Trademark

Trademark law serves to safeguard your brand identity.

"A trademark can be any word, name, symbol, logo, design, or any combination thereof, utilized in commerce to identify and differentiate the goods (or services) of one manufacturer or seller from those of another."

Your trademark can help you protect the branding that sets your products apart from those of your competitors. A primary function of trademarks is to ensure that your customers are not misled into purchasing competitors' products while believing they are buying yours. The rights associated with your trademark can significantly contribute to the value of your brand and affect your company's valuation upon exit.

A registered U.S. trademark solidifies your rights to the mark within the United States. The registration process begins with filing a trademark application, which the United States Patent and Trademark Office (USPTO) examines to ascertain if your mark is distinct from other registered marks and complies with registration criteria. You can also file foreign trademarks to protect your mark in countries where you currently sell or intend to sell in the future.

Before filing any trademark applications, we strongly recommend conducting a trademark search, followed by a strategic discussion with our attorneys.

Our trademark services encompass:

• Trademark Searches
• Trademark Applications – Word Marks, Design Marks, and Combination Marks
• Trademark Strategy / Portfolio Development
• Trademark Portfolio Management
• Competitive Trademark Watch Service
• Trademark Opposition/Cancellation Proceedings
• International Trademark Applications in 150 countries
• Madrid Protocol International Trademark Applications

What distinguishes a word mark from a design mark?

Simply put, a word mark is a trademark that covers "just the name or phrase." It protects a name or phrase without restrictions regarding specific font styles, sizes, colors, or designs. A word mark prevents competitors from using confusingly similar names or phrases.

A design mark, however, protects trademarks that are stylized, feature designs or logos, or include color. Trademark owners generally register a design mark when the stylization and design are distinctive components of their branding. This format provides protection specifically for the trademark's visual presentation.

Usually, if the name itself is distinctive, obtaining a word mark is crucial. The design mark then offers secondary protection by preventing competitors from using a logo or design that resembles yours, even if they use a different name or phrase.

Must my mark be "in use" prior to filing a trademark application?

For the registration process to be completed, the mark must ultimately be in use on the products or services specified in the application.

We can file an application:

A. If the mark is already in use, or

B. when you genuinely intend to use the trademark.

If you file under “intent to use,” your application will be received by the USPTO, reviewed by an Examiner, and ideally approved. However, to finalize the registration process, you must demonstrate that the mark is in use on the designated products or services.

Is conducting a trademark search really necessary?

A search is a crucial initial step in the trademark process. This search will not only help assess whether your trademark application is likely to be registered successfully but also enable us to explore all available options and devise the right strategy for optimal protection.

The USPTO trademark database includes records of all active and inactive trademark registrations and applications. We search this database for any applied-for or registered trademarks to identify potential conflicts with your trademark, discuss your chances of obtaining a registered trademark, and suggest modifications that may enhance your likelihood of success.

How can I obtain international trademarks?

The best time to file international trademark applications is within six months of filing your U.S. application. By doing so, we can claim priority from your U.S. application.

There are two primary pathways for seeking international trademarks:

If you seek protection in only one or two other countries (for example, Canada and Mexico), we can file applications directly in those countries, using our “overseas affiliate” law firms in each selected country.
If you want protection in multiple countries, we can file a “Madrid Protocol” application, allowing us to submit a single application that designates and seeks protection in several countries.

How do I initiate the trademark process?

To discuss the possibility of collaborating to secure your trademarks, please book a strategy call.