Daytona Beach, Florida Businesses Use Cohn Legal for Trademark Services
Serving clients in Daytona Beach, Florida, Cohn Legal, PLLC is a boutique law firm that focuses on intellectual property protection for startups and entrepreneurs. Our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates. While excellence in legal representation is a given, we take greater pride in our ability to forge lasting bonds with our clients.
Top Questions Florida Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Daytona Beach, Florida, 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 Daytona Beach, Florida, 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 recognizable sign, symbol, or expression that distinguishes the goods or services of one business from those of others. It can take various forms, such as a word, phrase, logo, design, color, sound, or a combination thereof. Trademarks play a crucial role in branding and marketing by creating a unique identity for a business and its offerings. They help consumers identify and distinguish between different products or services in the marketplace.
Trademarks serve as valuable intellectual property assets, as they can be protected and enforced by law. By registering a trademark, a business obtains exclusive rights to use the mark in connection with specific goods or services within a particular geographic territory. This protection prevents others from using a similar mark that could cause confusion among consumers.
What exactly am I protected from when registering a trademark?
A registered trademark provides the trademark owner with the exclusive right to use that trademark (name/logo/slogan) in conjunction with the goods/services sold under the banner of the trademark. Importantly, it prevents even non-exact copies of the trademark from being used and instead, protects against trademark infringers who are using a sufficiently similar name while selling sufficiently similar goods services. Thus, a new tennis shoe company could not sell shoes under the name “NIKEY” because it is too similar to the Nike Corporation’s trademark, NIKE.
Is there a difference between a trademark and service mark?
Yes, there is a difference between a trademark and a service mark, although the distinction can vary by jurisdiction. In general, a trademark is used to identify and distinguish goods (physical products), while a service mark is used to identify and distinguish services.
Trademarks are commonly associated with tangible products, such as clothing, electronics, or food items. They help consumers recognize the source and quality of these goods. For example, the Nike “swoosh” logo is a trademark associated with athletic shoes.
On the other hand, service marks are used to identify and distinguish services offered by businesses. Services can include anything from legal or accounting services to telecommunications or entertainment services. For instance, the IBM logo and name are service marks associated with the company’s information technology services.
In practice, the terms “trademark” and “service mark” are often used interchangeably, especially when referring to brand identifiers. However, it is important to understand the specific terminology and regulations in the jurisdiction where you intend to seek protection for your mark.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol have distinct meanings and usages related to trademarks.
The ® symbol, represented by the circled capital letter “R,” is used to indicate that a trademark is registered with the appropriate trademark office. It provides notice to others that the mark is protected by law and that unauthorized use may result in legal consequences. The ® symbol should only be used once the mark has been officially registered.
On the other hand, the TM symbol, represented by the superscript letters “TM,” is used to indicate that a business claims rights to a trademark. It serves as a notice that the mark is being used as a source identifier, even if it is not yet registered with the trademark office. The TM symbol can be used with any mark that is being used to identify goods or services, regardless of whether it is registered or not.
The use of the ® symbol is reserved for registered trademarks, while the TM symbol can be used both for marks in the process of registration and for unregistered marks. It’s important to note that the availability of the ® symbol varies by jurisdiction, and some countries may have their own specific symbols or requirements.
How can I determine if a trademark is available?
Before adopting and using a trademark, it is crucial to conduct a thorough trademark search to determine its availability. Here are some steps you can take to assess the availability of a trademark:
1. Preliminary Search: Begin by conducting a preliminary search using online databases, search engines, and business directories to check if anyone else is using a similar mark for related goods or services. Look for identical or similar marks, including variations in spelling, sound, or appearance.
2. Professional Search: Consider engaging a trademark attorney or a professional trademark search company to conduct a comprehensive search. They have access to specialized databases and resources that can uncover potential conflicts or prior registrations that may not be easily discoverable through public searches.
3. Trademark Office Databases: Consult the trademark office database in the relevant jurisdiction. In the United States, for example, the United States Patent and Trademark Office (USPTO) provides an online database called the Trademark Electronic Search System (TESS). Search for similar marks that may pose a likelihood of confusion with your proposed mark.
