Albuquerque, New Mexico Businesses Use Cohn Legal for Trademark Service
Cohn Legal was born as an auxiliary branch of an international Intellectual Property firm that has provided legal protection to some of the biggest technology companies in the universe. CLG has since been acquired by Cohn Legal, PLLC and our New York Startup firm has devoted its energies to servicing clients in New York City, the broader Tri-State area, and various cities including Albuquerque and indeed countries throughout the world.
Top Questions Albuquerque Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Albuquerque, New Mexico, Can I Still Obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Albuquerque, New Mexico, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark?
A trademark is a form of intellectual property that identifies and distinguishes the source of goods or services of one party from those of others. It can be a word, phrase, symbol, design, logo, or a combination of these elements used to represent and identify a specific product or service in the marketplace. Trademarks play a crucial role in branding and marketing, as they help consumers recognize and associate a particular product or service with a specific company or organization.
The primary purpose of a trademark is to protect the rights of the owner and prevent others from using a similar mark that could cause confusion among consumers, leading to potential harm to the original brand’s reputation and business. By registering a trademark, the owner gains exclusive rights to use the mark in connection with the goods or services covered by the registration.
Trademark rights can be acquired through actual use in commerce (common law rights) or by registering the mark with the appropriate government authority, such as the United States Patent and Trademark Office (USPTO) in the United States. Registering a trademark provides stronger legal protection and nationwide recognition of the mark’s ownership, making it easier to enforce the rights against infringers.
The process of obtaining a registered trademark typically involves conducting a thorough trademark search to ensure the mark is available and not already in use by someone else for similar goods or services. Once the mark is deemed eligible for registration, an application is submitted to the relevant trademark office, and if approved, the mark is published for opposition. If no one objects to the registration during the opposition period, the mark is registered, and the owner obtains exclusive rights to use the mark in commerce.
In summary, a trademark is a valuable asset for businesses and individuals, as it helps create brand identity, protects against unfair competition, and enables owners to enforce their rights in case of infringement. Whether it’s a name, logo, or slogan, a well-protected trademark can contribute significantly to a company’s success in the market.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, though both serve similar purposes. A trademark is used to identify and distinguish the source of goods, such as physical products or merchandise. On the other hand, a service mark is specifically used to identify and distinguish the source of services provided by a business or individual. In essence, a trademark is associated with tangible goods, while a service mark pertains to intangible services.
For example, if a company sells electronic gadgets like smartphones, they would use a trademark to protect the name, logo, or any other distinguishing symbol associated with those products. Conversely, if another company offers repair and maintenance services for electronic gadgets, they would use a service mark to protect their business name or logo that identifies their service offerings.
While the legal protection and registration process for trademarks and service marks are similar, it’s essential to choose the appropriate category depending on the nature of your business. Some countries, like the United States, use the term “trademark” to encompass both goods and services, and the symbol ™ can be used to indicate both types of marks. However, using the ™ symbol for goods and the ℠ symbol for services can help distinguish between the two.
It’s important to note that not all countries use the ℠ symbol, and some jurisdictions may use different symbols or not differentiate between trademarks and service marks at all. Regardless of the terminology used, registering either a trademark or service mark provides legal protection and exclusive rights to use the mark in connection with the relevant goods or services, preventing others from causing confusion in the marketplace.
In summary, the main difference between a trademark and a service mark lies in their usage: a trademark is associated with goods, while a service mark is associated with services. Both play a critical role in brand protection and recognition, ensuring that consumers can identify the source of products or services they purchase.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol have different meanings and implications concerning trademark status. Understanding the distinction between the two is essential for businesses to communicate their trademark rights accurately.
TM Symbol: The TM symbol stands for “Trademark” and is used to indicate that a word, phrase, logo, or symbol is being claimed as a trademark by a business or individual. Unlike the ® symbol, the TM symbol has no legal significance in terms of registered trademark protection. Instead, it serves as a notice to the public that the owner considers the mark to be their trademark and that they intend to assert their rights over it. The TM symbol can be used with both trademarks and service marks, regardless of whether they are registered with the relevant trademark office.
® Symbol: The ® symbol, on the other hand, indicates that a trademark has been registered with the appropriate government trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States. The ® symbol carries significant legal weight, as it signifies that the trademark owner has exclusive rights to use the mark in connection with the goods or services covered by the registration. Using the ® symbol without a valid registration is illegal and may result in penalties.
The main difference between the two symbols lies in their legal implications and the level of protection they provide:
- Legal Protection: While using the TM symbol offers no automatic legal protection, it does put others on notice that you are claiming rights to the mark. If someone else tries to use a similar mark for related goods or services, you may have a stronger case in enforcing your rights based on prior use.
- Exclusive Rights: The ® symbol, on the other hand, signifies that the trademark has undergone the registration process and has been approved by the trademark office. This provides the trademark owner with a presumption of validity and nationwide exclusive rights to use the mark for the goods or services specified in the registration. It serves as a warning to potential infringers that the mark is protected, and unauthorized use could lead to legal consequences.
Using the appropriate symbol is important for maintaining the integrity of your trademarks and protecting your brand identity. While using the TM symbol is permissible for both registered and unregistered trademarks, using the ® symbol without proper registration is misleading and could lead to legal issues. If you have questions about trademark usage or the registration process, it’s advisable to consult with a qualified trademark attorney to ensure proper protection and enforcement of your intellectual property rights.
How can I determine if a trademark is available?
Determining the availability of a trademark is a crucial step before proceeding with the registration process. Conducting a comprehensive trademark search will help you identify whether there are any existing trademarks that may conflict with your proposed mark. Here are some essential steps to determine if a trademark is available:
- Online Search: Start with a basic online search using search engines like Google or Bing. Look for any businesses or organizations using the same or similar mark in your industry. This initial search can provide some insights, but it may not be sufficient to uncover all potential conflicts.
- Trademark Databases: Utilize official trademark databases provided by the relevant government trademark office. In the United States, you can use the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). Other countries have similar online databases that allow you to search for registered trademarks.
- Similar Goods and Services: Trademarks are registered for specific categories of goods and services. When conducting a search, consider variations of your mark and related goods or services that might be confusingly similar to your proposed mark.
- Hire a Professional Search Firm: For a more comprehensive search, consider hiring a professional trademark search firm or a trademark attorney. These professionals have access to specialized databases and resources that can uncover potential conflicts that might have been missed in a basic search.
