How to select a trademark lawyer Let’s talk about trademark attorneys. There are a lot of them out there. How do you know which one might be right for you? There are a few key considerations. This post assumes you need a trademark attorney because you want to obtain rights to a new trademark. When It Comes To Selecting A Trademark Lawyer, Ask Yourself The Following... Questions need answers before you proceed Question 1: Is the attorney experienced in trademark clearance and prosecution? Ask whether the attorney conducts a comprehensive trademark search, and if so, who does the research that goes into the search? Does the search cover common law trademarks? Ask how many trademark applications the attorney has filed, and what percentage of those applications have successfully registered. Ask how long the attorney has been practicing trademark law, and...
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If you answer NO to any of the following three questions, your trademark business knowledge is not up to par. Did you know that if you don’t clear your trademark properly it can become a serious liability? Did you know that if you choose a descriptive trademark, it may be very weak and difficult to enforce? And did you also know that if you select a strong trademark and clear it properly it can become a very valuable business asset? Let’s get into the meat and potatoes of these concepts... 1. Failure to Properly Search and Clear your Trademark Can Lead to Serious Liability: How can a trademark become a serious liability? If you use a trademark that is likely to cause confusion with another party’s prior registered or prior-established common law trademark, they can sue you for infringement. At...
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The USPTO has established ex parte expungement and reexamination proceedings for cancellation of a registration, in whole or in part, when the required use in commerce of the registered mark has not been made. This is big news, because it creates an entirely new option for trademark applicants whose applications for registration have been refused under Section 2(d), (likelihood of confusion) with a prior registered mark. As an attorney practicing before the USPTO for over twenty years, I have often been confronted with the situation where my client’s trademark application was refused on grounds of likelihood of confusion with a prior trademark that was registered for a very extensive listing of goods. Upon review, it sometimes appeared that the registered mark was only being used in connection with a few of the many goods for which it was registered, and...
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Everybody these days has a web site. If your business does not have a website, people will question whether you have a business at all. But what you display on your website could lead to problems if you’re not very careful. This post concerns the use of images on your website, and, while the law is unsettled, it’s as treacherous as a minefield. In fact, the terrain is so hazardous that you may even be liable for merely embedding a tweet on your web site. Information for Trademark Clients We advise clients regarding how to use their trademarks on their web site so as to comport with trademark law. The issues discussed below fall under the rubric of copyright law. But these copyright issues affect trademark owners, because websites will often include both trademarks and copyrighted material, or at least...
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You Can’t get a Federally Registered Trademark for Weed With so many states making marijuana legal, cannabis entrepreneurs, like any other businesspersons, may want to protect their good will and brand identity by obtaining the protection of federal trademark registration. For the moment, alas, they are out of luck. In order to qualify for federal trademark registration, the trademark must be used on the goods identified in the trademark application in interstate commerce. The Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce. In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907. Weed May Be Legal In Your State Although pot, Mary Jane, marijuana, or whatever moniker you prefer, may be legal under the laws of various states, it is still absolutely illegal under federal law pursuant to the Controlled Substances Act...
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More than just a trademark- A reflection of your Company Selecting a trademark is often difficult. Your trademark needs to convey the appropriate image for your company and what you are selling. It should have a positive connotation that makes consumers feel good. It must not have any undiagnosed negative connotations, such as an unfavorable meaning in a foreign language understood by the target consumers. Ideally it should not be descriptive of your company or your products or services. Finally, it needs to be available – that is, not confusingly similar to another party’s trademark for related goods or services. So, in a nutshell, you need to put some serious thought and time into the selection of your trademark. Suppose you are in the business of selling snack foods, your target consumer demographic is young urban dwellers, and your new...
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How they are handled and what happens if you don’t fight for your trademark? Nobody wants to get involved in litigation. It is expensive, stressful, time consuming and the outcome is always uncertain. Nonetheless, litigation is one of the risks that comes with trademark use. If you use a trademark that is confusingly similar to another party’s prior existing trademark, they might sue you for trademark infringement. Additionally, if another party adopts and begins using a trademark that is confusingly similar to your trademark, you may be forced to litigate against them in order to safeguard your rights. A trademark is a form of property, and like any other form of property there are costs involved in the upkeep of the property. For trademarks, these costs include monitoring and enforcement. Monitoring is the ongoing surveillance of the market and trademark...
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Trademark Legal GuidanceFlat Fee Trademark LawyerWith No Surprise Expenses We offer our most popular trademark search and trademark application services on an affordable flat fee basis so you can plan your budget with confidence. Learn About Our Flat Fee Services Call (914) 723-0394 Flat Fee Trademark Application A well-drafted application can save you money by lessening the necessity for responses to USPTO inquiries and help to avoid the kind of mistakes that can even result in the need to file a completely new application. Learn More About Our Flat Fee Trademark Application Service Flat Fee Trademark Search Our premium comprehensive trademark search is always available for a flat fee. This search is far-reaching, and includes USPTO registered and applied for marks, common law marks including online uses, company names and trade names, domain names, and state trademark registrations. Before you...
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Know the DifferenceTrademark Attorney vs. Trademark Agent You will receive full service legal advice, not just an agent that takes your information, takes your money, fills out a government form and files your trademark application. Don't Settle For A Trademark Agent – Get The Expertise You Deserve Call (914) 723-0394 Ask Yourself What are you looking for? Legal advice to get you headed down the right path, or just a “service” that takes your information, takes your money, fills out a government form and files your trademark application? Caution Avoid This Common Costly Mistake For many smaller and medium-sized businesses, the thought of hiring a trademark attorney might at first seem expensive. You might even consider hiring a trademark “agent” in lieu of working with a trademark attorney. Don’t do it! Non-Attorneys Are Not Allowed To Give You Legal Advice...
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A word about Trademark Registration that bears repeating... No one can guarantee your trademark will be registered. Only the USPTO can register trademarks. When You Hear "Simple Trademark Registration" Beware. We are a law firm. We practice before the United States Patent and Trademark Office, and will work assiduously to persuade the USPTO to register your trademark. We will conduct the comprehensive search, evaluate the results and advise you with a written attorney opinion letter, including consultation over the telephone if you need it, then draft your TM application calling on our many years of experience practicing trademark law, and follow up with the USPTO regarding any questions that arise during the examination of the application. It is important to remember that Thomas M. Wilentz, Attorney at Law, PLLC does not register trademarks. Only the United States Patent and Trademark...
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