4. International Considerations: If you plan to expand your business internationally, conduct searches in the trademark office databases of the countries where you intend to operate or seek protection. This will help identify any conflicting marks that may affect your ability to register or use your mark in those jurisdictions.
5. Legal Advice: Seek guidance from a trademark attorney who can analyze the search results, assess the risks, and provide expert advice on the availability and registrability of your proposed mark. They can help navigate the complexities of trademark law and guide you through the registration process.
Remember, conducting a comprehensive trademark search is crucial to avoid potential conflicts with existing marks.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, you can obtain a federal trademark even if you only provide your services locally. The scope of protection for a trademark depends on the jurisdiction in which it is registered. In the United States, for example, you can seek federal trademark registration with the United States Patent and Trademark Office (USPTO) regardless of whether your services are limited to a specific geographic area.
Federal trademark registration provides several benefits, including nationwide protection, the ability to enforce your rights in federal court, and a legal presumption of ownership and exclusive rights to use the mark. It also serves as a deterrent to others who may consider using a similar mark for related services.
When applying for a federal trademark, you are required to specify the geographic area in which you are currently using or intend to use the mark. If your services are limited to a specific locality, you can provide this information in your trademark application. However, it’s important to note that if you later decide to expand your services beyond the initially specified geographic area, you may need to file additional applications to protect your mark in those new areas.
Obtaining a federal trademark registration is a valuable step in protecting your brand and establishing exclusive rights to your mark, even if your services are primarily local. Consult with a trademark attorney to ensure compliance with the registration requirements and maximize the protection for your mark.
What is the USPTO?
USPTO stands for the United States Patent and Trademark Office. An examining attorney at the USPTO reviews trademark applications and makes decisions on whether or not they are eligible for registration.
The USPTO also maintains records of existing and pending trademarks. However, the USPTO does not enforce trademark rights. It is the responsibility of each trademark owner to protect their own trademarks.
What is TEAS?
TEAS stands for the Trademark Electronic Application System. This is basically an online portal where you can submit your trademark application to the United States Patent and Trademark Office. TEAS is easy to use and available 24/7. You can also pay your application fees through TEAS.
What is the Official Gazette?
The Official Gazette (OG) is a USPTO publication. It’s released every Tuesday and includes information about the latest trademarks that have been approved. Once a trademark is published in the Official Gazette, any individual has 30 days to come forward and oppose the trademark. If no one opposes the trademark, then it is officially registered.
How long does the trademark application process take?
The length of the trademark application process can vary depending on several factors, including the jurisdiction where you are seeking registration, the complexity of your application, and any issues or objections that may arise during the examination process. However, it’s important to note that the trademark application process typically takes several months to several years to complete.
In the United States, the timeline for a federal trademark application with the United States Patent and Trademark Office (USPTO) can be roughly summarized as follows:
1. Filing: After submitting your trademark application, you will receive an acknowledgment from the USPTO indicating that your application has been received. This usually occurs within a few business days.
2. Examination: The USPTO examines your application to ensure it meets the legal requirements for registration. This includes reviewing the mark for distinctiveness, potential conflicts with existing marks, and compliance with other statutory requirements. The examination process typically takes several months.
3. Office Actions: If the USPTO identifies any issues or objections during the examination, they will issue an Office Action explaining the reasons for the refusal or requesting additional information or clarification. You will have a set period to respond to the Office Action, typically six months, although extensions may be available.
4. Publication: If your application survives the examination without objections or after successfully overcoming any objections, it will be published in the Official Gazette, a weekly publication of the USPTO. This opens a window for third parties to oppose your mark.
5. Opposition Period: Once your mark is published, there is a 30-day period (extendable to 60 days in certain cases) in which third parties can oppose the registration of your mark by filing an Opposition Proceeding. If no opposition is filed, your application proceeds to the next stage.
6. Registration: If no oppositions are filed or if any oppositions are resolved in your favor, the USPTO will issue a Notice of Allowance, indicating that your mark is eligible for registration. You will then have a specific period to submit a Statement of Use or a Request for an Extension of Time to file the Statement of Use.
