Athens, Georgia Businesses Use Cohn Legal for Trademark Services
Cohn Legal, PLLC is committed to delivering unparalleled legal counsel and expertise to clients in Athens, Georgia. The trademark lawyers of Cohn Legal are acting as legal consigliere to their clients, ensuring that their business interests and intellectual property rights are protected at all times. Excellence in legal representation is guaranteed, but we also take great pride in forming lasting bonds with everyone we work with.
Top Questions Athens Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Athens, Georgia, 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 Athens, Georgia, 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 distinctive symbol, word, phrase, design, or combination thereof that is used to identify and distinguish the source of goods or services provided by one entity from those of others in the marketplace. Essentially, a trademark serves as a commercial identifier, helping consumers recognize and associate products or services with a particular brand or company. By using a trademark, a business can build brand recognition and protect its unique identity from being used by others in a way that could cause confusion among consumers.
Trademarks play a crucial role in the business world, as they allow companies to establish a reputation for quality and reliability. When consumers encounter a familiar trademark, they often have certain expectations about the products or services associated with it, which can influence their purchasing decisions.
To gain trademark protection, the mark must meet certain criteria. It should be distinctive and not generic, merely descriptive, or likely to cause confusion with existing trademarks. Additionally, the mark must be used in commerce to identify the goods or services it represents. Trademarks can be registered with the United States Patent and Trademark Office (USPTO) or other national trademark offices, which provides enhanced legal protection and benefits to the trademark owner.
In summary, a trademark is a powerful tool for brand recognition and protection, helping businesses differentiate themselves in the market and build consumer trust and loyalty. Registering a trademark offers additional legal advantages, ensuring exclusive rights to use the mark in connection with the specified goods or services.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, although both serve the same essential purpose of identifying and distinguishing the source of goods or services. The primary distinction lies in the nature of the products they represent. A trademark is used to identify and distinguish goods, which are tangible products such as electronics, clothing, or food items. On the other hand, a service mark is used to identify and distinguish services provided by a business.
For example, if a company sells smartphones, the name or logo associated with the smartphones would be protected as a trademark. However, if another company offers repair services for smartphones, the name or logo representing their services would be protected as a service mark.
The legal protections and application processes for trademarks and service marks are generally similar. In the United States, both trademarks and service marks are registered through the USPTO using the same application process, but applicants need to specify whether they are seeking protection for a product (trademark) or a service (service mark).
In summary, the main difference between a trademark and a service mark lies in the type of goods or services they represent, with trademarks being used for tangible products and service marks for services offered by a business. Despite this distinction, the purpose of both is to safeguard the commercial identity and reputation of a brand.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol both have distinct meanings related to trademark usage, and understanding the difference between them is crucial for businesses seeking to protect their brand identities.
- TM Symbol: The TM symbol stands for “trademark” and is used to indicate that a word, phrase, logo, or design is being used as a trademark or a service mark, even if the mark is not yet registered with the appropriate trademark office. Businesses can use the TM symbol freely without any formal registration process. It serves as a notice to the public that the mark is being used as a source identifier and that the owner claims rights to it. However, using the TM symbol does not grant the same level of legal protection as a registered trademark.
- ® Symbol: The ® symbol, on the other hand, indicates that a trademark has been officially registered with the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO). Once a trademark is registered, the owner gains significant legal benefits and protection, including the exclusive right to use the mark nationwide in connection with the goods or services specified in the registration. Unauthorized use of a registered trademark may lead to legal action, and the owner may be entitled to damages or other remedies.
Using the ® symbol without proper registration is illegal and can lead to severe penalties. Therefore, it is essential for businesses to wait until their trademark is officially registered before using the ® symbol.
In summary, the TM symbol is used to indicate that a mark is being used as a trademark or service mark, while the ® symbol indicates that the mark has been officially registered with the relevant trademark office, granting the owner enhanced legal protection and rights. Using the TM symbol is a way to put others on notice that you claim rights to the mark, but registering the trademark provides stronger protection and legal advantages.
How can I determine if a trademark is available?
Before applying for a trademark, it is crucial to determine whether the desired mark is available for use and registration. Conducting a comprehensive trademark search is essential to avoid potential conflicts with existing trademarks and to ensure the mark meets the necessary criteria for registration.
Here are the steps to determine if a trademark is available:
- Preliminary Search: Start with a preliminary search using the USPTO’s online database, which contains registered trademarks and pending applications. This search will provide some initial information about potentially conflicting marks.
- Full Availability Search: To ensure a more thorough search, consider engaging a professional trademark search company or an experienced trademark attorney. They can perform a comprehensive search that includes federal, state, and common law databases, as well as domain names and internet searches. This comprehensive search can identify potential conflicts that may not be apparent in the USPTO database.
- Trademark Attorney Review: Once the search results are obtained, it’s essential to have a trademark attorney review the findings. They can analyze the search results and provide legal advice on the availability and registrability of the proposed mark.
- Consider Legal Advice: If there are potential conflicts or similar marks found during the search, the trademark attorney can advise on the risks and potential strategies to address the issues.
In summary, conducting a thorough trademark search is a critical first step in the trademark registration process. It helps ensure that the desired mark is available for use and registration, reducing the risk of future disputes and legal challenges. Engaging the expertise of a trademark attorney can provide valuable guidance throughout the search and registration process.
Do I need to conduct a trademark search before submitting a trademark application?
It’s not required that you conduct a trademark search before submitting your trademark application. However, it’s highly recommended that you do.
A search may reveal that your mark is too similar to an existing trademark or one that’s pending approval. If that’s the case, you’ll have to adjust your trademark so it is more unique.
It may be frustrating to see that someone has already registered the mark that you want, however, it’s better to discover this before you file your application and pay the associated fees.
Do I need to sell a product or service to obtain a registered trademark?
No, it is not necessary to sell a product or service to obtain a registered trademark. In the United States and many other countries, trademark rights are established through actual use of the mark in commerce, rather than solely through registration. This means that as long as you are using the mark in connection with goods or services in a way that distinguishes your business from others, you may be eligible for common law trademark protection.
Common law trademark rights arise from the first use of the mark in commerce. These rights provide some level of protection within the geographic area where the mark is being used, even without formal registration. However, common law protection has its limitations compared to registered trademarks.
Registering a trademark with the United States Patent and Trademark Office (USPTO) or the trademark office of another country offers several advantages:
- Nationwide Protection: A registered trademark provides exclusive rights to use the mark nationwide for the goods or services specified in the registration. Common law protection, on the other hand, is limited to the specific geographic area where the mark is being used.
