Trademark Attorney Services
for Corpus Christi TX
Companies.

Corpus Christi, Texas Businesses Use Cohn Legal for Trademark Services

Abe Cohn is the Managing Partner of Cohn Legal, PLLC. Abe loves advising his clients on a variety of intellectual property law matters, litigating trademark disputes, and managing various corporate transactional work. Serving clients in Corpus Christi, Texas, Abe specializes in working with startups and entrepreneurs and relishes the opportunity to help companies build something from scratch.

Top Questions Texas Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Corpus Christi, Texas, 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 Corpus Christi, Texas, 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 type of intellectual property that protects the distinctive symbols, names, phrases, designs, or logos associated with a particular product or service. It serves as a brand identifier, helping consumers distinguish one company’s products or services from those of others. Trademarks play a crucial role in building brand recognition, loyalty, and reputation in the marketplace.

When a business registers a trademark, it gains exclusive rights to use that mark in connection with the specified goods or services. This means that other companies are generally prohibited from using a similar mark that might cause confusion among consumers. Trademark protection not only safeguards the business’s investment in branding but also helps prevent counterfeit products and maintains the reputation and quality associated with the mark.

To be eligible for trademark protection, a mark must be distinctive, meaning it should be capable of identifying the source of the goods or services. Descriptive or generic terms typically do not qualify for trademark protection. However, marks can gain protection through continuous and extensive use, acquiring what is known as secondary meaning.

It’s important to note that trademarks are specific to particular categories of goods or services. Therefore, a company might have a trademark for its name in connection with clothing but not for the same name when used for software

Registering a trademark with the appropriate government agency, such as the United States Patent and Trademark Office (USPTO) in the United States, provides significant advantages, including nationwide protection, the ability to bring a lawsuit in federal court for infringement, and notice to the public of your ownership rights. However, unregistered trademarks may still have some limited protection under common law in certain jurisdictions.

Overall, trademarks are essential assets for businesses as they not only protect brands but also contribute to their market recognition and long-term success. Before applying for trademark registration, it’s advisable to conduct a thorough search to ensure the mark is available for use and registration, avoiding potential conflicts with existing trademarks. Consulting with a trademark lawyer can help ensure the process is smooth and legally compliant.

Is there a difference between a trademark and service mark?

Yes, there is a difference between a trademark and a service mark, but the core concept is similar. Both trademarks and service marks are forms of intellectual property that provide legal protection for distinctive signs used in commerce. The key distinction lies in the type of goods or services they identify.

A trademark is used to distinguish and protect brand names, logos, or symbols associated with tangible products, such as clothing, electronics, or food items. For example, the Nike swoosh is a trademark that identifies Nike’s athletic footwear and apparel products.

On the other hand, a service mark is used to identify and protect services provided by a company or individual. These services can include anything from legal services, accounting, and consulting to telecommunications, transportation, and hospitality. For instance, the Hilton logo serves as a service mark that identifies the hospitality services offered by Hilton Worldwide.

In practice, the distinction between trademarks and service marks is not as rigid as it once was. Many countries, including the United States, use the term “trademark” to refer to both marks used for goods and marks used for services. In the U.S., the term “service mark” is rarely used, and the same registration process applies to both trademarks and service marks.

The essential requirement for obtaining protection for either a trademark or service mark is that the mark must be distinctive and capable of identifying the source of the goods or services. It should not be confusingly similar to existing marks used in the same or related industries.

Businesses looking to protect their brand names, logos, or symbols associated with products should seek trademark registration, while those offering services should opt for service mark registration. In many jurisdictions, including the U.S., the process of applying for and obtaining protection for trademarks and service marks is quite similar, involving a thorough search, application, and examination by the relevant intellectual property office.

Overall, whether it’s a trademark or a service mark, securing legal protection for your intellectual property is essential to build and maintain a strong brand identity in the market, prevent infringement by competitors, and ensure consumers can trust the quality and origin of your products or services. Consulting with a trademark lawyer can help navigate the complexities of the registration process and ensure your intellectual property rights are adequately protected.

What’s the difference between the ® and TM symbols?

The ® symbol and the TM symbol serve different purposes and indicate different levels of trademark protection.

1. TM Symbol (™): The TM symbol is used to indicate that a word, phrase, logo, or symbol is being used as a trademark to identify goods or services. It can be used without having the mark registered with the relevant trademark office. Essentially, the TM symbol provides notice to the public that the owner considers the mark to be a trademark and claims rights to it. It acts as a “common law” notice of the owner’s intent to protect the mark as a source identifier.
2. ® Symbol (®): The ® symbol, on the other hand, is used to indicate that a trademark is officially registered with the relevant government authority. In the United States, it is the U.S. Patent and Trademark Office (USPTO). The ® symbol can only be used for trademarks that have undergone the formal registration process and have been approved by the trademark office. Registering a trademark provides several advantages, including enhanced legal protection, the ability to sue for infringement in federal court, and a public record of ownership rights.

Using the ® symbol without a valid trademark registration is illegal and may lead to penalties. Misusing the ® symbol can also weaken the validity of the mark, so it’s essential to use it correctly and only in connection with the registered goods or services.

Using the TM symbol, on the other hand, is not restricted and can be used at any time to indicate that the mark is being used as a trademark, regardless of whether it is registered or not. Even though the TM symbol does not provide the same level of legal protection as the ® symbol, it still serves to put others on notice of the mark’s use and can be useful in establishing rights over time through continuous and consistent use.

The decision to use the TM or ® symbol depends on the current status of your trademark. If you have a pending application or intend to seek registration, use the TM symbol until your mark is officially registered, at which point you can switch to using the ® symbol. If you do not plan to register your mark but still want to indicate its use as a trademark, you can continue using the TM symbol without any legal implications.

In summary, the TM symbol is used to indicate a claim of common law rights to a trademark, while the ® symbol indicates that the mark is officially registered with the relevant trademark office. Both symbols play a crucial role in establishing and protecting a brand’s identity, but their usage should be done correctly and in compliance with trademark laws. To ensure proper use and registration, consulting with a trademark attorney can provide valuable guidance and legal assistance.

How can I determine if a trademark is available?

Determining the availability of a trademark is a crucial step before attempting to register it or use it in commerce. Conducting a comprehensive trademark search will help you identify potential conflicts with existing trademarks and assess the likelihood of successfully registering your mark. Here are the steps to determine if a trademark is available:

1. Online Search: Start by conducting a basic online search using search engines like Google. Look for websites, social media profiles, and online marketplaces using the potential trademark. This will give you an initial idea of how the mark is being used and whether there are any obvious conflicts.
2. Trademark Databases: Check official trademark databases maintained by the relevant government trademark office. In the United States, you can search the USPTO’s Trademark Electronic Search System (TESS). In other countries, similar online databases will be available.
3. Common Law Search: Remember that trademark rights can exist through common law even without formal registration. This means that unregistered trademarks may still have limited protection in their geographic areas of use. Look for trademarks that may not be officially registered but are in use for similar goods or services in your target market.
4. Industry Directories: Examine industry-specific directories and databases to see if anyone is already using a similar mark in your industry. This can include trade publications, business directories, and online databases related to your line of business.
5. Hire a Trademark Attorney: While the above steps can provide valuable insights, conducting a thorough and legally comprehensive search requires experience and expertise. Hiring a trademark attorney or a professional trademark search firm can be beneficial. They have access to specialized databases and can conduct a more extensive search to uncover potential conflicts.
6. Trademark Watch Services: Once you have secured your trademark, consider subscribing to a trademark watch service. These services monitor new trademark applications and registrations and alert you if any potentially conflicting marks are detected.