- Watch Services: If your preliminary search indicates that your mark is available, you might consider enrolling in a trademark watch service. This service will monitor new trademark applications for similar marks and alert you to potential conflicts.
- Consult with a Trademark Attorney: Even if your search results appear clear, consulting with a trademark attorney is highly advisable. They can provide expert advice, assess potential risks, and guide you through the entire trademark registration process.
It’s important to conduct a thorough search to avoid infringing on existing trademarks, as trademark infringement can lead to costly legal disputes and potentially force you to rebrand your business. By taking the time to ensure your proposed trademark is available, you increase the likelihood of a successful registration and better protect your brand in the long run.
Do I need to conduct a trademark search before filing my application?
While there is no rule or law which mandates that you conduct a trademark search before submitting a trademark application, it is undoubtedly wise and important to do so. The purpose of the trademark search is to uncover any sufficiently similar trademarks, which may bar the admission of your trademark.
Do I need to sell a product or service to obtain a registered trademark?
No, you do not necessarily need to sell a product or service to obtain a registered trademark. Trademark rights can be acquired through actual use of the mark in commerce or by filing an “intent-to-use” application with the relevant trademark office.
- Actual Use-Based Application: If you are already using the mark in commerce, offering goods or services under that mark, and can demonstrate its use, you can file an application for a “use-based” registration. This means that you have already started using the mark in connection with the goods or services, and you are seeking protection for the mark based on that existing use. Actual use-based applications typically require evidence of the mark’s use in the form of specimens, such as product labels, packaging, or advertising materials.
- Intent-to-Use Application: If you have not yet used the mark in commerce but have a bona fide intention to use it in the future, you can file an “intent-to-use” application. This allows you to secure a priority filing date for your mark while you are still in the process of developing your product or service. However, it’s important to note that before the trademark can be registered, you must provide proof of actual use in commerce within a specified period after the application is approved. Failing to provide evidence of use will result in the application being abandoned.
Regardless of whether you file a use-based or intent-to-use application, it’s essential to ensure that your proposed mark is distinctive and not confusingly similar to existing trademarks in the same or related industries. A thorough trademark search, as discussed earlier, is vital in this regard.
It’s worth mentioning that obtaining a registered trademark provides several advantages, including nationwide recognition of your mark and enhanced legal protection against potential infringers. It also gives you the exclusive right to use the mark in connection with the goods or services covered by the registration.
If you plan to use a trademark for your business, product, or service in the future, filing an intent-to-use application can be a proactive step to secure your rights before launching your venture. Consulting with a trademark attorney can help you navigate the application process and ensure that you meet all the necessary requirements for successful registration.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can obtain a federal trademark in the United States, even if you only provide your services locally, as long as you meet certain requirements. Federal trademark registration provides valuable benefits, including nationwide protection and the ability to enforce your rights against infringers in federal court.
To qualify for federal trademark registration, you must meet the following criteria:
- Use in Commerce: You must use the mark in commerce in connection with the services you offer. “Use in commerce” means that the mark is used in a way that directly relates to the services and that the services are provided across state lines or affect interstate commerce. This requirement ensures that federal trademark protection is reserved for marks with a broader geographical impact.
- Lawful Use: Your services and the associated mark must be lawful. Trademark law prohibits the registration of marks that are deceptive, immoral, scandalous, or likely to cause confusion with existing trademarks.
- Distinctiveness: The mark must be distinctive and not merely descriptive of the services you provide. Distinctive marks are easier to register and receive stronger protection. Generic terms or highly descriptive marks are generally not eligible for federal registration.
- Specimen of Use: When applying for federal trademark registration, you will need to submit a specimen of use showing how the mark is used in connection with the services. The specimen should demonstrate that the mark is associated with the services and not just the business name or advertising.
- Specified Goods or Services: You must identify the specific services associated with the mark in your application. The services should be accurately described to ensure proper classification and protection.
Even if your services are localized and limited to a specific area, obtaining federal trademark registration can still be beneficial. It prevents others from using a confusingly similar mark for similar services, even if they operate in different geographical locations. Additionally, if you plan to expand your services beyond your current locality in the future, federal registration will already provide protection in those new areas.
Before filing a federal trademark application, it’s essential to conduct a comprehensive search to ensure the mark is available and not already in use by someone else for similar services. Consulting with a trademark attorney can help you navigate the registration process and increase the likelihood of a successful application.
What should I register first: the name of my business or my brand logo?
When considering trademark registration, businesses often wonder whether they should prioritize registering the name of their business or their brand logo. The decision depends on the significance of each element in your overall branding strategy and the level of protection you seek.
- Registering the Name of Your Business (Word Mark): Registering the name of your business as a word mark provides broad protection for the specific words or combination of words used to identify your goods or services. This means that regardless of the font, style, or color in which the name is presented, you have exclusive rights to use those words in connection with your business. Registering the word mark gives you the flexibility to use various designs or logos over time while maintaining protection for the core business name.
- Registering Your Brand Logo (Design Mark): If your brand logo is distinctive and unique, registering it as a design mark offers protection for the specific design or graphic representation of your logo. This means that others cannot use a confusingly similar logo, even if they use different words or a different business name. Registering a design mark is especially valuable if your logo plays a significant role in consumer recognition and brand identity.
- Registering Both Word Mark and Design Mark: For comprehensive protection, some businesses choose to register both their word mark and their brand logo as separate trademarks. This approach ensures that you have exclusive rights to the specific words and the specific design elements individually. By registering both, you safeguard your business name and logo independently, covering a wider range of potential infringements.
- Combined Word and Design Mark: In some cases, businesses create a combined word and design mark, where the logo incorporates the business name. This allows you to protect both the name and the logo as a single unit, simplifying the registration process. However, it’s important to ensure that the combined mark is distinctive enough to receive trademark protection.
The decision on what to register first depends on your business’s branding strategy, the importance of each element in the marketplace, and the level of protection you seek. Before proceeding with trademark registration, conduct a thorough search to ensure the chosen name or logo is available and not already in use by someone else for similar goods or services.