- Presumption of Ownership: Registration creates a legal presumption of ownership and validity, making it easier to enforce your rights against potential infringers.
- Public Notice: Registering a trademark places others on notice of your claim to the mark, which can discourage others from using a similar mark and helps prevent unintentional infringement.
- Ability to Use ® Symbol: Only registered trademarks are entitled to use the ® symbol, which further enhances the mark’s visibility and protection.
In conclusion, while it is not mandatory to sell a product or service to establish common law trademark rights, registering a trademark offers significant benefits and protections that are not available through common law alone. If you have plans to expand your business or protect your brand on a broader scale, seeking federal registration for your trademark is highly recommended.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can obtain a federal trademark even if you provide your services locally and not on a nationwide scale. Trademarks are territorial in nature, which means that they are protected only within the geographic area where the mark is being used or where the owner has established a reputation for the goods or services associated with the mark.
When applying for a federal trademark registration with the United States Patent and Trademark Office (USPTO), you will need to specify the geographic scope of your mark’s use. If your services are primarily offered within a specific city, county, or state, you can apply for what is known as a “Section 1(a) in-use” basis on the application.
By choosing the in-use basis, you are declaring that you are currently using the mark in commerce in connection with the services specified in the application. You will need to provide evidence of this use, which can include advertising materials, business documentation, or customer testimonials, to demonstrate that the mark is associated with your services within your local area.
Obtaining federal trademark registration provides several advantages, even for businesses with local operations:
- Enhanced Protection: Federal registration provides stronger legal protection for your mark compared to common law rights.
- Expansion Possibilities: Registering your mark at the federal level gives you the option to expand your services beyond your local area in the future without having to reapply for trademark protection.
- Brand Recognition: A federal trademark can help build brand recognition and consumer trust, even if your services are currently localized.
- Preventing Others: Federal registration can prevent others from registering a similar mark and operating in your area, even if they have not used the mark as extensively as you have.
In summary, if you are providing services locally and want to protect your brand and reputation, federal trademark registration is a valuable step to consider. It provides additional legal benefits and ensures your mark is safeguarded not only in your local area but also if you decide to expand your services to other regions in the future.
How do I register a trademark?
To register a trademark, you need to complete and submit a trademark application to the USPTO through the Trademark Electronic Application System (TEAS). TEAS is an online portal where you can submit your application and pay any associated fees.
After the application is submitted, an examining attorney at the USPTO will evaluate your application and your trademark. If there are any issues with your application or your desired trademark, then you’ll receive an office action from the examining attorney. You’ll typically have 6 months to resolve any of the issues found in the office action.
After you resolve those issues, or if no issues were found to begin with, the examining attorney will approve your trademark for publication in the Trademark Official Gazette, the USPTO’s online newsletter.
Your mark will be listed in the Official Gazette for a 30-day “opposition” period. During those 30 days, any third party who believes that the registration of your mark will harm their business may come forward and file a complaint.
If no one comes forward, then your trademark will move to the next stages of the approval process.
What should I register first: the name of my business or my brand logo?
Deciding what to register first, the name of your business or your brand logo, depends on the distinctive elements of each and the level of protection you want for your intellectual property.
- Registering the Name of Your Business: If the name of your business is unique, distinctive, and serves as a primary identifier of your products or services, it may be beneficial to register it as a trademark. Registering the business name provides broader protection for the brand as a whole and allows you to prevent others from using similar names in connection with similar goods or services.
- Registering Your Brand Logo: If your brand logo contains unique and distinctive design elements that set it apart from others in your industry, it may also be a strong candidate for trademark registration. Registering your logo provides specific protection for the visual representation of your brand, and you can prevent others from using similar logos that may cause confusion among consumers.
In some cases, it may be wise to consider registering both the name of your business and your brand logo if they each have significant distinctiveness and value. By doing so, you create a more comprehensive level of protection for your intellectual property.
Benefits of Registering Both Business Name and Brand Logo:
- Comprehensive Protection: Registering both the business name and the brand logo provides a well-rounded approach to protecting your brand identity. This combination allows you to safeguard the verbal and visual aspects of your brand simultaneously.
- Flexibility: Registering both the name and logo separately allows you to use them together or independently. This flexibility can be valuable if you plan to diversify your products or services in the future.
- Enforcement: Having multiple registered trademarks strengthens your position when enforcing your rights against potential infringers. It gives you broader legal grounds to protect your brand against unauthorized use.
- Brand Recognition: A strong, consistent brand image helps build recognition and consumer loyalty. Registering both the name and logo can enhance your brand’s marketability and distinctiveness.
Before deciding which to register first, it’s essential to conduct a thorough search to ensure that the name and logo you intend to register are available and not infringing on existing trademarks. Working with a trademark attorney can be valuable during this process, as they can provide guidance on the distinctiveness of your elements and the best strategy for protecting your brand.
In conclusion, registering both the name of your business and your brand logo can provide comprehensive protection for your intellectual property and enhance your brand’s visibility and recognition in the market. Each element plays a significant role in building your brand identity, and securing trademark registration for both can offer substantial benefits for your business in the long run.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that derives its distinctiveness from being an entirely invented or made-up word or symbol. Unlike descriptive or generic marks, which describe the goods or services they represent, fanciful trademarks have no inherent meaning or connection to the products or services they identify. These marks are coined terms or designs created solely to function as a brand identifier.
Examples of fanciful trademarks include well-known brands like “Kodak” for cameras, “Xerox” for photocopiers, and “Google” for the internet search engine. These terms did not exist before they were adopted as trademarks, and their uniqueness made them strong and enforceable marks.
The primary advantage of choosing a fanciful trademark is its inherent strength in terms of distinctiveness and protectability. Since the term is completely new and has no existing associations, it is less likely to be confused with other marks in the marketplace. This unique quality makes it easier to obtain and enforce trademark rights.
In contrast, descriptive or generic marks can be challenging to protect and register as trademarks because they merely describe the goods or services offered, and others may legitimately need to use those terms in their business. Generic terms, in particular, cannot function as trademarks at all, as they are the common names for the goods or services themselves.
When considering a fanciful trademark, it is essential to balance the distinctiveness of the mark with its potential to convey a positive image or evoke emotions in consumers. The mark should be easy to remember and pronounce, as this can enhance its effectiveness as a brand identifier.