It’s essential to remember that trademark availability is not solely determined by whether an identical mark exists. Similar marks that may cause consumer confusion could also pose conflicts. Therefore, a thorough search considering various similarities, including sound, appearance, and meaning, is necessary.

By conducting a comprehensive trademark search, you can make an informed decision about whether to proceed with your chosen mark, avoiding potential infringement issues, legal disputes, and costly rebranding efforts down the line. Consulting with a trademark attorney during the search process can provide invaluable guidance and ensure that your trademark is both distinctive and protectable.

Do I need to sell a product or service to obtain a registered trademark?

No, you do not necessarily need to be currently selling a product or service to obtain a registered trademark. In many jurisdictions, including the United States, you can apply for a trademark before you start using the mark in commerce. This type of application is known as an “intent-to-use” application.

An intent-to-use application allows you to secure priority for your trademark before you begin using it in the market. It gives you time to develop your product or service, build brand awareness, and complete the necessary steps for the launch while reserving your rights to the mark. However, you must have a bona fide intent to use the mark in commerce when you file the application. Simply filing an intent-to-use application without any genuine intention to use the mark can lead to the application being rejected or the registration being canceled later.

The intent-to-use application process typically involves the following steps:

1. Filing the Application: You submit an application to the relevant trademark office, such as the USPTO in the U.S., specifying your intent to use the mark in commerce in the future. You provide a description of the goods or services the mark will be associated with.
2. Notice of Allowance: If your application is approved, you will receive a “Notice of Allowance” from the trademark office. This notice indicates that your mark has met the initial requirements, but you still need to provide evidence of actual use in commerce before the registration is granted.
3. Statement of Use: To complete the registration process, you must file a “Statement of Use” within a specified time frame (usually six months from the Notice of Allowance). This statement includes evidence that the mark is in use in connection with the specified goods or services.
4. Registration: Once the Statement of Use is accepted, and all requirements are met, your trademark will be registered with the trademark office.

It’s important to note that while you don’t need to be currently selling a product or service to apply for a trademark, actual use of the mark in commerce is a requirement for obtaining full registration. If you do not use the mark in commerce and fail to submit the required Statement of Use within the specified timeframe, your application will be abandoned, and you will lose any rights to the mark.

Applying for an intent-to-use trademark is a strategic way to protect your brand early in the development process and ensure that you have exclusive rights to use it once you start selling your product or service. If you are uncertain about the application process or have questions about how to proceed, consulting with a trademark lawyer can help guide you through the complexities and requirements of trademark registration.

I’m not yet selling anything yet, but I intend to. Can I still submit a trademark application?

Yes, the USPTO allows you to file a trademark before you are ready to start selling your product or service. Start by completing and sending an Intent-To-Use (ITU) trademark application to the USPTO. If the ITU application has been accepted, you’ll receive a Notice of Allowance (NOA) and have 6 months to submit your Statement of Use, which is basically proof that you’re selling your goods. If at the end of 6 months you’re still not ready to start selling, you can file for a 6-month extension. You can file up to 5 extensions.

If I only provide my services locally, can I still obtain a federal trademark?

Yes, you can still obtain a federal trademark even if you only provide your services locally. In the United States, trademark rights are based on “use in commerce.” This means that as long as you are using your mark in connection with your services and the mark is associated with your business, you can seek federal trademark registration.

The key consideration is whether there is a likelihood of confusion between your mark and any existing trademarks that are already registered or in use for similar services. If there is no significant likelihood of confusion, you have a good chance of obtaining federal registration, even if your services are limited to a specific geographic area.

When applying for a federal trademark, you will need to specify the geographic scope of your services. This can be done by providing a description of the area in which your services are offered or by stating that your services are limited to a particular city, state, or region. This limitation is called a “geographical restriction” and is included in your application to define the extent of your claim.

However, it’s essential to be aware of a few considerations:

1. Intent-to-Use Applications: If you are not yet using the mark in commerce but have a bona fide intent to use it in the future, you can file an “intent-to-use” application. This allows you to secure priority for your mark while you continue to develop and launch your services.
2. Common Law Rights: Even if you do not have a federal trademark registration, you may still have some common law rights to your mark based on your local use. Common law rights provide limited protection within the geographic area where the mark is used, but they may not be as strong or enforceable as federal registration.
3. Future Expansion: Registering your mark federally can be beneficial if you have plans to expand your services beyond your local area in the future. Federal registration provides nationwide protection and can help prevent potential conflicts as you grow your business.
4. Use in Interstate Commerce: To qualify for federal trademark registration, your mark must be used in “interstate commerce,” which means commerce that involves crossing state lines. This requirement can be met even if you only offer your services locally, as long as you can show that your services have a substantial effect on commerce between states.

Consulting with a trademark attorney is highly recommended, especially when dealing with geographical limitations and the intricacies of the trademark registration process. A lawyer can guide you through the application process, help you determine the appropriate scope of your trademark, and ensure your mark receives the necessary protection based on your specific business needs and goals.

What should I register first: the name of my business or my brand logo?

When deciding whether to register the name of your business or your brand logo first, there are several factors to consider. Both your business name and your brand logo are essential elements of your brand identity, and each serves a distinct purpose in the marketplace. Here are some considerations to help you make an informed decision:

1. Priority of Use: If you have been using your business name in commerce for a longer period, it may be more advantageous to register the name first. Priority of use can play a role in trademark disputes, and registering your business name can help solidify your position as the first user of the mark.
2. Distinctiveness: Consider the distinctiveness of each element. If your brand logo is highly unique and recognizable, registering it as a trademark can provide strong protection for the visual representation of your brand. On the other hand, if your business name is distinctive and serves as a primary identifier for your products or services, registering it can be equally important.
3. Protection Scope: Think about the scope of protection you want. Registering your business name as a trademark generally protects the use of that name across various products or services, regardless of the logo used. On the other hand, registering your logo as a trademark specifically protects the visual representation of the logo, regardless of the words used in your business name.
4. Future Brand Extensions: Consider your future plans for brand extensions. If you intend to introduce new products or services under the same business name, registering the name first can provide broader protection for those extensions. However, if your brand logo is going to remain consistent across various offerings, registering the logo first might be a strategic move.
5. Budget and Resources: Registration fees and legal costs can be factors in your decision. Registering a wordmark (business name) is often less expensive and straightforward compared to registering a design mark (brand logo). Assess your budget and resources to determine the most practical option for you at this stage.
6. Comprehensive Protection: For comprehensive brand protection, you may eventually want to register both your business name and brand logo as trademarks. Each registration serves different purposes and can provide valuable layers of protection for your brand identity.

