Trademarks

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Trademark law may be used to protect a brand name.  A trademark or service mark is a word, phrase, single or design or any combination thereof, that allows consumers to identify the source of goods and to distinguish from those of others. In order to acquire a registered trademark or service mark a business or individual (“Applicant”) must file a trademark or service mark application for registration with the United States Patent and Trademark Office (“USPTO”).  An Applicant may file an intent-to-use application for registration or a used based application for federal registration. Additionally, a trademark or service mark may be federally registered with the USPTO on either the Principal or Supplemental Register.  An attorney with experience in filing trademark and service mark applications for federal trademark registration can assist you in determining whether you should file your application on the Principle vs. Supplemental Registrar or whether you should file an intent-to-use application or a use based application.

A trademark or service mark must be in use for a trademark or service mark to be registered.  A use based trademark or service mark application, also known as a 1a application given that it may be filed based upon § 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), should only be filed if the trademark or service mark is currently being used “in commerce”.  On the other hand, intent-to-use trademark or service mark application, also known as a 1b application given that it may be filed based upon § 1(b) of the Trademark Act, 15 U.S.C. § 1051(a), may be filed even though the trademark or service mark is not actually been using commerce.  An intent-to-use trademark or service mark application may be able to reserve the rights to a brand name for goods and services for over three years.

Determining whether a trademark or service mark application based upon use or an intent-to-use trademark or service mark application should be filed is a very important decision. If an incorrect trademark or service mark application for registration is filed, then the trademark or service mark may be canceled in litigation when the stakes are at their highest. A proper determination of whether a trademark or service mark is being used “in commerce” is crucial. The legal definition of being used “in commerce” can be different for both goods and services. Before filing a trademark or service mark a business or individual should seek the advice of an attorney having experience in advising clients about acquiring trademarks and service marks.

A trademark or service mark used for goods and services may be entitled to trademark protection even if the trademark or service mark has not been registered.  United States law may afford an unregistered trademark or service mark protection.  However, registering a trademark or service mark has several advantages.

One advantage for a federally registered trademark or service mark is that any federally registered trademark or service mark gives the trademark or service mark owner nationwide priority. In other words, the registered trademark or service mark may have rights to use the service mark or trademark superior to others throughout the United States. Having superior rights to use a trademark or service mark may afford a business or individual the ability to stop other businesses or individuals from using the market run the country.

Another advantage is that a federally registered trademark or service mark may become incontestable. After five years of continuous use, the owner of the mark may apply to the USPTO for incontestably status.  If this incontestable status is granted, then a business or individual may be able to eliminate expensive legal issues during trademark litigation.

Yet another advantage of a federally registered trademark or service mark is that the owner of the trademark or service mark may be entitled to attorneys fees and costs for having to file a suit against infringers.  The default rule in the United States is that party bears their own costs in litigation regardless of the outcome. However, with a federally registered trademark infringement award for triple the amount of actual damages (“treble damages”), attorneys fees and costs may be awarded during trademark infringement litigation if the trademark owner can prove willful infringement.

Our attorneys are experienced in trademark prosecution, trademark infringement litigation, responding to trademark Office actions, and opposing and defending trademarks in front of the Trademark Trial and Appeal Board.  Our attorneys have applied for and registered hundreds of trademarks and service marks and look forward to using their experience to assist you and your business.  If you have any questions are attorneys are available to answer any trademark related questions that you may have.