In conclusion, a fanciful trademark is an invented word or design that serves as a strong and distinctive brand identifier. By choosing a fanciful mark, businesses can create a unique and protectable brand identity that stands out in the market and is less prone to confusion with other trademarks. Consulting with a trademark attorney during the selection and registration process can help ensure the chosen mark meets the necessary criteria and offers the best protection for the business’s 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 applicants to file trademark applications and manage their trademark-related matters electronically. TEAS simplifies and streamlines the trademark application process, making it more efficient and accessible for applicants and their attorneys.
There are several versions of TEAS available, each tailored to different types of trademark applications and specific needs. The main types of TEAS applications are:
- TEAS Plus: This is the most cost-effective option for filing a trademark application. It requires applicants to meet specific requirements, such as providing a detailed description of the goods or services, selecting goods or services from pre-approved USPTO lists, and agreeing to communicate with the USPTO electronically. In return, the application fee is lower compared to other TEAS options. However, if any of the requirements are not met, the application may be converted to the regular TEAS option.
- TEAS Reduced Fee (TEAS RF): This option also offers reduced filing fees but is less restrictive than TEAS Plus. Applicants still need to agree to communicate with the USPTO electronically, but they have more flexibility in terms of the goods and services description.
- TEAS Regular: This is the standard TEAS option, which allows more flexibility in the goods and services description but has higher filing fees compared to TEAS Plus and TEAS RF.
- TEAS Renewal: This option is used for filing trademark renewals.
- TEASi: TEASi is a specialized version of TEAS for applicants and attorneys based outside of the United States. It is used to file applications under the Madrid Protocol, an international treaty that allows for the international registration of trademarks.
Using TEAS offers numerous benefits, including:
– Convenience: As an online platform, TEAS allows applicants to file applications and manage trademark-related documents from anywhere with internet access.
– Reduced Processing Time: Electronic filing through TEAS typically results in faster processing times compared to paper filings.
– Real-time Status Updates: Applicants can check the status of their applications and receive notifications about important milestones in real-time.
– Secure and Efficient Communication: TEAS enables secure electronic communication between applicants and the USPTO, reducing paperwork and enhancing efficiency.
In conclusion, TEAS is a valuable tool provided by the USPTO that allows trademark applicants to file applications and manage their trademark-related matters conveniently and efficiently. Whether choosing TEAS Plus, TEAS RF, or TEAS Regular, utilizing this electronic application system can streamline the trademark registration process and provide greater transparency and communication throughout the application journey.
How long does the trademark application process take?
The duration of the trademark application process can vary significantly based on several factors. While some applications may proceed relatively quickly, others may encounter delays or face challenges that extend the overall process. On average, the trademark application process in the United States can take anywhere from several months to over a year or more to reach a final decision. Below are the key stages that contribute to the timeline:
- Filing the Application: The initial step is filing the trademark application with the United States Patent and Trademark Office (USPTO). The processing time for the USPTO to initially review and approve the application for filing is typically a few weeks to a few months.
- Publication for Opposition: After the USPTO completes its initial review, the trademark application is published in the Official Gazette, a weekly publication. This triggers a 30-day period during which third parties can oppose the registration of the mark if they believe it may cause confusion with their own trademarks. If no oppositions are filed, the application can move forward.
- Examination and Office Actions: The application then undergoes examination by a USPTO examining attorney. The attorney reviews the application to ensure it complies with all legal requirements and that there are no conflicting marks. If any issues are identified, the USPTO will issue an Office Action, notifying the applicant of the deficiencies or objections that need to be addressed. The applicant typically has six months to respond to the Office Action.
- Amendments and Responses: If the examining attorney finds any deficiencies in the application or raises objections, the applicant’s response to the Office Action may require amendments to the application or additional arguments to overcome the objections. The process of going back and forth with the USPTO in this manner can extend the overall processing time.
- Approval and Registration: If the examining attorney approves the application and no further objections or refusals are encountered, the mark will be allowed for registration. The applicant then pays the registration fee, and the mark is officially registered with the USPTO.
- Total Processing Time: Considering all the stages involved, the total processing time for a trademark application can vary. Simple applications with no objections or oppositions might proceed to registration in several months. More complex applications with objections or oppositions can take a year or longer to finalize.
It’s important to note that unforeseen delays and complexities can arise during the application process, and the responsiveness of the applicant in addressing any issues can also impact the timeline. To ensure a smoother and more efficient process, working with an experienced trademark attorney can be advantageous, as they can guide applicants through the various stages, help address potential challenges, and keep the process on track.
In conclusion, the duration of the trademark application process depends on factors such as the complexity of the application, any objections or oppositions encountered, and the applicant’s responsiveness in addressing issues. While some applications may be completed relatively quickly, it is best to anticipate several months to over a year for the entire process from filing to registration.
How long does a trademark last?
Once a trademark is registered with the United States Patent and Trademark Office (USPTO), it does not have an indefinite term. Trademarks are granted protection for a specific period and can be renewed indefinitely, as long as the mark continues to be used in commerce and the renewal requirements are met.
In the United States, a registered trademark initially has a term of ten years from the date of registration. However, to maintain the protection of the mark, trademark owners must file renewal applications with the USPTO. Trademark renewals are required every ten years.
Trademark Renewal Process:
- First Renewal: The first renewal is due between the ninth and tenth anniversary of the trademark registration date. During this period, the trademark owner must file a combined declaration of use and incontestability under Section 8 and Section 15 of the Lanham Act. The purpose of this filing is to declare that the mark is still in use in commerce and to claim incontestable status for the mark, which provides additional legal advantages.
- Subsequent Renewals: After the first renewal, subsequent renewals are required every ten years following the initial registration. The same combined declaration of use and incontestability must be filed each time to maintain the registration.
Continuous Use Requirement:
In addition to the renewal requirement, trademark owners must continuously use the mark in commerce to keep it active and enforceable. Failure to use the mark for a specific period can result in the mark becoming vulnerable to cancellation for non-use.
Important Deadlines:
Trademark owners should be aware of the following important deadlines:
– Between the fifth and sixth year from the date of registration, a Section 8 declaration of continued use must be filed with the USPTO to confirm that the mark is still in use.
– Between the ninth and tenth year from the date of registration, the first renewal application (combined declaration of use and incontestability) must be filed.
– Subsequent renewals (combined declaration of use and incontestability) are due every ten years thereafter.
It is crucial to keep track of these deadlines to ensure the ongoing protection of your trademark.
