TRADEMARK FAQS

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What is the relevance of First Use and what does it mean? 

 

Trademark law is based on first use. Generally speaking, the first to use a mark owns it. (Generally speaking – there are exceptions.) One can have trademark rights without having a registered trademark; however, there are great advantages to having a registered trademark and it is almost always worth obtaining a registered trademark to protect your property. There are certain categories of damages available to one with a registered trademark that simply are not available to one with an unregistered mark.

 

What are the benefits of filing an Intent to use application?

 

Intent to Use Applications are extremely useful as they allow one to obtain a priority date once the application is filed based on a sworn statement the applicant intends to use the trademark applied for. So if you’ve come up with a brilliant marketing idea but haven’t figured out how to bring your brand to market, you can file an intent to use trademark application and obtain a priority date of constructive first use. This protects you in case someone else comes up with your brilliant idea and wants to use the same mark or term.

 

What happens if a company stops using its trademark? 

 

One of the exceptions to first use referenced above is abandonment. If you’ve been found to have abandoned a trademark, someone else can grab it.  This policy can be summed up by the expression, "use it or lose it."

 

Should I save records from when I first began to use my trademark? 

 

Yes, one should definitely save evidence of first use and of continuous use, although not technically required to do so.  One tactic often raised by defendants in trademark infringement actions is to attack the trademark registrants mark and claim fraud in the procurement of the application – essentially arguing that the trademark registrant lied when obtaining his or her or its trademark. Therefore it’s important to retain evidence of your first use and continuous use.

    

Token Use – Is this sufficient?     

 

Maybe. It depends on the definition of token use applicable to the facts of the case. Token use is a frequent claim. That’s why it’s important that you save evidence of your uses.

    

Registered R or TM?     

 

Use the R in the circle once your trademark registration issues. Use the TM when it’s pending.

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What is a trademark?

A trademark (TM) typically consists of a word or words, or a logo (which may include words) that identifies the source of goods and/or services.  Examples of words in marks include certain trade names (names under which a company does business), the names of certain brands or products, and certain slogans.  Trademark law defines the property right to use a mark in connection with a type (or types) of goods and/or services.  Trademarks comprise one area of intellectual property law; other areas are copyrights, which protect original artistic or literary works or compositions, and patents, which protect inventions.  Enforcement of trademark law allows businesses to build a reputation with the public, without interference from counterfeiters; in turn, this protects consumers from being deceived into mistaking lesser-quality imitations for the genuine goods or services.

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 Why should I register my trademark?

Common law trademarks (without registration) are recognized, but they afford narrower, more limited legal rights.  Registration (which entitles the owner to use an ® symbol) confers advantages that include:

·       Evidence of ownership and use

·       Enhanced protection and remedies in federal courts

·       Legal presumption of validity of the mark (and constructive notice to others of the ownership claim), nationally

·       The right to register the mark with the U.S. Customs department, to prevent importation of infringing goods

·       Priority in filing for trademark applications in foreign countries

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When should I apply to register my trademark?

You can apply to register a mark before or after you have started to use it.  Applying before use can give you exclusive rights to begin using the mark in the future (provided that no one else was using it, before your filing date).  In deciding when to apply for registration, there are various considerations, including the likelihood of another entity trying to register or use a similar mark, capital constraints, and the value of a valid registration to potential investors.  Also, typically, it takes five or six months for the government to review and approve a trademark application; many business owners prefer to get past the uncertainty of the application stage, as soon as possible.  Delaying registration increases the risk that you are investing time and money into a business or brand whose trademark is not eligible for legal protection, or worse yet, whose trademark creates liability for infringement of a mark belonging to someone else.

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 What trademark should I register?

Crafting a trademark application involves taking into account various considerations.  The initial selection of a business or brand name often involves the balancing of conflicting concerns: on the one hand, a name that somehow describes the product or services or some quality thereof (e.g., HONEY ROASTED NUTS), might create instant recognition and familiarity in consumers’ minds; on the other hand, the more descriptive the mark, the less legal protection it is generally accorded.  Also, the initial selection phase involves researching existing trademarks, to minimize the likelihood that your mark will be subject to attack by the owner of a potentially similar mark.  Even after a name is selected, there is often a decision as to whether to apply for registration of the name as a word mark, or as part of a logo that incorporates the words.  There are also other decisions: for instance, how many words to use (e.g., “ACME ANVILS” or just “ACME”); where logos are used, there is the question of whether to depict them in color or black-and-white.  Another crucial consideration is for what goods and/or services the mark should be registered.  Generally, trademarks only apply to specific types of goods and services.  Describing the goods and services requires thought.  Overall, the process of crafting a successful, strong trademark application requires care and attention to various considerations.

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 Do I need to do anything after my trademark is registered?

After registration, there are legal requirements for the filing of additional documents, in order to preserve the registration.  Additionally, a trademark owner should be vigilant in keeping aware of the possible infringement.  When the owner believes that infringement has occurred, various steps may be taken, culminating with litigation.

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Should I hire a lawyer to register my trademark?

The right lawyer can bring many advantages to the table:

·       Experience: You are permitted to file a trademark application without a lawyer, but it is generally inefficient to take the time to learn entire process just for one or two registrations.  An experienced professional can craft a strong application, in a fraction of the time that it would take for most laypersons to craft a good application; this frees the businessperson to devote more time to the business.

·       Quality: Expertise is helpful in crafting the best trademark registration application – i.e., one that defines your trademark rights as broadly as possible, while also meeting the requirements for registration.  Additionally, the United States Patent & Trademark Office (USPTO) will frequently issue an Office Action, requiring an applicant to persuade the USPTO that a trademark does not run afoul of USPTO requirements; experience, expertise, and strong legal reasoning aid in the process of assembling an effective response.  Finally, the process of applying for, and maintaining, a registration requires acute attention to details, particularly with regard to deadlines; our firm has developed systematic methods for all stages of the process, so as to effectively monitor the status of the application and keep track of key deadlines.

·       Judgment: A businessperson may have too much emotional investment to see the troubles that will arise in attempting to register or use a given mark.  A good lawyer has the detachment to anticipate potential problems early in the process and work to solve them.

·       Results: There are high stakes involved in a trademark application.  The registration fee (for an application for only one class of goods or services) is $275 or $325 (depending on the application format).  Perhaps more important is the amount of time that it takes to secure trademark rights.  The registration process (including application, potential persuasion, approval, publishing, and possible additional filings) typically takes the better part of a year; indeed, the initial review stage alone takes approximately five to six months.  Experienced, skilled professionals can help to navigate the process so that it is done properly the first time; by helping to avoid a rejection of the application, a professional can help you to secure trademark rights as soon as possible.

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If you are interested in registering a trademark, we suggest that you consider our services.  We offer experience and expertise at all stages of the process, from crafting an application for registration to litigation over trademark infringement.  In litigation, the firm boasts a Supreme Court victory and offers discounted rates to parties who applied for their trademarks through our firm.  We also have experience in obtaining international trademark registrations.  We offer a fixed, affordable rate, for a United States trademark application.

Our office is in Beverly Hills (in the Los Angeles area), California; and we take on diverse clients, from all over the world.  Contact us to set up a consultation.