In many cases, businesses opt to register both their business name and brand logo to ensure comprehensive protection. However, if you need to prioritize one over the other due to budget constraints or other considerations, it’s crucial to assess which element is more critical to your brand’s identity and long-term success.

Consulting with a trademark attorney is highly recommended to develop a tailored strategy that aligns with your business goals and ensures your brand is adequately protected. An attorney can guide you through the registration process, conduct comprehensive searches to assess availability, and help you make informed decisions about the best way to protect your brand identity.

What is a fanciful trademark?

A fanciful trademark is a type of trademark that consists of a made-up or coined word that has no existing meaning or association with the goods or services it represents. These marks are highly distinctive and inherently strong, making them some of the most protectable types of trademarks under intellectual property law.

Fanciful trademarks are created solely for the purpose of functioning as a brand identifier. Since they are entirely unique and have no dictionary or common language meaning, they are easily recognizable and memorable to consumers. Examples of fanciful trademarks include “Xerox” for photocopiers, “Kodak” for cameras, and “Google” for the popular search engine.

One of the significant advantages of using a fanciful mark is the level of protection it receives under trademark law. Because the mark is completely arbitrary and distinctive, it is less likely to be confused with other existing trademarks, reducing the risk of potential infringement claims. Fanciful trademarks can be registered and protected more easily compared to descriptive or generic marks, which have lower levels of inherent distinctiveness.

The distinctiveness of a fanciful trademark also allows the brand owner to build a unique identity in the marketplace. Consumers are more likely to associate the fanciful mark exclusively with the specific goods or services provided by the company, fostering brand loyalty and recognition.

However, since fanciful trademarks are entirely original, they may require more effort and resources to gain recognition and consumer acceptance initially. Businesses using fanciful marks may need to invest in marketing and advertising to create brand awareness and educate consumers about the meaning and significance of the mark.

When choosing a fanciful trademark, it’s essential to consider factors such as linguistic and cultural nuances to ensure that the mark is not inadvertently offensive or misinterpreted in various markets.

In summary, fanciful trademarks are highly distinctive and unique marks created specifically for brand identification. They offer a high level of protection and brand recognition but may require initial efforts to establish consumer awareness and association with the products or services. Consulting with a trademark attorney can be beneficial in the process of selecting and registering a fanciful mark to ensure legal compliance and optimal protection of your brand identity.

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 file trademark applications and manage their trademark-related matters electronically. TEAS is designed to streamline the trademark application process, making it more efficient and accessible to trademark applicants.

The TEAS system offers several different application forms to accommodate various types of trademark filings, including:

1. TEAS Plus: This application form offers a reduced filing fee compared to other TEAS forms but requires strict adherence to specific requirements, such as selecting goods and services from the USPTO’s pre-approved list and agreeing to file all future correspondence electronically.
2. TEAS Reduced Fee (TEAS RF): Similar to TEAS Plus, this form provides a slightly reduced filing fee but allows applicants more flexibility in selecting goods and services.
3. TEAS Regular: This application form has a higher filing fee than TEAS Plus or TEAS RF but offers more flexibility in selecting goods and services and allows for traditional paper filings of certain documents.
4. TEAS Renewal: Used to renew an existing trademark registration.
5. TEAS Section 8 & 15: Used to file declarations of continued use (Section 8) and incontestability (Section 15) for registered trademarks.
6. TEAS Petition: Used for certain special requests or actions before the USPTO, such as petitioning to revive an abandoned application.

Using the TEAS system has several advantages, including:

1. Convenience: TEAS allows applicants to file trademark applications and manage their trademarks from anywhere with an internet connection, providing a more accessible and user-friendly experience.
2. Cost-Effective: Certain TEAS forms, such as TEAS Plus and TEAS RF, offer reduced filing fees compared to traditional paper filings, making it a cost-effective option for applicants.
3. Faster Processing: Electronic filings are generally processed faster than paper filings, which can lead to quicker examination and response times.
4. Real-Time Status Updates: Applicants can check the status of their application in real-time through the TEAS system, receiving updates on the progress of their application.
5. Efficient Communication: The TEAS system allows for electronic communication with the USPTO, streamlining the exchange of information and reducing paperwork.

When using the TEAS system, applicants must ensure that all information provided is accurate and complies with the USPTO’s requirements. Any mistakes or omissions can result in delays or even the rejection of the application. For this reason, many trademark applicants choose to work with a trademark attorney to navigate the application process effectively and ensure the best possible outcome for their trademark registration.

How long does the trademark application process take?

The trademark application process can vary in length, depending on several factors, and may take anywhere from several months to over a year to complete. The timeline can be influenced by the complexity of the application, the type of mark being registered, and the workload of the trademark office. Here is a general breakdown of the key stages in the trademark application process and the estimated timeframes for each:

1. Filing the Application: The initial step involves submitting the trademark application to the relevant trademark office, such as the United States Patent and Trademark Office (USPTO) in the U.S. The application is reviewed for completeness and, assuming there are no issues with the initial submission, is assigned a filing date. This stage typically takes a few days to a few weeks.
2. Examination and Review: After the filing date, the application is assigned to an examining attorney who reviews the mark to ensure it complies with all legal requirements. This review includes checking for potential conflicts with existing trademarks. The examination stage can take several months to complete, depending on the backlog of applications at the trademark office.
3. Office Actions: If the examining attorney finds any issues with the application, they will issue an “Office Action” detailing the problems that need to be addressed. The applicant has a set period (usually six months) to respond to the Office Action. If no issues are raised or the issues are successfully addressed in the response, the application moves forward.
4. Publication: If the examining attorney approves the application, it is published for opposition in the Official Gazette. This publication allows third parties to oppose the registration if they believe it will harm their existing rights. The opposition period typically lasts 30 days, but extensions or actual opposition proceedings can prolong this stage.
5. Registration: If no opposition is filed, or if any opposition is successfully resolved in favor of the applicant, the trademark is registered, and a registration certificate is issued. This stage usually takes a few weeks to a few months.

In total, the entire trademark application process can take anywhere from several months to over a year, depending on the complexity of the application and potential issues that may arise during examination or opposition. Delays can occur due to factors such as the workload of the trademark office, the need to address Office Actions, or any opposition proceedings.

It’s important to note that the process can be expedited by using certain application forms, such as the TEAS Plus form, and by providing all required information accurately from the outset. Engaging the services of a trademark attorney can also be beneficial in navigating the process efficiently and avoiding potential delays or pitfalls. A trademark attorney can assist in the preparation and submission of the application, conduct comprehensive searches, and respond to Office Actions, maximizing the chances of a successful and timely registration.