In conclusion, a registered trademark in the United States lasts for an initial term of ten years from the date of registration. However, trademark owners must file renewal applications and continue to use the mark in commerce to maintain its protection. By following the renewal requirements and using the mark consistently, trademark owners can enjoy ongoing protection and exclusivity for their brand identity. Working with a trademark attorney can be beneficial in managing the renewal process and ensuring compliance with all necessary requirements.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it, and in many countries, including the United States, trademark rights are established through actual use of the mark in commerce. This means that as soon as you start using a specific word, phrase, logo, or design to identify your goods or services in the marketplace, you have what are known as common law trademark rights.
Common law trademark rights provide a certain level of protection within the geographic area where the mark is being used, even without formal registration. However, relying solely on common law rights has its limitations compared to registered trademarks.
The main advantages of using a trademark without registration are:
- Immediate Rights: By using the mark in commerce, you gain rights to that mark in connection with the goods or services you offer from the date of first use.
- Established Market Presence: Using a trademark helps you establish your brand identity and build consumer recognition and trust.
- Enforcement Against Local Infringement: Common law trademark rights allow you to take legal action against others who may try to use a similar mark within the same geographic area where you have established rights.
However, there are significant benefits to registering your trademark:
- Enhanced Protection: Registering your trademark with the United States Patent and Trademark Office (USPTO) provides stronger legal protection nationwide, offering broader rights and making it easier to enforce your mark against potential infringers.
- Public Notice: Registration puts others on notice of your claim to the mark, which can help deter potential infringers and avoid unintentional infringement.
- Presumption of Ownership: Registration creates a legal presumption of ownership and validity, making it easier to enforce your rights in court.
- Use of ® Symbol: Only registered trademarks are entitled to use the ® symbol, which further enhances the mark’s visibility and protection.
In summary, using a trademark without registration grants you common law rights to the mark, but the protection is limited to the specific geographic area where the mark is used. Registering your trademark with the USPTO provides stronger and broader protection nationwide, along with additional legal benefits. If you have plans to expand your business beyond your current geographic area or want the most robust protection for your brand, seeking federal registration for your trademark is highly recommended. A trademark attorney can guide you through the registration process and help ensure that your mark receives the maximum protection available.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is a prudent step at various stages of your business development and brand protection journey. Whether you are just starting a business, considering a new brand name, or facing trademark-related challenges, a trademark lawyer can provide valuable guidance and expertise. Here are some key scenarios where it is advisable to seek the assistance of a trademark lawyer:
- Brand Creation and Selection: When creating a new brand or choosing a name for your business or product, a trademark lawyer can conduct comprehensive searches to determine if the desired mark is available and not infringing on existing trademarks. They can assess the distinctiveness and strength of the mark, reducing the risk of future legal issues and enhancing the chances of successful registration.
- Trademark Application Filing: While it is possible to file a trademark application on your own, working with a trademark lawyer ensures that your application is correctly prepared and includes all necessary information. A lawyer can navigate the complexities of the application process, increasing the likelihood of successful registration and avoiding potential refusals or objections.
- Trademark Disputes: If your trademark faces opposition during the registration process or if you receive a cease-and-desist letter from another party claiming infringement, a trademark lawyer can help assess the situation and develop a strategic response. They can represent you in negotiations or legal proceedings to protect your rights and brand reputation.
- Trademark Portfolio Management: If you have multiple trademarks or plan to expand your brand internationally, a trademark lawyer can assist in managing your trademark portfolio. They can advise on registration strategies, monitor trademark use, and handle renewal and maintenance filings.
- Trademark Enforcement: If you believe someone is using your trademark without permission or if you encounter counterfeit products bearing your mark, a trademark lawyer can help enforce your rights and take appropriate legal action against infringers.
- Licensing and Contracts: If you intend to license your trademark to others or enter into agreements involving your intellectual property, a trademark lawyer can draft and review licensing agreements and contracts to protect your interests and ensure compliance with trademark laws.
- International Trademark Protection: If you plan to expand your business globally, a trademark lawyer with expertise in international trademark laws can guide you through the intricacies of trademark registration in other countries and help ensure your brand is adequately protected.
In summary, hiring a trademark lawyer is advisable in various situations to ensure your brand is adequately protected and to navigate the complexities of trademark law. From brand creation to enforcement and international expansion, a lawyer can offer invaluable advice and representation, safeguarding your intellectual property and helping you build a strong and successful brand. Working with a qualified trademark attorney can save you time, money, and potential legal troubles while maximizing the value and impact of your trademarks.
What is a trademark’s specimen?
A trademark specimen is a crucial element of the trademark application process that demonstrates how the mark is being used in commerce to identify and distinguish goods or services. The United States Patent and Trademark Office (USPTO) requires applicants to submit a specimen as evidence of the mark’s actual use in connection with the applied-for goods or services.
The purpose of the specimen is to show that the mark is not merely an idea or concept but is being used in a real business context as a source identifier. It helps the USPTO ensure that the mark is not being sought for speculative or inappropriate purposes.
Types of Trademark Specimens:
The type of specimen required depends on whether the mark is associated with goods or services:
- Goods: For trademarks used with tangible products, acceptable specimens include labels, tags, packaging, product displays, or photographs showing the mark directly on the goods themselves or on their packaging.
- Services: For trademarks used with services, acceptable specimens may include brochures, advertisements, website screenshots, business cards, or photographs showing the mark in connection with the performance of the services.
Requirements for Acceptable Specimens:
To be accepted by the USPTO, a specimen must meet certain criteria:
- Actual Use: The specimen must show that the mark is currently in use in commerce for the specific goods or services listed in the trademark application.
- Distinctiveness: The mark must be displayed prominently and clearly, so it is easily identifiable as a source identifier.
- Inclusive Display: The specimen should include all elements of the mark that are claimed in the application, such as design elements, colors, and wording.
- Appropriate Size: The specimen should be large enough and have sufficient resolution for easy viewing and identification.
- Dates and Labels: The specimen should also include any necessary dates of use and labels to identify the goods or services in question.
Submitting an incorrect or unacceptable specimen can result in delays or refusals in the application process. It is essential to ensure that the specimen aligns with the USPTO’s requirements to avoid complications.
In summary, a trademark specimen is evidence of the actual use of the mark in commerce for the goods or services listed in the application. It is a critical element in the application process, demonstrating that the mark is being used as a source identifier in real-world business activities. Providing a proper and acceptable specimen helps streamline the trademark registration process and enhances the chances of successful registration. If you have any doubts about the appropriateness of your specimen, consulting with a trademark attorney can provide valuable guidance and ensure that your application meets all the necessary requirements.
