions. We also help clients protect their intellectual property through trademark litigation.

Our trademark attorneys are ready to help you navigate trademark law. Contact us today to schedule a free, confidential consultation to discuss our trademark services.

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