Trademarks and Service Marks
The intellectual property attorneys at Schneiders & Associates, L.L.P. provides clients with assistance with the following trademark and service mark services:
- Trademark searching for prior art
- Preparation of trademark applications
- Word trademarks
- Logo trademarks
- Electronic filing of applications
- Responding to Trademark “Office Actions”
- Trademark appeals
- Trademark Opinions
- Trademark oppositions
- Trademark renewals
- Trademark portfolio management
- Trademark infringement (enforcement and litigation)
Depending on the circumstances, you may apply for a trademark or a service mark. Trademarks are words, phrases, symbols or designs, or combinations thereof, that identifies and distinguishes the source of the goods of one party from those of others. While trademarks are used to identify goods, service marks are used to identify and distinguish the source of a service rather than goods. Both marks are afforded the same protections and subject to the same requirements. Whether you need a trademark or service mark, the intellectual property attorneys at Schneiders & Associates, L.L.P. can help.
A trademark can be established simply by using the mark in commerce without registering it with the U.S. Patent and Trademark Office (USPTO). However, registration of a trademark with the USPTO provides advantages to the owner. Registration can serve as public notice of the ownership of the mark. If you want to sue someone for using the mark without permission, it must be registered. Registration creates a legal presumption that you are the owner of the trademark and have the exclusive right to use the mark. In order to use the federal registration symbol ®, the trademark must be registered with the USPTO. However, if you do not register the trademark, you can use “TM” or “SM” to alert the public that you own the trademark or service mark.
In order to register a trademark or service mark, an application must be filed with the USPTO. Filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. It’s advisable to hire an attorney who can help you with the legal requirements of registering a trademark. Our law firm can help you prepare the application and navigate the application process, by, for example, accurately identifying and classifying your goods and services, and preparing responses to any refusals to register that an examining attorney may issue.
Selection of the trademark or service mark must be done with thought and care, because not every mark is registrable with the USPTO. Nor is every mark legally protectable, that is, some marks may not be capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services. Conducting a complete search of your mark before filing an application is very important. Our law firm can help you by conducting a search through millions of registered trademarks to see if there could be a potential problem.
Once the application is filed, it will be assigned to an examining attorney with the USPTO who will conduct a search through registered trademarks and will not register your mark if there is another mark that is similar to yours for related goods or services. The examining attorney may refuse or accept registration, or may issue an “Office Action” refusing the mark but allowing you to respond and make changes to the mark that may allow registration. Our law firm can help you respond to these Office Actions.
There are many reasons a registration may be denied. The most common reason to refuse registration is a “likelihood of confusion” between your mark and a mark already registered or in a prior-filed pending application owned by another party. Even if two marks are found to be confusingly similar, a likelihood of confusion will exist only if the goods and/or services upon which or in connection with the marks are used are, in fact, related. Whether the goods and/or services are related is determined by considering the commercial relationships between the goods and services identified in the application with those identified in the registration or earlier-filed application. The issue is not whether the actual goods and/or services are likely to be confused but, rather, whether a likelihood of confusion would exist as to the source of the goods and/or services. The mark may also not be registered for many other reasons, including but not limited to the mark being: a surname; geographically descriptive of the origin of the goods/ services; disparaging or offensive; a foreign term that translates to a descriptive or generic term; an individual’s name or likeness; the title of a single book and/or movie; and matter that is used in a purely ornamental manner.
After the mark is approved by the examining attorney, it will be published online. The public then has 30 days to oppose registration by filing an opposition. An opposition is similar to a court proceeding, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. Our law firm can help you through an opposition process.
If there is no opposition filed or if you successfully overcome an opposition, you do not need to take any action for the application to enter the next stage of the process. If the application was based upon the mark’s “Use-in-Commerce” (i.e., actual use of the mark in commerce), the USPTO will send a registration certificate about 12 weeks later. If the application was based on “Intent-to-Use” the mark, the USPTO will send a Notice of Allowance (NOA) about 8 weeks after publication. A NOA indicates that your mark has been allowed, but does not mean that it has registered. It will only register once the mark is used in commerce. Our law firm can help you understand the differences between the applications and file the appropriate application for your mark.
Don’t compromise your rights in your trademark or service mark. Contact the intellectual property attorneys at Schneiders & Associates, L.L.P. today for guidance throughout the registration and renewal processes and in preserving your rights against those who infringe on your mark(s).