Can I request an expedited approval of my trademark registration?
Yes, under certain circumstances, you can request an expedited approval of your trademark registration with the United States Patent and Trademark Office (USPTO). The USPTO offers two main programs that allow for accelerated processing of trademark applications:
- TEAS Reduced Fee (TEAS RF) Program: This program allows applicants to receive a reduced filing fee for their trademark application in exchange for agreeing to use electronic communication for all correspondence with the USPTO. While this program does not guarantee expedited examination, it often results in faster processing times compared to regular applications.
- TEAS Accelerated Examination (TEAS AE) Program: This program is designed to significantly speed up the examination process for certain applications. To qualify for TEAS AE, the applicant must meet specific requirements and follow a set of guidelines established by the USPTO. These requirements include:
– Providing a detailed description of the goods or services, following the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual).
– Submitting evidence of current use of the mark in commerce, including a specimen showing the mark in use with the goods or services.
– Agreeing to use electronic communication for all correspondence with the USPTO.
If the TEAS AE application meets all the necessary requirements and passes the initial review, it will be placed in an accelerated examination queue, which can significantly reduce the overall processing time. The goal of the TEAS AE program is to issue a final decision on the application within approximately two to three months from the filing date.
It’s important to note that while the TEAS AE program can expedite the examination process, it does not guarantee registration. The application must still meet all legal requirements for registration, and any substantive issues or objections raised during examination must be addressed appropriately.
Not all applications are eligible for the TEAS AE program, and meeting the program’s requirements can be complex. Therefore, it is advisable to consult with a trademark attorney if you are considering applying for expedited processing. An experienced attorney can help determine if your application is eligible for the TEAS AE program and guide you through the process, increasing the likelihood of a successful and timely registration of your trademark.
In conclusion, expedited approval of trademark registrations can be sought through the TEAS RF program, which offers a reduced filing fee, or the TEAS AE program, which provides accelerated examination for qualified applications. Working with a trademark attorney can be beneficial in determining eligibility, meeting program requirements, and ensuring the successful and timely processing of your trademark application.
Can I trademark a phrase?
Yes, you can trademark a phrase under certain conditions. Trademark protection is available for distinctive phrases that are used to identify and distinguish your goods or services in the marketplace. However, not all phrases are eligible for trademark registration. To be eligible, a phrase must meet certain criteria:
- Distinctiveness: The phrase must be distinctive and not merely descriptive or generic. Distinctive phrases are more likely to be granted trademark protection because they have the ability to uniquely identify the source of the goods or services. Fanciful, arbitrary, or suggestive phrases are considered inherently distinctive and can be easier to register. Descriptive phrases may be eligible for registration if they have acquired secondary meaning, which means that consumers associate the phrase with a specific source due to long-term use and promotion.
- Use in Commerce: To be eligible for trademark registration, the phrase must be used in commerce in connection with specific goods or services. Use in commerce means that the phrase is being used in the ordinary course of trade to sell, advertise, or promote goods or services.
- Non-Functional: The phrase should not be functional, meaning it should not describe an essential characteristic or feature of the goods or services it identifies. Functional phrases cannot be registered as trademarks because they are necessary for describing the products or services accurately.
- Not Confusingly Similar: The phrase must not be confusingly similar to an existing registered trademark or a pending application for a similar mark. A trademark search is crucial to determine if the phrase is available for registration and does not infringe on existing marks.
Once you have determined that your phrase meets the criteria for trademark registration, you can proceed with the application process. The application will need to include a specimen showing how the phrase is being used in commerce and specify the goods or services with which the phrase is associated.
It’s important to note that trademark registration grants protection for the phrase in connection with specific goods or services. It does not prevent others from using the same phrase for unrelated goods or services. However, if the phrase becomes well-known and associated with your brand, you may acquire common law rights to prevent others from using it in other contexts.
Working with a trademark attorney during the application process can be beneficial, as they can help ensure that your phrase meets the necessary criteria and guide you through the complexities of trademark law. Additionally, they can conduct a thorough trademark search to assess the availability of the phrase for registration and provide guidance on the best approach to protect your intellectual property.
In conclusion, you can trademark a phrase that is distinctive, used in commerce, non-functional, and not confusingly similar to existing marks. Registering a phrase as a trademark provides legal protection and exclusive rights to use the phrase in connection with the specified goods or services, enhancing your brand identity and preventing others from using similar marks in the same context.
Can I trademark a logo?
Yes, you can trademark a logo. In fact, logo trademarks are among the most common types of trademarks registered with the United States Patent and Trademark Office (USPTO) and other trademark offices worldwide. Trademark protection for a logo helps you establish and safeguard your brand identity, making it easier for consumers to recognize and associate your products or services with your business.
To successfully trademark a logo, it must meet certain criteria:
- Distinctiveness: Like any other trademark, the logo must be distinctive and capable of identifying the source of your goods or services. Fanciful, arbitrary, or suggestive logos are considered inherently distinctive and have a higher likelihood of receiving trademark protection. Logos that are descriptive or generic may be eligible for registration if they have acquired secondary meaning through extensive use and promotion.
- Use in Commerce: To be eligible for trademark registration, the logo must be in use in commerce in connection with specific goods or services. Use in commerce means that the logo is being used to sell, advertise, or promote products or services.
- Non-Functional: The logo should not be functional; it should not describe an essential feature or characteristic of the goods or services it represents. Functional logos cannot be registered as trademarks because they are necessary for describing the products or services accurately.
- Non-Infringing: The logo must not be confusingly similar to an existing registered trademark or a pending application for a similar mark. A comprehensive trademark search is essential to ensure that your logo is unique and does not infringe on the rights of others.
To apply for a logo trademark, you will need to submit a specimen showing how the logo is being used in commerce, along with a detailed description of the goods or services with which the logo is associated. The USPTO and other trademark offices will review your application to ensure it meets all the necessary requirements before granting registration.
Registering your logo as a trademark provides several advantages:
- Exclusive Rights: Trademark registration gives you exclusive rights to use the logo in connection with the specified goods or services, preventing others from using a similar logo that may cause confusion among consumers.
- Legal Protection: Trademark registration provides legal protection, allowing you to take legal action against infringers and counterfeiters.
- Brand Recognition: A registered logo enhances brand recognition and distinguishes your products or services from competitors in the market.