How long does a trademark last?

Once a trademark is registered, it can last indefinitely as long as it is properly maintained and renewed according to the requirements of the relevant trademark office. In the United States, trademark registrations are initially valid for ten years from the date of registration. After the initial ten-year period, the registration can be renewed indefinitely for successive ten-year periods as long as the mark continues to be used in commerce and the renewal requirements are met.

To keep a trademark registration active and valid, the trademark owner must file a Declaration of Use and/or Excusable Nonuse (Section 8 Declaration) between the fifth and sixth year after the registration date. This declaration serves as evidence that the mark is still in use in connection with the specified goods or services.

Additionally, the trademark owner must file a Combined Declaration of Use and Application for Renewal (Section 9 Renewal) within one year before the end of each ten-year period after the initial registration date and every ten years thereafter. This renewal application includes an updated statement of use and the renewal fee.

It’s crucial to adhere to these renewal requirements diligently, as failing to do so can result in the cancellation of the trademark registration, leaving the mark unprotected and open for others to use. If a trademark registration is canceled due to failure to renew, the owner may need to start the registration process from scratch if they wish to regain federal protection for the mark.

It’s important to note that trademark rights can also be lost if the mark is abandoned or if the mark becomes generic, meaning it has become synonymous with the type of product or service and no longer serves as a source identifier.

For trademarks that are not registered but used in commerce, common law rights may still provide some level of protection as long as the mark continues to be used in connection with the goods or services and is associated with the business. However, common law rights are limited in scope and are typically not as strong as federally registered trademarks.

To ensure the longevity and continued protection of your trademark, it’s advisable to work with a trademark attorney who can assist with the registration process, monitor renewal deadlines, and provide guidance on maintaining and protecting your valuable intellectual property rights.

I’m selling my product without a registered trademark. Is that OK?

You actually don’t need a trademark to start selling your products. It’s not required that you register your trademark.

However, any trademark attorney would advise you to get your trademark registered as soon as possible. Using an unregistered trademark opens you up to all kinds of risks. Someone else might start using the mark without your permission. They may even register your trademark for themselves. If you are serious about creating a successful business, then you need to register your trademark sooner rather than later.

Can I use a trademark without registering it?

Yes, you can use a trademark without registering it. Trademark rights are generally acquired through actual use of the mark in commerce, even without formal registration. These are referred to as common law trademark rights. When you use a trademark in connection with specific goods or services, you establish common law rights in the geographic area where the mark is used.

Common law trademark rights offer some level of protection, but they are limited in scope compared to federal registration. The extent of protection depends on the geographic area where the mark is used and the degree of recognition and reputation the mark has acquired.

There are several important points to consider when using a trademark without registration:

1. Limited Protection: Common law trademark rights only apply to the specific geographic area where the mark is used. This means that someone else could use the same or similar mark in a different location without infringing on your common law rights.
2. No Presumption of Ownership: Unlike federally registered trademarks, common law marks do not benefit from a presumption of ownership. In case of a dispute, the burden of proving ownership and priority of use falls on the common law mark holder.
3. Difficulty in Enforcing Rights: Enforcing common law trademark rights can be more challenging and expensive than enforcing federal trademark rights. Infringement claims may require significant evidence of prior use and consumer recognition.
4. Limited Nationwide Protection: Common law trademarks do not offer nationwide protection. If you intend to expand your business beyond your current geographic location, you may encounter conflicts with other businesses that have adopted similar marks in other regions.
5. Difficulty in Stopping Infringers: Without federal registration, you may face difficulties in stopping infringing uses, especially if the infringer operates in a different state.

Despite these limitations, common law trademarks can be valuable assets, especially for local businesses with a strong presence and reputation in their communities. However, if your business is expanding, has significant growth potential, or operates in multiple locations, federal trademark registration is highly recommended.

Federal registration provides numerous advantages, including nationwide protection, the ability to enforce rights in federal court, and a presumption of ownership and validity. It also serves as a deterrent against potential infringers and provides notice to the public of your exclusive rights to the mark.

To ensure comprehensive protection of your trademark rights, it is advisable to work with a trademark attorney who can guide you through the registration process and help you make informed decisions about the best strategy for protecting your valuable intellectual property.

How do I register a federal trademark?

If you want a registered trademark, you need to first submit a trademark application to the United States Patent and Trademark Office, or USPTO.

The examining attorney at the USPTO will review the application and search the USPTO database to identify any trademarks that are similar to the trademark you’re attempting to register. If no similar marks are found, your application gets approved for publication in the USPTO’s Official Gazette for a 30-day period. During that 30 days, an individual can oppose your application if they feel that your trademark infringes upon theirs. Assuming no oppositions come forward, your trademark will be approved for final registration.

How much does it cost to register a trademark?

The cost to register a trademark is a function of the Government filing fees associated with filing a trademark in addition to the legal service fees charged by a trademark attorney. The USPTO charges a flat fee of either $250.00 or $350.00 PER CLASS OF GOODS. This means that the USPTO doesn’t charge the applicant, per trademark, but rather according to how many different types of goods/services the applicant intends on selling under the trademark. At Cohn Legal, PLLC, the cost is a flat fee of $650, which covers a full legal consultation, an analysis of your trademark’s inherent eligibility based on its distinctiveness, a full TM search in the USPTO database, and all of the logistical work involved in preparing and filing the trademark application.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is highly recommended at various stages of the trademark process to ensure that your intellectual property is adequately protected and that you navigate potential legal issues effectively. Here are some key milestones and scenarios where it is advisable to seek the assistance of a trademark attorney:

1. Trademark Search: Before filing a trademark application, conducting a comprehensive search is crucial to identify any existing trademarks that may conflict with yours. A trademark attorney can perform a thorough search and analyze the results to assess potential risks and provide guidance on the availability and registrability of your chosen mark.
2. Trademark Application: When preparing and filing your trademark application, a trademark lawyer can help ensure that all necessary information is provided accurately, minimizing the risk of delays or potential issues during the examination process. They can also advise on the appropriate class of goods or services to maximize the scope of protection for your mark.
3. Responding to Office Actions: If the examining attorney issues an Office Action identifying issues with your application, a trademark attorney can help craft a proper response to address the concerns and improve the chances of a successful registration.
4. Opposition Proceedings: If your trademark application is opposed by a third party during the publication period, a trademark attorney can represent you in the opposition proceedings and work to resolve the dispute in your favor.
5. Trademark Maintenance and Renewal: A trademark attorney can keep track of your registration renewal deadlines and help ensure that all necessary documents are filed on time to maintain the validity of your trademark.
6. Trademark Enforcement: If you encounter instances of trademark infringement or unauthorized use of your mark, a trademark attorney can advise you on the best course of action, such as sending cease and desist letters or pursuing legal action to protect your rights.
7. International Trademark Protection: If you plan to expand your business globally, a trademark attorney with international expertise can guide you through the process of obtaining protection in other countries and help you navigate the complexities of international trademark law.
8. Trademark Portfolio Management: For businesses with multiple trademarks or a growing portfolio, a trademark attorney can help with strategic management, ensuring proper maintenance and protection of all trademarks.