Enlisting the help of a trademark attorney can be beneficial throughout the registration process. They can advise you on the best approach, ensure compliance with trademark laws, and increase the chances of successful registration, protecting your brand and business identity.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that falls under the category of “distinctive marks” on the spectrum of trademark strength. Fanciful trademarks are considered the strongest and most protectable marks, offering the highest level of trademark protection.
A fanciful trademark is a word or symbol that has been invented or created solely for the purpose of functioning as a trademark and has no meaning or association with the underlying product or service. These marks are entirely unique and have no existing meaning in any language. Because of their inherent distinctiveness, fanciful trademarks are immediately eligible for trademark protection without the need to demonstrate prior use in commerce.
Examples of fanciful trademarks include:
- Kodak: The name “Kodak” was invented by George Eastman, the founder of Eastman Kodak Company, as a distinctive and memorable brand name for photographic equipment and film.
- Xerox: Xerox is a well-known example of a fanciful trademark. The term “xerox” has become synonymous with photocopying, but the word itself was coined by the company and has no previous meaning.
- Exxon: Exxon is another example of a fanciful trademark. It was created as a brand name for the American multinational oil and gas corporation and has no prior meaning or association.
- Clorox: Clorox is a fanciful trademark that was invented by the Clorox Company for their line of bleach products. The term “Clorox” has no existing meaning and serves as a distinctive identifier for their cleaning products.
- Viagra: Viagra is a well-known fanciful trademark for a medication used to treat erectile dysfunction. The term “Viagra” was specifically created to be unique and memorable, with no previous association with the medical product.
Fanciful trademarks offer significant advantages in the marketplace, as they are highly memorable, easily distinguishable from competitors, and enjoy strong legal protection against potential infringements. When creating a new brand or product, choosing a fanciful trademark can be a strategic way to build a strong and recognizable identity in the minds of consumers. Before adopting a fanciful trademark, it’s essential to conduct a comprehensive trademark search to ensure the mark is available and not already in use by someone else in a similar field. Consulting with a trademark attorney can also help you navigate the registration process and protect your valuable intellectual property.
What is TEAS?
TEAS stands for the Trademark Electronic Application System. It is an online platform provided by the United States Patent and Trademark Office (USPTO) that allows individuals and businesses to electronically file trademark applications and manage their trademark registrations.
TEAS offers several benefits and features that streamline the trademark application process, making it faster and more efficient. Here are some key aspects of TEAS:
- Electronic Filing: TEAS enables applicants to submit their trademark applications and related documents electronically. This eliminates the need for paper submissions, reducing processing times and providing immediate confirmation of receipt.
- Different Application Forms: TEAS offers different application forms to accommodate various types of trademark applications. These include the TEAS Plus form, TEAS Reduced Fee (TEAS RF) form, and TEAS Regular form. Each form has specific requirements and fees, catering to the needs of different applicants.
- Lower Filing Fees: The TEAS Plus and TEAS RF forms offer lower filing fees compared to the TEAS Regular form. However, these forms have stricter requirements, such as agreeing to use the USPTO’s standardized goods and services descriptions and committing to file all future communications electronically.
- Online Correspondence: Through TEAS, applicants can communicate with the USPTO electronically. This allows for faster and more efficient exchange of information and reduces the need for traditional paper mail.
- Status Checking: TEAS provides a tracking system that allows applicants to monitor the status of their trademark application throughout the registration process. Applicants can also receive email notifications about important updates or deadlines.
- Document Uploads: Applicants can upload the required documents, such as specimens of use, declarations, and responses to office actions, directly through TEAS.
- Online Payment: TEAS allows for secure online payment of filing fees, maintenance fees, and other charges associated with the trademark application and registration process.
Using TEAS is highly recommended for anyone seeking to register a trademark with the USPTO. It offers a user-friendly interface and reduces the time and cost associated with traditional paper-based filings. However, it’s crucial to ensure accuracy and compliance with all requirements before submitting the application, as errors or omissions can delay the registration process.
While TEAS streamlines the application process, obtaining a registered trademark still requires thorough research, proper classification of goods and services, and adherence to trademark laws and procedures. Consulting with a trademark attorney can be beneficial to ensure a smooth application process and maximize the chances of successful trademark registration.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on various factors, including the type of application, the accuracy of the filing, the responsiveness of the applicant, and the workload of the trademark office. In the United States, the timeline for the trademark application process typically includes the following stages:
- Filing the Application: The initial step involves submitting the trademark application through the Trademark Electronic Application System (TEAS) or a paper application. If the application is complete and accurate, the USPTO will assign a filing date.
- Initial Review and Examination: After the filing date, the application undergoes an initial review by the USPTO to check for compliance with filing requirements. This process usually takes a few weeks to a few months.
- Publication for Opposition: If the examining attorney finds no issues with the application, the mark is published in the Official Gazette for a 30-day opposition period. During this time, third parties can oppose the registration if they believe it may cause confusion with their existing marks.
- Issuance of Registration Certificate: If no opposition is filed or if the opposition is resolved in favor of the applicant, the USPTO will issue a Notice of Allowance or a registration certificate, depending on the type of application filed.
The timeframes for each stage can vary:
– For applications with no issues or oppositions, the process can take approximately 8 to 12 months from filing to registration.
– If there are issues that need to be addressed, such as correcting deficiencies or responding to office actions, the process can take longer, typically extending to 12 to 18 months or more.
– In the case of oppositions, the process can be significantly prolonged, sometimes taking several months to resolve, or even longer if it leads to litigation.
It’s important to note that the timeline provided is a general estimate and can be subject to change based on the complexities of individual cases and the workload of the USPTO at any given time.
To expedite the application process and minimize delays, applicants should ensure that their trademark search is thorough and accurate, the application is properly filled out, and they promptly respond to any communications from the USPTO. Consulting with a trademark attorney can help navigate potential challenges and increase the likelihood of a successful and timely registration.
How long does a trademark last?
Once a trademark is registered, it is essential to understand its duration and the steps required to maintain its protection. In the United States, a registered trademark can last indefinitely, as long as certain requirements are met.
The initial term of a trademark registration is ten years from the date of registration. However, to maintain the registration’s validity, the trademark owner must file specific documents and fees with the United States Patent and Trademark Office (USPTO) at regular intervals.
Renewal Periods:
- Between the 5th and 6th Year: To maintain the registration, a Declaration of Use (or Excusable Nonuse) and a specimen showing the mark’s continued use in commerce must be filed with the USPTO between the fifth and sixth year after the registration date.