- Market Value: A registered logo can add value to your business and may be considered an important asset if you decide to sell or license your brand in the future.
In conclusion, trademarking a logo is a crucial step in protecting your brand identity and establishing a strong market presence. To ensure a smooth and successful trademark registration process, working with a trademark attorney is recommended. They can guide you through the application process, conduct a thorough trademark search, and ensure that your logo meets all the necessary criteria for registration. With a registered logo trademark, you can confidently promote your brand and build consumer trust in your products or services.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances. However, obtaining a color trademark can be more challenging than trademarking other types of marks, such as words or logos. To successfully trademark a color, the color must have acquired what is known as “secondary meaning” or “acquired distinctiveness.”
Secondary Meaning and Acquired Distinctiveness:
In trademark law, “secondary meaning” refers to the perception of consumers that a particular color is associated with a specific brand or source of goods or services. For a color to be eligible for trademark protection, it must go beyond its ordinary descriptive function and serve as a unique identifier of a particular brand.
To demonstrate acquired distinctiveness, you need to show evidence that consumers have come to recognize the color as identifying your brand or distinguishing your products or services from those of others. This evidence typically includes consumer surveys, market research, advertising and promotional materials, and any other relevant documentation that proves the color has become distinctive through its association with your brand.
Examples of Registered Color Trademarks:
Several well-known brands have successfully registered color trademarks. Some notable examples include:
- Tiffany Blue: The distinctive blue color used by Tiffany & Co. on its jewelry boxes and other products is a registered trademark.
- UPS Brown: United Parcel Service (UPS) has a registered trademark for the brown color used on its delivery trucks and uniforms.
- Home Depot Orange: The orange color used by The Home Depot for its home improvement stores is a registered trademark.
Functionality Concerns:
One significant challenge in obtaining a color trademark is the issue of functionality. If the color serves a functional purpose in the product or industry, it cannot be registered as a trademark. For example, if a color is necessary for a product to function or is commonly used in an industry for practical reasons, it may be considered functional and ineligible for trademark protection.
Distinctive Packaging or Trade Dress:
In some cases, a color may be registered as part of a distinctive product packaging or trade dress. Trade dress refers to the overall visual appearance of a product’s packaging or design, and it can include colors, shapes, graphics, and other non-functional elements that serve to identify the source of the product.
In conclusion, while it is possible to trademark a color, it requires showing that the color has acquired distinctiveness and serves as a unique identifier of your brand. Obtaining a color trademark can be complex, and functionality concerns may arise. To navigate the process successfully, it is advisable to work with a trademark attorney who can guide you through the application process, provide strategic advice, and gather the necessary evidence to support your claim of acquired distinctiveness. A well-established and distinctive color trademark can strengthen your brand identity and set your products or services apart from competitors in the market.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to someone else through a process known as trademark assignment. Trademark assignment involves transferring the ownership of the trademark rights from one party (the assignor) to another party (the assignee). This transfer of ownership can occur for various reasons, such as selling a business, merging with another company, or simply transferring the trademark to another individual or entity.
Types of Trademark Assignments:
- Assignment with Goodwill: An assignment with goodwill occurs when the entire business or a portion of it, including the associated trademark, is transferred to another party. In this type of assignment, the assignee assumes not only the ownership of the trademark but also the rights to use the mark in connection with the goods or services for which it was originally registered.
- Assignment without Goodwill: An assignment without goodwill, also known as an assignment in gross, occurs when only the trademark itself is transferred, without any associated business or ongoing use of the mark. This type of assignment is more limited, and the assignee acquires only the ownership rights to the trademark and not the right to use the mark in connection with specific goods or services. To use the mark, the assignee would need to submit a new application or demonstrate continued use of the mark under the new ownership.
Trademark Assignment Process:
The trademark assignment process typically involves the following steps:
- Agreement: The assignor and the assignee enter into a written agreement outlining the terms and conditions of the assignment. The agreement should include details such as the specific trademark being assigned, any associated goodwill, the consideration (payment or other value) for the assignment, and any restrictions or conditions of the transfer.
- Recordation with the USPTO: To make the assignment official, the assignor must record the assignment with the United States Patent and Trademark Office (USPTO) by submitting the necessary paperwork. While recording the assignment is not mandatory, it is highly recommended, as it provides notice to the public of the change in ownership and helps protect the assignee’s rights.
Effect of Trademark Assignment:
Upon completion of the assignment process and recordation with the USPTO, the assignee becomes the new owner of the trademark rights. The assignee assumes all the rights and responsibilities associated with the trademark, including the exclusive right to use the mark in connection with the specified goods or services.
In conclusion, trademark assignment allows for the transfer of ownership of a trademark from one party to another. Whether it is an assignment with goodwill or an assignment without goodwill, a written agreement outlining the terms of the transfer is essential. Recording the assignment with the USPTO helps establish the assignee’s ownership and provides public notice of the change in ownership. If you are considering assigning your trademark or acquiring a trademark through assignment, it is advisable to work with a trademark attorney who can assist in preparing the assignment agreement, ensuring compliance with legal requirements, and facilitating the recordation process with the USPTO.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Licensing your trademark allows you (the licensor) to grant permission to another individual or entity (the licensee) to use your trademark in connection with specific goods or services, while still retaining ownership of the trademark. This arrangement allows the licensee to benefit from the reputation and recognition associated with your trademark, while you receive compensation in the form of royalties or licensing fees.
Key Elements of a Trademark Licensing Agreement:
A well-drafted trademark licensing agreement should include the following key elements:
- Grant of License: The agreement should clearly specify the scope of the license, including the specific trademark being licensed and the geographical area in which the licensee is authorized to use the mark.
- Quality Control: As the trademark owner, you have a vested interest in maintaining the quality and reputation associated with your mark. The agreement should outline the quality standards that the licensee must meet when using the trademark.
- Royalties and Fees: The licensing agreement should state the amount and method of calculating royalties or licensing fees that the licensee is required to pay to you in exchange for using the trademark.
- Duration and Termination: The agreement should specify the duration of the license and the conditions under which it can be terminated, such as breach of contract or failure to pay royalties.
- Intellectual Property Ownership: The agreement should reaffirm your ownership of the trademark and clarify that the licensee’s use of the mark does not grant them any rights to the trademark other than those explicitly stated in the agreement.
- Usage Guidelines: Including usage guidelines in the agreement can help ensure that the trademark is used consistently and in a manner that aligns with your brand’s image and values.