Overall, engaging a trademark lawyer from the outset can provide valuable assistance in every stage of the trademark process, from initial clearance searches to ongoing maintenance and enforcement. They can help you make informed decisions, protect your brand effectively, and navigate any legal complexities that may arise. A skilled trademark attorney can save you time, money, and potential headaches, providing peace of mind that your intellectual property is in capable hands.

What is a trademark’s specimen?

A trademark specimen, also known as a specimen of use, is a crucial element of the trademark application process. It is a sample or representation of how the trademark is actually used in commerce to identify and distinguish the goods or services associated with the mark. The specimen serves as evidence to demonstrate that the mark is being used in connection with the claimed goods or services, as required by the United States Patent and Trademark Office (USPTO) and other trademark offices worldwide.

The purpose of providing a specimen is to show that the trademark is not merely an idea or concept but is actively used to identify and distinguish your products or services in the marketplace. The specimen also helps the trademark examiner assess whether the mark meets the requirements for registration, such as distinctiveness and non-generic use.

The acceptable format of a specimen depends on whether the mark is used in connection with goods (products) or services:

1. Specimen for Goods: For trademarks used with tangible products, an acceptable specimen could be a label, tag, packaging, container, or a photograph showing the mark physically affixed to the goods. For example, if the mark is used on t-shirts, a specimen could be a photograph showing the mark printed on the t-shirt’s label or hangtag.
2. Specimen for Services: For trademarks used to identify services, an acceptable specimen could be a website screenshot displaying the mark in connection with the advertised services, a brochure or flyer showing the mark in association with the services, or other promotional materials.

The specimen submitted with the trademark application must show the mark in actual use and should match the goods or services identified in the application. It is essential to ensure that the specimen clearly displays the mark and its association with the relevant products or services.

The quality of the specimen is critical as it directly impacts the success of the application. If the submitted specimen is not acceptable or does not demonstrate proper use of the mark, the trademark examiner may issue an Office Action requiring a suitable replacement. Providing an incorrect or inadequate specimen can result in delays and potential issues with the registration process.

To ensure that you submit an appropriate and acceptable specimen, it is advisable to work with a trademark attorney. A trademark attorney can guide you through the application process, review your specimens for compliance, and assist with any necessary adjustments to increase the likelihood of successful registration. Properly representing your trademark’s actual use through acceptable specimens strengthens your trademark application and helps protect your valuable brand identity.

Can I request an expedited approval of my trademark registration?

Yes, in certain circumstances, you can request an expedited approval of your trademark registration. The United States Patent and Trademark Office (USPTO) offers an option called the “TEAS Reduced Fee” (TEAS RF) application, which allows applicants to pay a reduced filing fee in exchange for agreeing to certain requirements, one of which is to expedite the examination process.

To qualify for expedited processing using TEAS RF, the applicant must meet the following criteria:

1. Use TEAS RF Application Form: The application must be filed using the TEAS RF application form, which is specifically designed for expedited processing.
2. Pre-approved Goods and Services: The applicant must select goods and services from the USPTO’s pre-approved list of acceptable identifications. This list includes standard identifications for various goods and services commonly used in trademark applications.
3. Electronically File Correspondences: All subsequent correspondence and responses to Office Actions must be filed electronically using the TEAS system.

By meeting these requirements, the USPTO expedites the examination process and aims to issue an initial response to the application within two to three months of filing. This is significantly faster than the standard processing time, which can take several months.

It’s important to note that expedited processing using TEAS RF is available for both intent-to-use applications (applications filed before actual use of the mark) and use-based applications (applications filed after actual use of the mark). The option is suitable for applicants who need a quicker decision on their application, such as those with impending business plans, product launches, or potential infringement concerns.

While expedited processing can accelerate the examination phase, it does not guarantee approval. The mark will still undergo the same substantive examination as any other application to determine its eligibility for registration. If any issues or objections are raised during the examination, the applicant will need to address them appropriately.

It’s essential to carefully consider whether expedited processing is necessary for your specific circumstances, as the TEAS RF application has specific requirements that may not be suitable for every situation. Additionally, the reduced fee associated with TEAS RF is non-refundable, even if the application is ultimately refused or abandoned.

If you are uncertain about whether to request expedited processing for your trademark application, consulting with a trademark attorney can provide valuable guidance. An attorney can assess your unique situation, help you determine the best approach, and assist you throughout the application process to maximize your chances of obtaining successful registration.

Can I trademark a phrase?

Yes, you can trademark a phrase under certain conditions. In trademark law, phrases can be eligible for protection if they meet the requirements for trademark registration. To qualify for registration, a phrase must be distinctive and used in connection with specific goods or services to identify the source of those goods or services.

Here are some key factors to consider when seeking to trademark a phrase:

1. Distinctiveness: To be eligible for trademark protection, the phrase must be distinctive, meaning it is not merely descriptive of the goods or services it represents. Fanciful phrases (invented words), arbitrary phrases (common words used in an unrelated context), and suggestive phrases (evoking a quality or characteristic of the goods or services) are considered inherently distinctive and have a higher chance of registration.
2. Secondary Meaning: If the phrase is descriptive or generic on its own, it may still be eligible for protection if it has acquired “secondary meaning” in the minds of consumers. Secondary meaning occurs when the phrase becomes associated with a specific source or brand in the marketplace. Establishing secondary meaning typically requires evidence of substantial and continuous use in commerce.
3. Specific Use: The phrase must be used in connection with specific goods or services. It cannot be used generically or in a way that is unrelated to the goods or services it identifies.
4. No Likelihood of Confusion: The phrase must not be confusingly similar to an existing registered trademark or a pending application. A comprehensive trademark search is recommended to avoid potential conflicts.
5. Geographic Limitations: If the phrase is geographically descriptive, it may face challenges in registration. However, if the phrase has acquired secondary meaning and is no longer seen as merely descriptive of a location, it may still be eligible for protection.
6. Generic Terms: Generic terms that describe the goods or services themselves cannot be registered as trademarks. For example, the phrase “Soft Drink” cannot be registered as a trademark for soft drinks because it is a generic term.

When applying for a phrase trademark, you will need to specify the class of goods or services with which the phrase is associated. The USPTO and other trademark offices use an international classification system (the Nice Classification) to categorize goods and services.

To increase the likelihood of a successful registration, consider consulting with a trademark attorney. A trademark attorney can help you assess the distinctiveness of your phrase, conduct a comprehensive search for potential conflicts, and guide you through the application process to ensure compliance with all legal requirements. Protecting your phrase as a registered trademark provides valuable legal rights and exclusive use of the phrase in connection with your goods or services, giving your brand a competitive advantage in the marketplace.

Can I trademark a logo?