7. Registration Certificate: Once your Statement of Use is accepted, the USPTO will issue a registration certificate, officially granting you federal trademark registration.
It is important to note that the timelines provided are general estimates and can vary based on the specific circumstances of your application.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights can be established through use in commerce, even without formal registration. This is known as common law trademark rights. When you use a mark to identify your goods or services in connection with your business, you automatically gain some level of protection for that mark in the geographic areas where you are using it.
Common law trademark rights provide certain limited protections, such as the ability to prevent others in the same geographic area from using a confusingly similar mark in a way that would cause consumer confusion. However, common law rights are generally less extensive and more difficult to enforce than registered trademark rights.
Registering a trademark with the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO), provides additional benefits and stronger legal protection. These benefits include nationwide protection, a legal presumption of ownership and exclusive rights to use the mark, the ability to enforce your rights in federal court, and the ability to use the ® symbol.
While registration is not mandatory, it is highly recommended to seek federal registration for your trademark if you plan to expand your business, operate in multiple jurisdictions, or want to strengthen your brand protection. It provides a higher level of protection and can serve as a powerful tool in enforcing your rights and preventing others from using similar marks.
Consult with a trademark attorney to understand the advantages and requirements of trademark registration and to ensure that your mark is adequately protected.
Should I wait until my business is up and running before registering my trademark?
There’s no need to wait. Any experienced trademark attorney will advise you to register your trademark as soon as possible. If you wait until your business is established to register your mark, you may find that you’re infringing on an existing trademark. That means you’ll find yourself spending time and money to rebrand your business, create new marketing collateral, update product designs, etc.
What is a trademark’s specimen?
A trademark specimen is a sample or evidence submitted as part of a trademark application to demonstrate how the mark is actually used in commerce to identify the goods or services associated with the mark. It serves as proof that the mark is not merely an idea or concept, but is actively used in connection with the applied-for goods or services.
The purpose of a trademark specimen is to show consumers encountering the mark in the marketplace the source of the goods or services and to establish that the mark functions as a trademark. It helps the trademark office determine whether the mark meets the requirements for registration, such as distinctiveness and use in commerce.
The acceptable type of specimen depends on whether the mark is used for goods or services:
1. Specimen for Goods: If the mark is used to identify goods, an acceptable specimen can be a label, tag, packaging, container, or a display associated with the goods. It should show the mark in use on or in connection with the goods being sold or transported in commerce. Examples include product packaging with the mark prominently displayed or a product label bearing the mark.
2. Specimen for Services: If the mark is used to identify services, an acceptable specimen can be advertising materials, brochures, website screenshots, or any other material that shows the mark being used in connection with the services provided. Examples include screenshots of a website displaying the mark in relation to the offered services or advertising materials featuring the mark in connection with the services.
It’s important to note that the specimen must accurately represent the actual use of the mark in commerce and should be submitted in the format specified by the trademark office. Failure to provide an acceptable specimen can result in the rejection of your trademark application.
Consult with a trademark attorney to ensure that your trademark specimen meets the requirements for registration and effectively supports your application.
Can I request an expedited approval of my trademark registration?
Yes, in some cases, you can request an expedited approval of your trademark registration. The availability and requirements for expedited processing vary depending on the jurisdiction where you are seeking registration.
In the United States, the United States Patent and Trademark Office (USPTO) offers an expedited processing option called the “TEAS Plus” and “TEAS RF” programs, which provide accelerated examination in exchange for meeting specific requirements and using the USPTO’s electronic filing system (TEAS).
Under the TEAS Plus program, applicants must meet certain strict criteria, including:
1. Use of the USPTO’s electronic filing system (TEAS).
2. Selecting goods and services from pre-approved descriptions.
3. Agreeing to file all future responses and documents electronically.
4. Paying all required fees upfront.
The TEAS RF (Reduced Fee) program has similar requirements but allows for a broader range of goods and services, although it requires a slightly higher fee than TEAS Plus.
It’s important to note that expedited processing does not guarantee a quicker approval or registration. It primarily accelerates the examination process, but other factors, such as potential conflicts with existing marks or objections from the trademark office, can still affect the overall timeline.
