Intellectual Property

TRADEMARKS

What is a Trademark?

Trademarks (or service marks) are how you protect your brand. Whether it's your business name, a product (Trademark), or a service (Service Mark), a federally-registered mark indicates a level of sophistication, protects your legal interests, and ultimately provides value to your business. 

Trademark Search

A trademark search should be one of the first steps for any business. Without properly clearing your planned business or product name, you could inadvertently infringe on the trademark rights of another company, and be faced with legal liability as well as business interruption and expense while you rebrand. We will conduct a thorough search of both state and federal trademark registrations, as well as available common law marks, to determine if your planned name, logo, or slogan is available for use. Before the search is conducted, we will advise you on the strength of your proposed mark, as well as recommendations regarding the likelihood of being able to register the mark. For all trademark searches performed, we will provide you with an opinion regarding the availability of your name, along with any possible issues we find that might preclude registration.

We often get clients that come to us one they have already applied for trademark protection, but have since been refused registration due to conflicts with prior registered marks. This can quickly become expensive, both in terms of the costs to attempt to overcome the rejection, as well as in rebranding should the trademark rights not be available.

We can help overcome future problems through:

  • Comprehensive state, federal, and common law trademark searches

  • Advising on proposed business, domain, and product or service names

  • Counseling on relative trademark strength and the ability to protect and enforce the mark

Trademark Application

Once a trademark search has been completed, protect your brand with a federal trademark. In addition to providing freedom to operate your brand without the threat of infringement, a federally-registered trademark provides legal rights and remedies to protect your intellectual property. We will prepare and file a federal trademark application with the United States Patent and Trademark Office, along with all required fees and documentation.

The trademark application process is pretty straightforward, and there are many platforms available that will file a trademark application for relatively low fees. What these platforms, as well as the "do-it-yourself" approach lack, however, is the training and experience that a trademark attorney brings to the table. Failing to properly apply for trademark protection can be more costly than just a rejected application. You could limit or even lose trademark rights if not done properly from the beginning. 

Our trademark professionals can help:

  • Ensure that the requirements for obtaining trademark registration are met

  • The proper scope of goods and services are captured in the application

  • Make sure the trademark rights vest as soon as they are legally entitled

Trademark Prosecution

Sometimes there will either be unforeseen challenges encountered during the application process, or you may wish to attempt to pursue a mark that has known issues which may preclude registration. In the case of a rejection by the USPTO in what's called an Office Action, our Trademark Prosecution Services include preparing a Response to Office Action in which we outline the legal precedence and arguments for why your mark should be registered. Often times the Office Action can request that changes be made to your proposed mark in order to go through to registration. Other times, there are prior-registered marks that are "confusingly similar" to your proposed marks. In either case, we will provide advice and draft responses in order to overcome the rejection.

Our trademark practice is highly experienced and capable of overcoming common rejections cited by the USPTO. Common rejections from the USPTO include:

  • Likelihood of confusion with a previously registered mark

  • Use that is "merely descriptive" of the subject matter

  • Use that is "merely ornamental

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