- Between the 9th and 10th Year and Every 10 Years After: Additionally, the trademark owner must file a Combined Declaration of Use or Excusable Nonuse and Application for Renewal between the ninth and tenth year and every ten years thereafter.
Apart from the renewal filings, to keep the trademark registration in force, the trademark owner must submit Affidavits of Continued Use or Excusable Nonuse at specific intervals after the initial ten-year term. These affidavits must be filed between the fifth and sixth year after registration and within the year before the end of every ten-year renewal period.
Failure to file the required documents and fees within the specified deadlines can result in the cancellation of the trademark registration, leaving the mark vulnerable to use by others.
After five years of continuous use following the registration date, a trademark owner may apply for “incontestability status” for the registered mark. Incontestability provides additional legal advantages, making it more challenging for others to challenge the validity of the mark based on certain grounds.
It’s essential for trademark owners to stay vigilant about the renewal requirements and maintain accurate records of their mark’s use in commerce to ensure the continued protection of their valuable intellectual property rights. Consulting with a trademark attorney can help navigate the renewal process, ensure compliance with all necessary filings, and maximize the longevity and strength of the registered trademark.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights in the United States can be established through actual use of the mark in commerce, even without a formal registration with the United States Patent and Trademark Office (USPTO). This type of trademark protection is known as common law trademark rights.
When you use a mark to identify your goods or services in the marketplace, you automatically acquire common law trademark rights in the geographic area where the mark is being used. These rights are limited to the specific geographic region where the mark is known to consumers and where you have been using it.
While common law trademark rights offer some level of protection, they are limited in scope compared to the benefits of federal registration. The primary benefits of common law trademark rights include:
- Local Protection: Common law rights provide protection only in the geographic area where the mark is used and known to consumers. This means that others may use a similar mark in other regions without infringing on your rights.
- Limited Enforcement: Enforcing common law rights can be challenging, as you must rely on state laws and legal remedies, which can vary from one jurisdiction to another. Federal registration provides a stronger legal foundation for enforcement.
- Priority: Common law rights are based on the first-to-use principle, which means the first party to use the mark in commerce in a specific geographic area generally has priority over subsequent users.
Registering a trademark with the USPTO offers several significant advantages over common law rights:
- Nationwide Protection: Federal registration provides exclusive rights to use the mark nationwide, regardless of where the mark is actually being used.
- Presumption of Validity: A federally registered trademark is presumed to be valid, making it easier to enforce against potential infringers.
- Public Notice: Registration in the USPTO’s database serves as public notice of your ownership and can deter others from adopting similar marks.
- Right to Use ® Symbol: Only federally registered trademarks can use the ® symbol, which further enhances the mark’s recognition and reinforces its protection.
- Legal Remedies: Federal registration provides access to federal courts and statutory remedies, including potential monetary damages and attorney’s fees in case of infringement.
While federal registration offers stronger and broader protection, the decision to register a trademark depends on various factors, such as the scope of your business operations, expansion plans, and the importance of brand protection. Consulting with a trademark attorney can help you assess your options and develop a comprehensive trademark protection strategy that aligns with your business goals.
Can I file a trademark if I’m not selling any products?
If you want to file a trademark before you’re ready to bring your goods or services to market, then you can do so with an Intent-To-Use (ITU) trademark application.
Section 1(b) of the Lanham Act, 15.U.S.C. § 1051(b) states that “…person who has a bona fide intention, under circumstances showing the good faith of such person, to use a trademark in commerce may request registration of its trademark.”
Once the ITU Trademark Application has been accepted and you have been issued a Notice of Allowance (NOA), you have 6 months to either submit your Statement of Use or file a petition to extend your submission of a Statement of Use. Each extension request will allow the applicant an additional 6 months to provide the Statement of Use. You are allowed up to 5 extension requests.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is a crucial step when navigating the complexities of trademark law and protecting your brand. While it is possible to file a trademark application without legal assistance, consulting with a trademark lawyer can offer numerous benefits and increase the likelihood of a successful and efficient registration process.
Here are some key situations when you should consider hiring a trademark lawyer:
- Trademark Search and Clearance: Before adopting a new brand name, logo, or slogan, conducting a comprehensive trademark search is essential to ensure that the mark is available for use and registration. Trademark lawyers have access to specialized databases and resources that can uncover potential conflicts that might be missed in a basic search.
- Trademark Application Preparation: The trademark application process requires accuracy, attention to detail, and compliance with legal requirements. A trademark lawyer can assist in preparing and filing the application, ensuring that it meets all necessary specifications and avoids common pitfalls that could lead to delays or rejections.
- Trademark Classifications: Trademarks are registered for specific classes of goods or services. Determining the appropriate classes for your products or services can be complex. A trademark lawyer can help you identify the right classifications to ensure your mark is adequately protected.
- Responding to Office Actions: If the USPTO issues an office action raising objections or requiring additional information, a trademark lawyer can help craft a proper response to address the issues effectively and improve the chances of approval.
- Enforcement and Defense: If your trademark rights are being infringed upon or if you receive a cease-and-desist letter alleging infringement, a trademark lawyer can guide you through the enforcement and defense process, protecting your brand and intellectual property rights.
- International Trademark Protection: If you plan to expand your business internationally, a trademark lawyer can assist with global trademark registration strategies and navigate the complexities of international trademark laws.
- Monitoring and Maintenance: Trademark lawyers can help monitor your trademark for potential infringements and ensure timely renewal filings to maintain your registration’s validity.
- Trademark Litigation: In case of trademark disputes or litigation, having an experienced trademark attorney by your side can be invaluable in protecting your interests and advocating for your rights.
Ultimately, consulting with a trademark lawyer early in the process can save time, money, and potential legal issues down the road. A trademark attorney can offer personalized advice and tailor a trademark strategy that aligns with your business goals and helps build a strong brand identity while safeguarding your intellectual property rights.
What is a trademark’s specimen?
In the context of trademark registration, a specimen is a sample or example of how you use your trademark in commerce to identify your goods or services. The United States Patent and Trademark Office (USPTO) requires applicants to submit specimens as evidence of the actual use of the mark in connection with the claimed goods or services.
The purpose of providing a specimen is to demonstrate to the USPTO that the trademark is being used in a consistent and distinctive manner to identify the source of the goods or services. The submitted specimen should show how the mark is displayed to consumers in the ordinary course of trade.