Yes, you can trademark a logo. A logo can be protected as a trademark if it meets the necessary requirements for trademark registration. Like other types of trademarks, the key factors to consider when seeking to trademark a logo include distinctiveness, use in commerce, and its association with specific goods or services.

Here are some important considerations for trademarking a logo:

1. Distinctiveness: The distinctiveness of the logo is crucial for trademark registration. A logo that is unique, creative, and not commonly used in the industry is more likely to be considered inherently distinctive, making the registration process smoother. Fanciful logos (original, invented designs) and arbitrary logos (common designs used in unrelated contexts) are usually considered inherently distinctive.
2. Use in Commerce: To qualify for trademark registration, the logo must be used in commerce to identify and distinguish your goods or services from others in the marketplace. Actual use of the logo in connection with the sale of goods or the rendering of services is essential to establish trademark rights.
3. Associated Goods or Services: The logo must be used in connection with specific goods or services. It cannot be a stand-alone design unrelated to any particular goods or services. When applying for registration, you will need to specify the class of goods or services with which the logo is associated, following the international classification system (Nice Classification).
4. No Likelihood of Confusion: The logo must not be confusingly similar to existing registered trademarks or pending applications. A comprehensive trademark search is essential to avoid potential conflicts.
5. Non-Functional Design: The logo should not be purely functional or generic. A logo that primarily serves a functional purpose or merely describes the goods or services it represents is unlikely to be eligible for trademark protection.
6. Color Considerations: If your logo includes specific colors that are integral to the overall design and distinguish your brand, you may consider applying for a trademark in color. This ensures that the protection extends to the specific color scheme used in the logo.

When applying for a logo trademark, you will need to submit a representation of the logo in the application, which can be in the form of a drawing or digital image.

To navigate the trademark registration process for your logo successfully, it is advisable to work with a trademark attorney. A trademark attorney can help you assess the distinctiveness of your logo, conduct a comprehensive search for potential conflicts, and guide you through the application process to ensure compliance with all legal requirements. Registering your logo as a trademark provides valuable legal protection and gives your brand exclusive rights to use the logo in connection with the specified goods or services, enhancing your brand recognition and differentiation in the marketplace.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances, but obtaining a color trademark can be more challenging than trademarking other types of marks, such as words, logos, or slogans. To qualify for a color trademark, the color must be used in a way that is distinctive and serves as a source identifier for specific goods or services.

Here are some important considerations for trademarking a color:

1. Inherently Distinctive Use: To be eligible for trademark protection, the color must be used in a way that is inherently distinctive and not commonly associated with the type of goods or services being offered. Inherently distinctive use means that the color itself is immediately recognizable as a source identifier, even without additional elements such as words or logos.
2. Secondary Meaning: If the color is not inherently distinctive but has acquired “secondary meaning” in the minds of consumers, it may still be eligible for trademark protection. Secondary meaning occurs when the color has become associated with a specific brand or source in the marketplace due to long-term use and marketing efforts.
3. Non-Functional Use: The color cannot be functional or necessary for the product or service. For example, a color used to indicate a flavor, ingredient, or characteristic of the product may not be eligible for trademark protection.
4. Specific Use with Specific Goods or Services: The color must be used consistently and exclusively with specific goods or services. This means that the color should not be used for a wide range of products or services unrelated to each other.
5. Distinctive Color Trade Dress: A color that is used as part of a distinctive trade dress (the overall appearance and image of a product or packaging) may be eligible for trademark protection if it serves as a source identifier.

Notable examples of color trademarks include the brown color used by UPS for its delivery trucks, the pink color used by Owens-Corning for its insulation products, and the red color used by the sole of Christian Louboutin shoes.

Due to the complexities involved in obtaining a color trademark, it is advisable to work with a trademark attorney experienced in color trademarks. A trademark attorney can help you assess the distinctiveness of the color, conduct a comprehensive search for potential conflicts, and guide you through the application process to ensure compliance with all legal requirements.

Overall, while color trademarks are possible, they are relatively rare compared to other types of trademarks. Successfully registering a color as a trademark can provide valuable protection and brand recognition in the marketplace, helping to distinguish your products or services from those of competitors.

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 in a trademark from one party (the assignor) to another party (the assignee). This transfer typically involves the entire bundle of trademark rights, including the right to use, license, and enforce the mark.

There are several common scenarios in which a trademark assignment may occur:

1. Sale or Transfer of Business: When you sell your business or transfer ownership to another entity, you may include the transfer of your trademark rights as part of the transaction.
2. Merger or Acquisition: In the case of a merger or acquisition, the trademark rights of one company may be transferred to the acquiring company as part of the consolidation.
3. Licensing Agreements: Trademark owners may enter into licensing agreements to permit others (licensees) to use the mark in exchange for licensing fees or royalties. In this case, the owner still retains ownership but grants permission to others to use the mark under specific terms.
4. Estate Planning: In estate planning, individuals may include their trademark assets as part of their estate and designate specific beneficiaries to inherit those rights upon their passing.

The process of trademark assignment involves several steps:

1. Drafting a Trademark Assignment Agreement: This is a legal document that outlines the terms and conditions of the trademark transfer, including the identification of the parties involved, the details of the trademark, the rights being transferred, and any consideration or compensation involved.
2. Recordation with the Trademark Office: In many countries, including the United States, trademark assignments should be recorded with the relevant trademark office to provide public notice of the transfer and to establish the new owner’s rights against third parties.
3. Notification of the Assignment: The parties involved in the assignment should inform relevant stakeholders, such as customers, suppliers, and licensing partners, about the transfer of ownership.

It is important to note that trademark assignment should be done carefully and in compliance with applicable trademark laws to ensure the validity and enforceability of the transfer. Working with a trademark attorney is highly advisable to draft a comprehensive assignment agreement, navigate the recording process, and ensure that all legal requirements are met.

By transferring your trademark rights to someone else through a proper assignment, you can effectively transfer the brand’s identity, reputation, and goodwill associated with the mark to the new owner.

Can I license my trademark to others?

Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark in connection with specific goods or services. The licensing agreement sets out the terms and conditions under which the licensee can use the mark.

Licensing your trademark can be a mutually beneficial arrangement, as it allows you to expand the reach of your brand and generate additional revenue, while the licensee gains the right to associate their products or services with your established and recognized mark.

Here are some key considerations when licensing your trademark:

1. Clear Terms: The licensing agreement should clearly outline the scope of the license, specifying the goods or services for which the mark can be used, the geographic area of use, and the duration of the license.
2. Quality Control: As the trademark owner, you have the right to maintain control over the quality of goods or services associated with your mark. The licensing agreement should include provisions that allow you to monitor and enforce quality control standards to ensure that the mark is used in a manner consistent with your brand’s reputation.
3. Compensation and Royalties: The licensing agreement should address the financial aspect of the arrangement, including the payment of licensing fees or royalties. Royalties are typically a percentage of the licensee’s sales of products or services that bear the licensed mark.
4. Exclusivity: The agreement can be exclusive or non-exclusive. An exclusive license grants the licensee the sole right to use the mark in the specified category, while a non-exclusive license allows you to license the mark to multiple parties.
5. Termination: The agreement should specify the conditions under which either party can terminate the license, as well as the consequences of termination.
6. Proper Registration and Recordation: In some jurisdictions, it may be necessary to record the trademark licensing agreement with the relevant trademark office to establish the licensee’s rights and provide public notice of the arrangement.
7. Monitoring and Enforcement: As the licensor, you should actively monitor the use of your mark by the licensee to ensure compliance with the licensing agreement and take action against any unauthorized or improper use.