Benefits of Trademark Licensing:
Licensing your trademark can bring several benefits, including:
- Generating Revenue: Licensing allows you to generate additional revenue from your trademark without directly manufacturing or distributing products or services.
- Expanding Market Reach: By allowing others to use your trademark, you can expand your brand’s presence into new markets and reach a broader audience.
- Brand Recognition: Increased usage of your trademark through licensing can lead to greater brand recognition and consumer awareness.
Risks and Considerations:
While trademark licensing can be beneficial, it also comes with certain risks. For instance, if the licensee fails to meet quality standards or engages in improper use of the mark, it could harm your brand’s reputation. To mitigate these risks, it is essential to include clear quality control provisions in the licensing agreement and conduct periodic audits to ensure compliance.
In conclusion, trademark licensing allows you to grant permission to others to use your trademark in connection with specific goods or services, while you retain ownership of the mark. A well-drafted licensing agreement can ensure that both parties’ interests are protected and that the trademark is used in a manner consistent with your brand’s image. If you are considering licensing your trademark, consulting with a trademark attorney can be beneficial in preparing a comprehensive licensing agreement and navigating the complexities of trademark law to ensure a successful licensing arrangement.
If my trademark is registered in the United States, is it protected in other countries as well?
No, a trademark registered in the United States is not automatically protected in other countries. Trademark rights are territorial, meaning that they are generally limited to the country or region where the trademark is registered. If you wish to protect your trademark in other countries, you must file separate trademark applications in each country where you seek protection.
International Trademark Protection:
To secure trademark protection in multiple countries, there are two main routes that applicants often consider:
- Filing Individual Applications: This involves filing separate trademark applications directly with the intellectual property offices of each country where protection is desired. Each application will be examined according to the specific laws and regulations of the country in question.
- International Trademark Registration (Madrid System): The Madrid System for the International Registration of Marks provides a mechanism for trademark owners to seek protection in multiple countries through a single international application. The system is administered by the World Intellectual Property Organization (WIPO). Under the Madrid System, you can designate multiple member countries in a single application and pay a single set of fees. The application is then forwarded to each designated country’s trademark office for examination and registration.
Benefits of International Registration:
Using the Madrid System for international trademark registration offers several advantages:
- Cost-Effective: By filing a single international application, you can potentially save on filing fees compared to filing individual applications in each country.
- Simplified Process: The Madrid System streamlines the administrative process for seeking international protection, as you deal with one central authority (WIPO) instead of multiple national offices.
- Flexibility: You can add additional countries to your international registration at a later date, making it easier to expand your trademark protection as your business grows.
Limitations and Considerations:
It’s important to note that not all countries are members of the Madrid System. Additionally, individual countries can still refuse to register a trademark based on their own examination process and criteria. If your international application faces an objection or refusal in a specific country, you may need to address the issues raised by that country’s trademark office.
Furthermore, the Madrid System is based on the principle of “central attack,” which means that if the original U.S. trademark registration is cancelled or abandoned within the first five years from the date of the international registration, the corresponding international registrations will also be cancelled.
In conclusion, a trademark registered in the United States does not automatically receive protection in other countries. If you wish to protect your trademark internationally, you can do so by filing separate applications in each country or by using the Madrid System for international registration. An experienced trademark attorney can guide you through the process, help determine the best strategy for your international trademark protection, and ensure that your rights are effectively secured in the countries that matter most to your business.
Is there such a thing as an “International Trademark”?
While there is no “international trademark” that provides a single worldwide trademark registration or protection, there are mechanisms and agreements in place to facilitate the process of seeking trademark protection in multiple countries. These mechanisms aim to simplify and streamline the application and registration procedures for trademarks across different jurisdictions.
One of the most significant international agreements related to trademark protection is the Paris Convention for the Protection of Industrial Property, administered by the World Intellectual Property Organization (WIPO). The Paris Convention allows applicants to claim priority based on their first filing in one member country when seeking registration in another member country. This means that if you have filed a trademark application in your home country that is a member of the Paris Convention, you can subsequently file applications in other member countries within a specific timeframe (usually six months) and claim the filing date of your first application as the priority date for the subsequent applications.
Another important international mechanism is the Madrid System for the International Registration of Marks, also administered by WIPO. As mentioned earlier, the Madrid System allows trademark owners to seek protection in multiple member countries through a single international application, simplifying the process and reducing costs.
Despite these international agreements, it’s important to understand that each country’s trademark laws and registration procedures are independent, and obtaining trademark protection in multiple countries requires filing separate applications in each jurisdiction. The laws, requirements, and examination processes can vary significantly from country to country, making it essential to work with experienced trademark attorneys who are familiar with the specific requirements of each jurisdiction.
Furthermore, not all countries are parties to these international agreements, and some countries may have specific rules and limitations on international trademark applications. Therefore, it is crucial to conduct thorough research and strategic planning when seeking trademark protection in multiple countries.
In conclusion, while there is no single “international trademark” that provides worldwide protection, there are international agreements and systems in place to facilitate the process of seeking trademark protection in multiple countries. The Paris Convention and the Madrid System are two essential mechanisms that help simplify and streamline the international trademark registration process. However, trademark protection remains territorial, and obtaining protection in different countries requires separate applications and compliance with each country’s trademark laws. Engaging the services of a qualified trademark attorney can help navigate the complexities of international trademark protection and ensure that your trademarks receive the necessary protection in the jurisdictions that matter to your business.
What is a trademark office action?
A trademark office action is an official communication from the trademark examining attorney at the United States Patent and Trademark Office (USPTO) or a similar intellectual property office in other countries. The purpose of the office action is to inform the trademark applicant of any issues or deficiencies found during the examination of the trademark application.
When you submit a trademark application, it goes through a thorough examination process by a trademark examining attorney. The attorney reviews the application to ensure it meets all legal requirements and does not conflict with existing trademarks. If the examining attorney identifies any issues with the application, they will issue an office action outlining the concerns and requesting additional information or clarification.
Types of Office Actions:
There are two main types of office actions:
- Non-Final Office Action: This is the initial office action that occurs during the examination process. The examining attorney may raise issues such as:
– Likelihood of confusion with existing trademarks.
– Descriptiveness or genericness of the mark.
– Inadequate or incorrect description of goods or services.
– Incomplete or unclear information in the application.
The applicant is given a specific period (usually six months) to respond to the non-final office action, addressing the issues raised or making amendments to the application as necessary.