Types of Acceptable Specimens:
The type of specimen required depends on whether the trademark is used for goods or services:
- Goods: For trademarks used on physical products or goods, acceptable specimens may include labels, tags, packaging, product containers, product displays, or photographs showing the mark directly on the goods themselves.
- Services: For trademarks used to identify services, acceptable specimens may include brochures, advertisements, business cards, website screenshots, or other materials that show the mark in connection with the services being offered.
The USPTO has specific requirements for acceptable specimens:
- Use in Commerce: The specimen must show that the mark is being used in commerce for the relevant goods or services. Mere advertising of the mark or a statement of an intention to use the mark in the future is not sufficient.
- Actual Use: The specimen must demonstrate that the mark is currently being used and not merely an example of what the mark might look like in use.
- Distinctiveness: The specimen should display the mark in a clear and distinctive manner, making it easily recognizable to consumers as a source identifier.
- Size and Legibility: The specimen should be of sufficient size and quality to be easily readable and recognizable.
- Consistency: The specimen should match the information provided in the trademark application and should not display any variations or alterations that might affect the mark’s distinctiveness.
It’s essential to provide the correct specimens that meet the USPTO’s requirements, as the acceptance of the specimens can significantly impact the success of the trademark application. Consulting with a trademark attorney can help ensure that the appropriate specimens are submitted, increasing the chances of a successful registration and proper protection of your trademark rights.
Can I request an expedited approval of my trademark registration?
Yes, you can request an expedited approval of your trademark registration under certain circumstances. The United States Patent and Trademark Office (USPTO) offers an expedited review process known as the “TEAS Plus” and “TEAS RF” forms, which provide accelerated processing in comparison to the standard application process.
Here’s an overview of the two expedited options:
- TEAS Plus: The TEAS Plus form is designed for applicants who meet specific requirements. By choosing this option, you agree to use the USPTO’s pre-approved goods and services descriptions, provide all necessary information at the time of filing, and agree to file all subsequent correspondence electronically. In return for adhering to these requirements, the USPTO reduces the filing fee for the application. Additionally, TEAS Plus applications are given priority and are usually reviewed faster than other types of applications.
- TEAS Reduced Fee (TEAS RF): The TEAS RF form is similar to TEAS Plus but allows applicants a bit more flexibility. You can customize the goods and services descriptions slightly, but you must still file all correspondence electronically. The filing fee is slightly higher than TEAS Plus, but lower than the fee for the standard TEAS form.
It’s important to note that while expedited processing can speed up the initial review of your application, it does not necessarily guarantee quicker registration. The overall timeline for the registration process may still vary depending on factors like the complexity of the application, any objections or office actions, and the workload of the USPTO at the time of filing.
Situations Where Expedited Processing May Be Beneficial:
- Time-Sensitive Product Launch: If you are planning to launch a new product or service soon and require a registered trademark for marketing or legal reasons, expedited processing can be advantageous.
- Potential Infringement Concerns: If you believe that others may try to use a similar mark in the near future, obtaining a registered trademark quickly can help protect your brand and preempt potential infringement issues.
- Investment or Licensing Opportunities: In some business transactions or licensing agreements, having a registered trademark can add value to the deal. Expedited processing can be beneficial in such situations.
Before opting for expedited processing, it’s essential to ensure that your trademark is eligible for registration and that you meet the specific requirements for the chosen expedited form. Consulting with a trademark attorney can help you determine the best approach for your unique circumstances and increase the likelihood of a successful and timely registration.
Can I trademark a phrase?
Yes, you can trademark a phrase if it meets the requirements for trademark protection. Phrases can be registered as trademarks if they are used to identify the source of goods or services and if they are distinctive enough to set them apart from common phrases or expressions.
To be eligible for trademark protection, a phrase must possess the following characteristics:
- Distinctiveness: The phrase must be distinctive and not merely descriptive of the goods or services it identifies. Distinctive phrases are more likely to receive trademark protection. Fanciful, arbitrary, or suggestive phrases are considered inherently distinctive, while descriptive or generic phrases may face challenges in obtaining trademark protection.
- Use in Commerce: To apply for federal trademark registration in the United States, you must demonstrate that the phrase is used in commerce to identify and distinguish your goods or services from others. “Use in commerce” means the phrase is used in connection with the sale or advertising of goods or services across state lines or in interstate commerce.
- Non-Confusing: The phrase should not cause confusion with existing trademarks. The USPTO will conduct a search to ensure that the phrase is not similar to other registered marks for related goods or services.
- No Prohibited Content: The phrase must comply with trademark law and not contain immoral, scandalous, or offensive content.
Examples of trademarked phrases include:
– Nike’s “Just Do It”
– Apple’s “Think Different”
– McDonald’s “I’m Lovin’ It”
It’s important to note that obtaining trademark protection for a phrase can be more challenging than for other types of trademarks, especially if the phrase is common or descriptive. In such cases, acquiring secondary meaning—a mental association between the phrase and a particular source—through extensive use and public recognition can bolster the chances of successful registration.
Before attempting to trademark a phrase, it’s advisable to conduct a comprehensive search to ensure that the phrase is available for registration and does not infringe on existing trademark rights. Consulting with a trademark attorney can help you navigate the registration process, determine the distinctiveness of your phrase, and increase the likelihood of obtaining trademark protection for your valuable intellectual property.
Can I trademark a logo?
Yes, you can trademark a logo to protect its use as a source identifier for your goods or services. A logo is a visual representation that can include a combination of words, designs, shapes, colors, or symbols, and it serves to distinguish your brand from others in the marketplace.
To obtain trademark protection for a logo, certain requirements must be met:
- Distinctiveness: Like any other trademark, a logo must be distinctive and not generic or descriptive. Strong logos are typically more easily registrable and receive broader protection. Fanciful, arbitrary, or suggestive logos are considered inherently distinctive and are more likely to be approved for registration.
- Use in Commerce: To apply for federal trademark registration in the United States, you must demonstrate that the logo is currently being used in commerce to identify and distinguish your goods or services. “Use in commerce” means the logo is used in connection with the sale or advertising of goods or services across state lines or in interstate commerce.