Licensing your trademark requires careful consideration and the assistance of a trademark attorney to draft a comprehensive licensing agreement. The agreement should protect your brand’s integrity while providing clear guidelines for the licensee’s use of the mark.

By licensing your trademark, you can expand your brand’s presence in the market, create new revenue streams, and strengthen your brand’s identity and reputation. However, it is essential to choose licensees carefully and to maintain proper oversight to preserve the value and exclusivity of your trademark.

If my trademark is registered in the United States, is it protected in other countries as well?

No, trademark registration in the United States does not automatically provide protection in other countries. Trademark rights are territorial, which means that they are generally only enforceable within the borders of the country where the mark is registered.

If you want to protect your trademark in other countries, you will need to apply for trademark registration in each individual country or region where you seek protection. The process of registering a trademark in foreign countries varies from one jurisdiction to another and may require compliance with different laws and regulations.

There are several options to consider when seeking international trademark protection:

1. Madrid System: The Madrid System for the International Registration of Marks allows trademark owners to seek protection in multiple countries through a single application. It is administered by the World Intellectual Property Organization (WIPO). By filing an international application under the Madrid System, you can designate multiple member countries where you want your mark protected. This can streamline the application process and reduce costs in comparison to filing separate applications in each country.
2. Regional Trademark Systems: Some regions have established regional trademark systems that allow for centralized trademark registration across multiple countries within the region. Examples include the European Union Intellectual Property Office (EUIPO), which offers protection in all EU member states, and the African Regional Intellectual Property Organization (ARIPO) for certain African countries.
3. National Applications: In some cases, it may be necessary or preferable to file separate national applications in individual countries to ensure comprehensive protection, especially in countries that are not part of the Madrid System or regional trademark systems.

International trademark registration can be complex, and the legal requirements may differ significantly from country to country. It is highly advisable to seek the assistance of a trademark attorney or a specialized intellectual property firm with experience in international trademark matters. They can guide you through the process, conduct clearance searches to identify potential conflicts, and handle the application process efficiently.

Obtaining international trademark protection is essential if you plan to conduct business or expand your brand’s presence in foreign markets. It helps safeguard your brand identity, prevents others from using similar marks that could create confusion, and provides legal remedies in case of infringement in each country where your mark is registered.

Is there such a thing as an “International Trademark”?

While there is no single “International Trademark” that provides worldwide protection in all countries, there are mechanisms and agreements that facilitate the process of seeking trademark protection in multiple countries.

One such mechanism is the Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO). Through the Madrid System, trademark owners can seek protection in multiple countries by filing a single international application. This application can cover one or more member countries that have joined the Madrid Protocol or Madrid Agreement. The Madrid Protocol and Agreement are two treaties under the Madrid System, and countries can be party to either or both of these treaties.

By filing an international application under the Madrid System, trademark owners can designate countries where they seek protection, and the application is subject to examination and registration procedures in each designated country. The Madrid System streamlines the process and reduces costs compared to filing separate applications in each country.

It’s important to note that the Madrid System is not a global registration system. It only covers countries that are party to the Madrid Protocol or Agreement. As of my last update in September 2021, the Madrid Protocol had over 125 member countries, and the Madrid Agreement had about 56 member countries. Not all countries are part of the Madrid System, and each country has its own trademark laws and registration requirements.

Additionally, there are regional trademark systems that provide protection in multiple countries within a specific geographic region. For example, the European Union Intellectual Property Office (EUIPO) allows trademark registration that covers all EU member states through a single application. Similarly, the African Regional Intellectual Property Organization (ARIPO) provides a regional system that covers several African countries.

When seeking international trademark protection, it is crucial to work with a trademark attorney or intellectual property firm experienced in international trademark matters. They can guide you through the complexities of the different registration systems, conduct thorough searches for potential conflicts, and handle the application process efficiently to protect your brand’s identity in various countries where you plan to conduct business or expand your market presence.

Will hiring an attorney improve my chances of having my trademark application approved?

Hiring a trademark attorney can increase your chances of getting your trademark application approved. A skilled attorney knows the process and what the USPTO is looking for. Prior to completing the application, your attorney will conduct a thorough search to ensure no marks similar to your desired mark exist. Should your initial application get rejected, your attorney will know how to respond to the USPTO.

Bottom line: A trademark attorney is your advocate and will fight hard for your rights as a business owner to trademark your intellectual property.

What is a trademark office action?

A trademark office action is an official communication issued by the trademark examining attorney at the relevant trademark office in response to a filed trademark application. The purpose of an office action is to inform the applicant of any issues, concerns, or deficiencies found during the examination of the application. It may also request additional information or clarification from the applicant.

Office actions can be issued for various reasons, including:

1. Substantive Issues: The examining attorney may find that the proposed mark does not meet the legal requirements for registration. This could be due to issues related to distinctiveness, likelihood of confusion with existing trademarks, descriptiveness, genericness, or improper classification of goods or services.
2. Formalities: The office action may point out technical or procedural deficiencies in the application, such as missing information or incomplete forms.
3. Specimen or Use Issues: If the application is based on actual use of the mark in commerce, the examining attorney may request a proper specimen showing the mark’s use in connection with the claimed goods or services. If the application is based on intent-to-use, the examining attorney may require additional evidence of the mark’s use in commerce before registration.
4. Description of Goods or Services: The examining attorney may question or require clarification on the identification of goods or services listed in the application.
5. Conflicting Marks: If the examining attorney identifies potentially conflicting marks, they may require the applicant to address the issue or provide arguments as to why the marks can coexist without causing confusion.

It is essential for the applicant to carefully review and understand the office action, as failure to respond adequately and timely could result in the abandonment of the trademark application. The applicant typically has a set period (usually six months) to respond to the office action, though the time frame may vary depending on the trademark office’s rules.

In response to an office action, the applicant can take several actions:

1. Amend the Application: The applicant may choose to amend the application to address the issues raised by the examining attorney. This may involve making changes to the mark, the identification of goods or services, or providing additional evidence or arguments.
2. Provide Arguments or Evidence: The applicant can provide arguments or evidence to support the registrability of the mark, demonstrate acquired distinctiveness, or refute any conflicts identified by the examining attorney.
3. Abandon the Application: If the issues raised in the office action cannot be resolved or if the applicant no longer wishes to pursue registration, they can choose to abandon the application.