If you require expedited processing for your trademark registration, consult with a trademark attorney who can guide you through the process, assess your eligibility, and ensure that all requirements are met to increase the chances of a faster approval.
Can I trademark a phrase?
Yes, you can trademark a phrase under certain conditions. In order to obtain trademark protection for a phrase, it must meet the legal requirements for trademark registration, including distinctiveness and use in commerce.
Distinctiveness: To be eligible for trademark protection, a phrase must be distinctive, meaning it must be capable of identifying and distinguishing the source of the goods or services associated with the phrase. There are different categories of distinctiveness:
1. Fanciful or Coined Phrases: These are phrases that are made up and have no common meaning or association with the goods or services. For example, “Xerox” for photocopying machines.
2. Arbitrary Phrases: These are common words used in an unrelated context. For example, “Apple” for computers and electronic devices.
3. Suggestive Phrases: These are phrases that suggest a characteristic or quality of the goods or services, without explicitly describing them. For example, “Netflix” for an online streaming service.
4. Descriptive Phrases: These are phrases that directly describe the goods or services, but have acquired secondary meaning over time. They may be eligible for trademark protection if they have become distinctive through extensive use and consumer recognition. For example, “Best Buy” for a retail electronics store.
Generic phrases, which refer to the common name or category of the goods or services, are generally not eligible for trademark protection.
Use in Commerce: To obtain trademark registration, you must demonstrate actual use of the phrase in commerce to identify and distinguish your goods or services. This can include using the phrase on product packaging, in advertising materials, or on a website, among other forms of use.
It’s important to conduct a thorough trademark search to ensure that the phrase you want to trademark is not already in use or registered by someone else for similar goods or services. Consulting with a trademark attorney is recommended to assess the registrability of your phrase and guide you through the registration process.
Can I trademark a logo?
Yes, you can trademark a logo. A logo can function as a trademark or a part of a trademark if it meets the legal requirements for trademark registration, including distinctiveness and use in commerce.
Distinctiveness: In order to be eligible for trademark protection, a logo must be distinctive, meaning it must be capable of identifying and distinguishing the source of the goods or services associated with the logo. Similar to phrases, there are different categories of distinctiveness for logos:
1. Fanciful or Coined Logos: These are unique, made-up designs with no common meaning or association. For example, the Nike “swoosh” logo.
2. Arbitrary Logos: These are common symbols or designs used in an unrelated context. For example, the Apple logo for computers and electronic devices.
3. Suggestive Logos: These are logos that suggest a characteristic or quality of the goods or services, without explicitly describing them. For example, the Amazon logo with an arrow pointing from “A” to “Z,” indicating a wide variety of products.
4. Descriptive Logos: These are logos that directly describe the goods or services, but have acquired secondary meaning over time. They may be eligible for trademark protection if they have become distinctive through extensive use and consumer recognition. For example, the Target logo, which uses a simple bullseye design.
Use in Commerce: To obtain trademark registration for a logo, you must demonstrate actual use of the logo in commerce to identify and distinguish your goods or services. This can include using the logo on product packaging, in advertising materials, or on a website, among other forms of use.
It’s important to conduct a thorough trademark search to ensure that the logo you want to trademark is not already in use or registered by someone else for similar goods or services. Consulting with a trademark attorney is recommended to assess the registrability of your logo and guide you through the registration process.
Can I trademark a color?
Yes, in some cases, you can trademark a color. However, obtaining trademark protection for a color is generally challenging because colors are considered inherently non-distinctive. To successfully trademark a color, you must demonstrate that the color has acquired distinctiveness and has become associated with your goods or services in the minds of consumers.
In the United States, the United States Patent and Trademark Office (USPTO) follows specific guidelines for registering colors as trademarks. These guidelines state that a single color or limited combination of colors may be registered as a trademark if it has acquired distinctiveness through extensive use and promotion, and if consumers have come to recognize the color as indicating the source of the goods or services.
To establish distinctiveness, you must provide evidence showing:
1. Long and exclusive use of the color in connection with the goods or services.
2. Extensive advertising and promotion emphasizing the color as a distinctive identifier.
3. Consumer surveys or other evidence demonstrating that consumers associate the color with your brand or goods/services.