- Non-Confusing: The logo should not cause confusion with existing trademarks. The USPTO will conduct a search to ensure that the logo is not similar to other registered marks for related goods or services.
- No Prohibited Content: The logo must comply with trademark law and not contain immoral, scandalous, or offensive content.
Examples of trademarked logos include:
– The Nike “Swoosh”
– The Apple logo
– The McDonald’s golden arches
Registering your logo as a trademark provides several benefits, including exclusive nationwide rights to use the logo in connection with the goods or services it represents. It also grants you legal recourse against potential infringers and offers a stronger foundation for enforcing your intellectual property rights.
Before applying for trademark registration, it’s essential to conduct a comprehensive search to ensure that your logo is available for registration and does not infringe on existing trademark rights. Consulting with a trademark attorney can help you navigate the registration process, assess the distinctiveness of your logo, and maximize the chances of obtaining trademark protection for your valuable brand identity.
Can I trademark a color?
Yes, under certain circumstances, you can trademark a color to identify and distinguish your goods or services. However, obtaining trademark protection for a single color can be challenging, as color marks are considered inherently less distinctive than other types of trademarks.
To successfully trademark a color, you must demonstrate that the color has acquired “secondary meaning” in the minds of consumers, meaning that the color has become closely associated with your brand or the source of your goods or services. This association should be a result of extensive use and marketing efforts that have established a clear connection between the color and your brand in the eyes of consumers.
Requirements for Trademarking a Color:
- Distinctiveness: The color must be used in a way that is unique and distinctive in your industry or market. It should not be a common or functional color used by competitors.
- Secondary Meaning: You must provide evidence that the color has acquired secondary meaning among consumers, indicating that they associate the color exclusively with your brand.
- Use in Commerce: To apply for federal trademark registration, you must demonstrate that the color is used in commerce to identify and distinguish your goods or services.
Examples of Trademarked Colors:
Some famous examples of trademarked colors include:
– Tiffany & Co.’s distinctive robin’s egg blue color used for their packaging and branding.
– UPS’s brown color used for their delivery trucks and uniforms.
– Home Depot’s orange color used for its store signage and branding.
It’s crucial to note that obtaining trademark protection for a single color can be a complex process, and the USPTO’s examination of color trademarks is rigorous. To increase the likelihood of a successful registration, you should work with a trademark attorney who can guide you through the application process, gather the necessary evidence to establish secondary meaning, and present a compelling case for the distinctiveness of the color in connection with your brand.
Overall, while it is possible to trademark a color, it requires strong evidence of consumer recognition and association, making it a more challenging task than obtaining trademark protection for other types of marks.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to someone else through a process called trademark assignment. A trademark assignment is a legal transfer of ownership rights from one party (the assignor) to another party (the assignee). This transfer of ownership can be partial or complete, depending on the specific rights being transferred.
Types of Trademark Assignments:
- Complete Assignment: In a complete assignment, the owner transfers all rights and ownership of the trademark to the assignee. This includes the exclusive right to use the trademark, the right to enforce it against infringers, and the right to license or sell the mark.
- Partial Assignment: In a partial assignment, the owner transfers only certain rights or specific aspects of the trademark to the assignee. For example, the owner may transfer the right to use the mark in specific geographic regions or for particular goods or services.
To properly transfer a trademark, the following requirements must be met:
- Written Agreement: The assignment must be documented in writing and signed by both the assignor and the assignee. This written agreement serves as evidence of the transfer of rights and helps avoid disputes in the future.
- Recordation with the USPTO: While it is not a legal requirement, it is advisable to record the trademark assignment with the United States Patent and Trademark Office (USPTO). Recording the assignment provides public notice of the transfer and helps establish the assignee’s rights against third parties.
- Goodwill and Quality Control: If the trademark is associated with specific goods or services, the assignment should include provisions ensuring that the quality and reputation of the goods or services under the mark will be maintained by the assignee.
Trademark assignments are common in various situations:
– Business Transfers: During the sale or transfer of a business, the trademark rights may be assigned to the new owner as part of the assets.
– Licensing: Trademark owners may license the use of their mark to others for a fee, and the license agreement may include provisions for eventual trademark assignment.
– Corporate Reorganization: In the case of corporate mergers, acquisitions, or restructuring, trademark rights may be assigned to a new entity.
– Asset Protection: Trademark owners may assign their rights to a separate entity for asset protection or strategic reasons.
When dealing with trademark assignments, it’s crucial to seek the guidance of a trademark attorney to ensure that the transfer is conducted properly and that all legal requirements are met. This will help protect the interests of both the assignor and the assignee and prevent potential disputes or challenges to the assignment in the future.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows the owner (licensor) of the trademark to grant permission to another party (licensee) to use the trademark in connection with specific goods or services, subject to certain terms and conditions.
Key Aspects of Trademark Licensing:
- Scope of License: The trademark licensing agreement should clearly define the scope of the license, including the specific goods or services for which the trademark can be used, the geographic region where the mark can be used, and the duration of the license.
- Quality Control: As the trademark owner, you have a duty to maintain the quality and reputation of your mark. The licensing agreement should include provisions that ensure the licensee meets certain quality standards and maintains the goodwill associated with the trademark.
- Payment Terms: The agreement should outline the financial terms of the license, including any upfront fees, ongoing royalties, or other compensation to be paid to the licensor.
- Term and Termination: The duration of the license and conditions for termination should be clearly defined in the agreement. This helps protect both parties’ interests and avoids any misunderstandings regarding the license’s duration.
- Intellectual Property Rights: The licensing agreement should specify that the licensee acknowledges the licensor’s ownership of the trademark and that the license does not grant any ownership rights to the licensee.
Trademark licensing offers several benefits to both the licensor and the licensee:
– Revenue Generation: Licensing your trademark allows you to generate additional revenue by granting others the right to use your mark in exchange for licensing fees or royalties.
– Brand Exposure: Licensing your trademark to a third party can increase brand exposure and visibility, especially if the licensee operates in different markets or regions.
– Market Expansion: Licensing your trademark to a licensee with an established presence in a new market or industry can help you expand your brand’s reach without the need for direct involvement.
– Risk Mitigation: For licensees, using an established and recognized trademark can reduce the risk of launching a new product or service with an unknown brand.
– Product Diversification: For licensors, licensing can allow for product diversification without direct involvement in manufacturing or distribution.