Navigating the office action process can be complex, and it is highly advisable to seek the assistance of a trademark attorney. An experienced attorney can help interpret the office action, prepare a well-structured and persuasive response, and guide the applicant through the necessary steps to increase the likelihood of successful registration.

What should I do if I receive an office action on my trademark application?

Receiving an office action on your trademark application can be a critical moment in the registration process. It’s essential to carefully review the office action, understand the issues raised by the examining attorney, and take appropriate steps to address them. Here’s a step-by-step guide on what to do if you receive an office action:

1. Read and Understand the Office Action: Carefully read the office action to identify the specific issues or concerns raised by the examining attorney. Take note of any rejections, requirements for additional information or evidence, and the deadline for responding.
2. Seek Legal Advice: Consider consulting with a trademark attorney. An experienced attorney can provide valuable insights, assess the strengths and weaknesses of your application, and guide you through the response process. They can also help you understand the legal implications and potential strategies for addressing the issues raised in the office action.
3. Evaluate the Options: After understanding the issues in the office action, consider your options. You can choose to:
4. Amend the Application: If the examining attorney has identified specific deficiencies, you may need to make amendments to the application. This could involve changing the mark, clarifying the identification of goods or services, or providing additional evidence to support the mark’s distinctiveness or use in commerce.
5. Provide Arguments or Evidence: If you believe your mark is registrable and the examining attorney’s concerns can be addressed, you can provide arguments, evidence, or legal reasoning to support your position.
6. Abandon the Application: If the issues raised are insurmountable or if you no longer wish to pursue registration, you can choose to abandon the application.
7. Prepare a Response: If you decide to proceed with the application, prepare a well-structured and persuasive response to the office action. Address each issue raised by the examining attorney clearly and concisely. Provide evidence, legal arguments, and any amendments necessary to overcome the objections.
8. Meet the Deadline: Office actions typically come with a deadline for response (usually six months). Make sure to submit your response before the deadline to avoid potential abandonment of the application.
9. Be Patient: After submitting your response, the examining attorney will review it and issue a final decision. This process may take several months, so be patient while awaiting the outcome.
10. Monitor the Application: Continue monitoring the status of your application in the trademark office’s database. If the examining attorney accepts your response, the application will move forward to the next stages of the registration process. If the response is insufficient or if the issues persist, the examining attorney may issue a final refusal.

Remember that the response to an office action is critical to the success of your trademark application. Working with a trademark attorney can significantly increase your chances of overcoming the issues raised in the office action and obtaining successful registration. An attorney can help you navigate the complexities of the response process and ensure that your rights are protected throughout the registration process.

How do I enforce my trademark rights?

Enforcing your trademark rights is crucial to protect your brand and prevent unauthorized use or infringement by others. If you believe someone is using your trademark without permission or in a way that could cause confusion among consumers, you can take several steps to enforce your rights.

1. Monitor and Detect Infringement: Regularly monitor the marketplace for unauthorized use of your trademark. This can be done through online searches, monitoring social media platforms, trade shows, and other relevant channels. Trademark watch services can also be helpful in identifying potential infringements.
2. Gather Evidence: If you discover potential infringement, gather evidence to support your claim. This may include screenshots, photographs, copies of marketing materials, or any other documentation that shows the unauthorized use of your mark.
3. Cease and Desist Letter: Sending a cease and desist letter is often the first step in enforcing your trademark rights. The letter should clearly state your ownership of the trademark, the infringing activities, and demand that the infringer immediately stop using the mark. In many cases, a cease and desist letter is enough to resolve the issue amicably.
4. Negotiation and Settlement: In some cases, the infringer may be willing to negotiate and come to a settlement. This could involve the infringer agreeing to cease using the mark, modifying their mark to avoid confusion, or entering into a licensing agreement with you.
5. Mediation or Alternative Dispute Resolution (ADR): If negotiations are not successful, you may consider using mediation or ADR to resolve the dispute outside of court. Mediation involves a neutral third party assisting both parties in reaching a resolution. ADR can be a cost-effective and less time-consuming alternative to litigation.
6. Trademark Opposition or Cancellation Proceedings: If the infringing mark is the subject of a pending trademark application or an existing registration, you may file an opposition or cancellation proceeding with the relevant trademark office. This process allows you to challenge the registration or pending registration of the infringing mark.
7. Lawsuit: As a last resort, if negotiations and alternative dispute resolution methods fail, you may need to consider filing a trademark infringement lawsuit in court. In a lawsuit, you would need to demonstrate that you have valid trademark rights, that the infringing use is likely to cause confusion, and that you have suffered damages as a result of the infringement.

It is important to note that enforcing trademark rights can be complex and may require legal expertise. Consulting with a trademark attorney is highly advisable to assess the strength of your case, understand your options, and navigate the enforcement process effectively. An attorney can help you take appropriate action to protect your trademark and preserve the integrity of your brand.

Why Trademark Registration Matters for Corpus Christi Businesses

Corpus Christi is a gorgeous city because of its gorgeous beaches, friendly people, a wide variety of entertainment options, and all-around great weather.

When it comes to finding locations to start a new business venture, you can’t do much better than Corpus Christi. Entrepreneurs in the city know that there’s a lot of work that goes into starting and running a successful business. However, they need to make sure that they register their trademarks before they invest too much time or money into their business.

Imagine the following: Lucia has been making fresh fruit juices and smoothies for her friends for years. They constantly tell her to go into business for herself and she finally decides to do it. She purchases a small food cart and outfits it with everything she needs to make her delicious smoothies and juices.

Lucia calls her new business Corpus Christi Smoothies and creates a website, paints the name on her cart, and starts advertising on social media. She Googles the name Corpus Christi Smoothies and doesn’t get any matches so she assumes she’s free to use the name.

Lucia travels around downtown Corpus Christi selling her smoothies to residents and tourists. After 2 months in business, she’s making more money than she anticipated.

Unfortunately, Lucia soon gets a cease-and-desist letter in the mail. There’s a large beverage company in California that has trademarked the name Corpus Christi Smoothies for a new product they are launching in the next 6 months. The name never would have come up in a Google search because the product isn’t on the market yet. They are well within their rights to ask Lucia to shut down her smoothie cart.

Now Lucia must consider rebranding everything and starting over. That’s an expensive and time-consuming proposition. If Lucia had worked with a trademark attorney from the start, the attorney would have discovered the trademark and she could have chosen a new name before she invested so much time and money into her business.

Whether you’re just starting to write your business plan or you’ve been selling your products and services for a while, the time to register your trademark is now.

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 Corpus Christi and yet it can assist businesses from Texas in registering a federal trademark because trademarks are governed under federal law.

Trademarks Services for Corpus Christi Businesses

• Trademark Search Services
• Trademark Application Filing
• Trademark Infringement Defense
• Trademark a Name
• Trademark a Phrase
• Trademark Cease and Desist Letters
• Trademark Office Action Response
• Trademark Abandonment