- Final Office Action: If the applicant’s response to the non-final office action does not fully resolve the issues raised by the examining attorney, a final office action may be issued. A final office action reiterates the concerns from the non-final office action and informs the applicant that their time to respond is limited (typically six months) and that further response may require additional fees.
Responding to Office Actions:
When an office action is issued, it is essential for the applicant to carefully review the examiner’s comments and instructions. A well-prepared response is crucial to overcoming any objections or refusals and obtaining successful registration of the trademark.
In the response, the applicant must provide persuasive arguments, evidence, or amendments to address the issues raised by the examining attorney. If necessary, the applicant can also seek legal assistance from a trademark attorney, who can provide valuable guidance and advocate on behalf of the applicant to resolve the issues in the best possible way.
Consequences of Not Responding:
Failure to respond to a non-final or final office action within the designated timeframe will result in the abandonment of the trademark application. If the issues raised in the office action are not addressed adequately, the USPTO will refuse registration of the trademark.
In conclusion, a trademark office action is an official communication from the trademark examining attorney, highlighting any concerns or issues with the trademark application. Applicants must carefully review and respond to the office action within the specified timeframe to overcome any objections and secure successful registration of their trademark. Seeking legal guidance from a trademark attorney can be beneficial in crafting a well-prepared response and navigating the examination process to protect your intellectual property rights effectively.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand identity and prevent unauthorized use of your trademark by others. If you believe that someone is infringing on your trademark or using a similar mark that could cause confusion among consumers, taking prompt and appropriate enforcement actions is crucial. Here are steps you can take to enforce your trademark rights:
- Monitor and Detect Infringement: Regularly monitor the marketplace, including online platforms, to identify any unauthorized use of your trademark or similar marks that could lead to confusion. This can be done through manual searches or by using trademark monitoring services.
- Gather Evidence: If you identify potential infringement, gather evidence of the unauthorized use, including screenshots, product samples, advertisements, and any other documentation that demonstrates the infringement.
- Cease and Desist Letter: The first step in enforcing your trademark rights is usually sending a cease and desist letter to the infringing party. The letter should clearly state your trademark rights, identify the infringing use, and demand that the infringer immediately stop using the mark in question.
- Negotiate Resolution: In some cases, the infringing party may be willing to cooperate after receiving the cease and desist letter. You can engage in negotiations to reach a resolution, which may involve the infringing party ceasing the use of the mark or modifying their mark to avoid confusion.
- Mediation or Settlement: If negotiations do not lead to a resolution, you may consider mediation or settlement discussions to find a compromise that protects your trademark rights and avoids costly legal proceedings.
- Trademark Opposition or Cancellation Proceedings: If the infringing party refuses to cooperate, or if the infringement is significant, you may initiate trademark opposition or cancellation proceedings before the trademark office to challenge the registration or use of the infringing mark.
- Litigation: If all other attempts at resolution fail, you may need to take the matter to court and file a trademark infringement lawsuit. An infringement lawsuit seeks to obtain a court order to stop the infringing use and may also seek damages or other remedies for the harm caused by the infringement.
- Customs Recordation: If your business involves the import or export of goods, you can record your trademark with customs authorities to help prevent the importation of counterfeit or infringing goods.
- International Enforcement: If you have registered your trademark in multiple countries, consider enforcing your rights in those jurisdictions as well. International enforcement may involve working with local counsel to address infringement in each country.
In conclusion, enforcing your trademark rights is essential to protect your brand and reputation. Regular monitoring, effective communication through cease and desist letters, and negotiation are the first steps in addressing potential infringements. If necessary, pursuing legal action, such as trademark opposition, cancellation proceedings, or litigation, can provide stronger enforcement measures. To ensure successful enforcement, it is advisable to work with a trademark attorney who can guide you through the enforcement process, protect your trademark rights, and help preserve the integrity and value of your brand.
How can a trademark attorney help me protect my trademark rights?
It’s your responsibility to monitor and protect your trademark from trademark infringement. Many business owners hire trademark attorneys to help protect their trademark rights.
A trademark attorney can:
- Help you understand the full scope of your trademark rights.
- Advise you on what actions to take if you discover other parties are infringing on your trademark.
- Represent you in court if others are accusing you of infringing on their trademarks.
- Ensure that all required registration maintenance documents are filed accurately and on time.
Why Trademark Registration Matters for Athens Businesses
Athens, Georgia is a bustling college town that has been growing in popularity year after year thanks to its acclaimed restaurants, vibrant music scene, and independent art galleries. Entrepreneurs are flocking to Athens to start new businesses and be part of the excitement this historic town offers.
While Athens business owners know there’s so much to be done prior to opening a business, they should not overlook the importance of trademark registration. Some think that a Google search is a good way to determine if their desired mark is available for use, but that’s simply not the case.
Imagine the following: Mason is a University of Georgia alumnus with dreams of opening his own clothing store catering to men aged 18 to 35. He’s saved his money for the past few years and he’s ready to take the plunge. He finds the perfect storefront in the Five Points neighborhood of Athens and signs the lease.
Mason decides to name his new store Eclectic Threads. He does a quick Google search to see if there are any shops with that name are already in existence in Georgia. The search reveals no matches in the area so he assumes he’s free to use the name.
Mason then gets to work on his store. He orders signage, creates a website, interviews employees, buys digital and print advertising, and so much more.
It’s a year later and Mason’s store is a huge success. It’s become very popular with college students and has a reputation for always having the latest fashions in stock. Mason couldn’t be happier with how things are going. Unfortunately, however, he’s about to get some bad news in the form of a cease-and-desist letter.
It turns out that there’s a small chain of clothing stores with locations in Philadelphia, Pennsylvania and Newark, New Jersey with a name that’s very similar to Mason’s store. This small chain trademarked their name 10 years ago so they have every right to demand that Mason shut down his store and not reopen until he rebrands. The letter even threatens legal action if he doesn’t comply.
Mason knows that closing his store and rebranding will be a very expensive and time-consuming proposition, but he has no choice but to comply. He’s not prepared for a court battle.
You should never rely on a Google search to help you determine if your desired trademark is available for use. A Google search will only bring up exact matches of your search terms, but it won’t necessarily inform you about terms that are similar. The only way to be absolutely sure your desired mark is available is to hire a trademark attorney who can conduct a comprehensive clearance search.
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 Athens and yet it can assist businesses from Georgia in registering a federal Trademark because trademarks are governed under federal law.