It’s important to note that trademark licensing agreements should be carefully drafted to protect the interests of both parties and to comply with trademark laws and regulations. Working with a trademark attorney is crucial to ensure that the licensing agreement is legally sound and meets the specific needs and goals of both the licensor and the licensee.
If my trademark is registered in the United States is it protected in other countries as well?
No, a trademark registration in the United States does not automatically provide protection in other countries. Trademark rights are territorial, which means they are generally limited to the country where the mark is registered or used. Therefore, if you want to protect your trademark in other countries, you will need to apply for registration in each country or region where you seek protection.
To protect your trademark in multiple countries, there are several options available:
- Madrid System (Madrid Protocol): The Madrid System is an international treaty that allows trademark owners to seek protection in multiple countries by filing a single international application with their home country’s trademark office. This application is then forwarded to the countries or regions where protection is sought. It streamlines the application process and simplifies management and renewal of the mark in different jurisdictions. However, it’s essential to note that not all countries are part of the Madrid System.
- Regional Trademark Systems: Some countries have regional trademark systems that allow you to obtain protection in multiple countries within a specific geographic region through a single application. An example of this is the European Union Intellectual Property Office (EUIPO), which provides protection in all EU member states through a single application.
- Individual Country Applications: If your trademark is essential in specific countries outside the United States, you can file separate applications in each of those countries. This approach may be necessary if the countries you are targeting are not part of the Madrid System or other regional systems.
Benefits of International Trademark Registration:
– Global Brand Protection: International registration helps ensure that your brand is protected in key markets, reducing the risk of unauthorized use by others.
– Enforcement and Legal Remedies: Registered trademarks in other countries provide a stronger legal foundation to enforce your rights and pursue legal remedies against infringers.
– Brand Expansion: International registration allows you to expand your business and brand presence in foreign markets with confidence.
– Licensing and Franchising Opportunities: An international trademark portfolio can increase the value of your brand and create licensing or franchising opportunities in different regions.
Registering a trademark internationally can be complex, as it involves dealing with different legal systems, languages, and trademark examination processes in each country. Engaging the services of a qualified trademark attorney who specializes in international trademark law is highly recommended to navigate the intricacies and ensure proper protection of your trademark rights on a global scale.
Is there such a thing as an “International Trademark”?
While there is no single “international trademark” that provides worldwide protection for a mark, there are mechanisms and treaties in place that facilitate the process of obtaining trademark protection in multiple countries. These mechanisms help streamline the application process and make it more manageable for trademark owners seeking protection in various jurisdictions.
Madrid System (Madrid Protocol):
The Madrid System is one such international treaty that allows trademark owners to seek protection in multiple countries by filing a single international application with their home country’s trademark office. This application is then forwarded to the countries or regions where protection is sought. The Madrid System is administered by the World Intellectual Property Organization (WIPO). Not all countries are part of the Madrid System, but it includes a significant number of countries worldwide.
European Union Trade Mark (EUTM):
For businesses looking to protect their trademarks in the European Union (EU) member states, the European Union Trade Mark (EUTM), formerly known as the Community Trade Mark (CTM), provides a regional trademark registration system. With a single application filed through the European Union Intellectual Property Office (EUIPO), trademark owners can secure protection in all EU member states.
African Regional Intellectual Property Organization (ARIPO) and African Intellectual Property Organization (OAPI):
For businesses interested in protecting their trademarks in specific African regions, ARIPO and OAPI provide regional trademark registration systems that cover multiple countries within those regions.
Benefits of International Trademark Systems:
– Simplified Application Process: International trademark systems streamline the application process, allowing trademark owners to file a single application rather than separate applications in each country of interest.
– Cost-Effectiveness: Filing one international application can be more cost-effective than applying individually in multiple countries.
– Centralized Management: After registration, the management and maintenance of the trademark portfolio can be centralized, making it easier to monitor and enforce rights.
– Uniformity and Consistency: With international registration, trademark protection can be more consistent across different countries, promoting brand recognition and trust.
It’s essential to note that while international trademark systems offer valuable advantages, each country’s trademark laws and examination processes still apply. This means that the success of an international trademark application depends on the specific requirements and criteria of each country.
To navigate the complexities of international trademark protection and ensure a successful application, seeking guidance from a specialized trademark attorney with expertise in international trademark law is highly recommended. Such an attorney can help you determine the best strategy for your brand’s global expansion and ensure proper protection of your valuable intellectual property rights.
What is a trademark office action?
A trademark office action is an official communication issued by the examining attorney at the United States Patent and Trademark Office (USPTO) in response to a trademark application. The purpose of the office action is to inform the applicant about issues or deficiencies with the application that need to be addressed before the mark can be approved for registration.
Types of Office Actions:
- Substantive Office Action: This type of office action addresses substantive issues with the application, such as conflicts with existing trademarks, lack of distinctiveness, or issues with the identification of goods or services. The examining attorney will provide specific reasons for the refusal and may request additional information or evidence.
- Non-Substantive Office Action: Non-substantive office actions usually pertain to procedural or technical matters, such as corrections to the application form, missing fees, or clarifications needed in the application.
Responses to Office Actions:
When an applicant receives an office action, they must respond appropriately within the specified deadline. Failure to respond or provide a satisfactory response can lead to the abandonment of the trademark application. The response should address the issues raised in the office action and provide any necessary amendments, clarifications, or evidence to support the registration.
Timeline and Deadlines:
The USPTO typically provides a six-month deadline to respond to an office action. However, extensions of time may be available under certain circumstances. It’s crucial to adhere to the specified deadline to avoid potential delays or the risk of application abandonment.
Consulting with a Trademark Attorney:
Receiving a trademark office action can be daunting, especially for applicants unfamiliar with the process. Engaging the services of a trademark attorney is highly recommended at this stage. An experienced attorney can carefully review the office action, analyze the issues raised, and develop a strategic and persuasive response to increase the chances of overcoming any refusals and obtaining trademark registration.
Having legal representation also ensures that the response complies with all necessary legal requirements and addresses the examiner’s concerns comprehensively. A trademark attorney can be an invaluable resource in navigating the complex process of responding to office actions and ensuring a smooth path to the successful registration of your trademark.
What should I do if I receive an office action on my trademark application?
Receiving a trademark office action can be a critical moment in the trademark registration process. It’s essential to respond promptly and appropriately to address the issues raised by the examining attorney at the United States Patent and Trademark Office (USPTO). Here are the steps you should take if you receive an office action:
- Thoroughly Review the Office Action: Carefully read and understand the office action to identify the specific issues raised by the examining attorney. There are two types of office actions: substantive and non-substantive. Understand whether the objections are related to substantive matters, such as conflicts with existing marks or lack of distinctiveness, or if they pertain to procedural or technical issues.
- Consult with a Trademark Attorney: Engage the services of a trademark attorney as soon as possible. An experienced attorney can help you interpret the office action, assess the strength of the objections, and develop an appropriate response strategy.
- Gather Evidence and Information: Work with your trademark attorney to gather any necessary evidence or additional information that supports the distinctiveness or registrability of your mark. This may include evidence of use, consumer surveys, or other documentation that reinforces your claim to the mark.
- Prepare a Comprehensive Response: Craft a well-reasoned and persuasive response to address each issue raised in the office action. Your response should be clear, concise, and supported by relevant evidence. If changes or amendments to the application are necessary, ensure they are accurately made.
- Submit the Response Within the Deadline: The USPTO typically provides a six-month deadline to respond to an office action. It’s essential to submit your response within this timeframe. If you need more time, your trademark attorney can request an extension, but it’s crucial to plan and manage your time effectively.
- Monitor the Application Status: After submitting your response, monitor the status of your application regularly. The USPTO may require additional time to review your response and make a final decision on your trademark registration.
- Consider the Next Steps: Depending on the USPTO’s response to your reply, there may be further actions or requirements. Your trademark attorney can guide you through any additional steps needed to advance the application towards registration.
Responding to a trademark office action requires a thorough understanding of trademark law, the application process, and the specific issues raised. Engaging an experienced trademark attorney ensures that your response is well-prepared, increases the likelihood of overcoming any refusals, and ultimately helps you secure trademark registration for your valuable brand.
How do I enforce my trademark rights?
Enforcing your trademark rights is crucial to protect your brand’s reputation and prevent others from using your mark without permission. If you believe someone is infringing on your trademark, here are the steps you can take to enforce your rights:
- Monitor and Identify Infringement: Regularly monitor the marketplace, including online platforms and social media, to identify any unauthorized use of your trademark. Look for similar marks or use of your mark in connection with goods or services that may cause confusion among consumers.
- Document Infringement: Keep detailed records of instances where your trademark is being used without authorization. Take screenshots, collect evidence of infringement, and note dates and locations of infringing activities.
- Cease and Desist Letter: The first step in enforcing your trademark is often to send a cease and desist letter to the infringing party. The letter should assert your trademark rights, identify the infringing activity, and demand that the party stops using your mark immediately.
- Negotiation and Settlement: In some cases, the infringing party may be willing to resolve the matter through negotiation and reach a settlement. This could involve a licensing agreement or an agreement to change their mark.
- Administrative Proceedings: If negotiation fails, you may consider filing a complaint with the appropriate administrative body. For example, domain name disputes involving trademarks can be resolved through the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or through the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.
- Trademark Litigation: If all other attempts at resolution fail, you may need to pursue legal action by filing a lawsuit in federal court to stop the infringement and seek damages.
- International Enforcement: If the infringement occurs in multiple countries, you may need to enforce your trademark rights through the legal systems of each country where the infringement is taking place.
Benefits of Enforcing Trademark Rights:
– Brand Protection: Enforcing your trademark rights helps protect your brand’s reputation and integrity, ensuring that consumers associate your mark with your products or services.
– Market Exclusivity: By stopping unauthorized use of your mark, you maintain exclusive rights to use it in connection with the registered goods or services.
– Preventing Consumer Confusion: Enforcing your trademark prevents consumer confusion, which can be harmful to your brand’s image and business.
– Legal Remedies: Successfully enforcing your trademark rights can lead to various legal remedies, including injunctions to stop the infringement, monetary damages, and the infringing party’s surrender of infringing goods or domain names.
Enforcing your trademark rights can be complex and may require legal expertise. Consult with a trademark attorney to develop a strategic enforcement plan and ensure that your rights are protected effectively.
How do I register a federal trademark?
To obtain a federally registered trademark, you need to fill out and submit a trademark application to the United States Patent and Trademark Office, or USPTO. The trademark application will contain information about the applicant, the desired trademark, and the nature of the goods or services to be protected under the trademark.
The USPTO examining attorney will first evaluate the distinctiveness of the applicant’s mark and then search the USPTO database to see if there are any trademarks already existing that are similar to the trademark you’re hoping to get.
Assuming that the examining attorney approves your application, the trademark will get printed in the USPTO’s Official Gazette for a 30-day period of “publication.” During that time any third party with a legitimate claim against the filing can submit an “opposition” to the application. If no oppositions are submitted, the applicant’s trademark application will be cleared for final registration.
Why Trademark Registration Matters for Albuquerque Businesses
With a friendly population and strong economy, Albuquerque, New Mexico is an up-and-coming Midwestern city that’s attracting more and more entrepreneurs each year. If you’re ready to start your business in Albuquerque, don’t overlook the all-important step of trademark registration.
Imagine the following: Jean loves her hometown of Albuquerque, New Mexico. One thing she realized that the downtown area is missing is a high-quality maternity clothing store. She found it so hard to find clothes she liked while pregnant.
That gives Jean an idea to start working on a business plan for a maternity clothing store. She first finds a small storefront for sale and signs the lease. Jean calls the store Motherhood and gets to work ordering inventory, hiring staff, and investing in-store signage. She also sets up a website for online orders and advertises in local papers.
Jean has her grand opening, but unfortunately, the boutique isn’t open for very long. There’s a small chain of maternity clothing stores called Motherhood in New Jersey and New York. The chain registered the trademark years ago, while Jean completely forgot to pursue trademark registration
The larger chain sent Jean a cease-and-desist letter, asking her to refrain from doing business until she has renamed her business. The rebranding will cost Jean a lot of time and money. This could have been avoided if she had contacted a trademark attorney right from the beginning of her business venture.
When you’re thinking of opening a new business, trademark registration should be at the top of your to-do list. If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
** Cohn Legal, PLLC is not located in New Mexico and yet it can assist businesses from New Mexico in registering a federal Trademark because trademarks are governed under federal law.