Examples of successfully registered color trademarks include the color pink for insulation products, the color brown for delivery services, and the color blue for athletic footwear. It’s important to note that obtaining trademark protection for a color can be complex and requires strong evidence of acquired distinctiveness.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to someone else. Trademark transfer or assignment involves the transfer of ownership rights and associated goodwill from the current owner (assignor) to another party (assignee). The assignment can be total (all rights transferred) or partial (certain rights transferred).
The transfer of a trademark typically requires a written agreement, known as a trademark assignment agreement, which sets out the terms and conditions of the transfer. The assignment agreement should include:
1. Parties: Clearly identify the assignor (current owner) and assignee (new owner) of the trademark.
2. Description of Trademark: Provide a detailed description of the trademark being transferred, including the registered mark, registration number (if applicable), and any associated logos or designs.
3. Transfer of Rights: Clearly state that the assignor is transferring all rights, title, and interest in the trademark to the assignee.
4. Consideration: Specify the consideration or payment for the assignment, if any.
5. Warranties and Representations: Include representations and warranties from the assignor regarding the ownership of the trademark and its validity.
6. Governing Law and Jurisdiction: Determine the jurisdiction and laws governing the assignment agreement.
7. Signatures: Both parties should sign and date the agreement to indicate their acceptance.
It’s important to note that the transfer of a trademark should be recorded with the relevant trademark office to ensure the new owner’s rights are protected and to update the ownership records.
Can I license my trademark to others?
Yes, you can license your trademark to others. 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, subject to the terms and conditions of a trademark license agreement.
A trademark license agreement outlines the rights and obligations of both parties and typically includes the following provisions:
1. Grant of License: Clearly state that the licensor grants the licensee the right to use the trademark for the specified goods or services and within the defined territory.
2. Quality Control: Specify the quality standards that the licensee must adhere to when using the trademark.
3. Duration: Determine the duration of the license, whether it is perpetual or for a specific period.
4. Royalties and Fees: Outline any royalties or licensing fees that the licensee must pay to the licensor for the use of the trademark.
5. Termination: Define the conditions under which either party can terminate the license agreement.
6. Intellectual Property Rights: Clarify that the licensor retains ownership of the trademark and any associated intellectual property rights.
7. Governing Law and Jurisdiction: Determine the jurisdiction and laws governing the license agreement.
8. Signatures: Both parties should sign and date the agreement to indicate their acceptance.
It’s important to carefully select and monitor licensees to ensure that they comply with the terms of the license agreement and maintain the quality and reputation associated with your trademark. Regular audits and inspections may be necessary to enforce quality control standards.
Is there such a thing as an “International Trademark”?
While there is no such thing as a single “International Trademark” that grants worldwide protection, there are mechanisms available to protect your trademark in multiple countries.
1. Madrid System: The Madrid System for the International Registration of Marks allows trademark owners to seek protection in multiple countries through a single international 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 seek trademark protection. This simplifies the process by reducing the need to file separate applications in each country.
2. Regional Trademark Systems: There are regional trademark systems that provide protection across a specific geographic region. For example, the European Union Intellectual Property Office (EUIPO) allows for the registration of European Union Trademarks (EUTMs), which provide protection in all EU member states. Similarly, the African Regional Intellectual Property Organization (ARIPO) and the African Intellectual Property Organization (OAPI) provide regional trademark protection in Africa.
3. National Applications: If you wish to protect your trademark in a specific country or countries that are not covered by international or regional systems, you can file separate national trademark applications in each country of interest. This involves complying with the trademark laws and regulations of each country and following their application procedures.
It’s important to consider your target markets and the countries where you plan to do business to determine the most appropriate approach for protecting your trademark internationally. Consulting with a trademark attorney who specializes in international trademark law can help you navigate the complexities of global trademark protection and develop a strategy that aligns with your business objectives.
What is a trademark office action?
A trademark office action is an official communication issued by a trademark office in response to a trademark application. It outlines any issues, objections, or requirements that must be addressed before the trademark can proceed to registration. Office actions can be issued by both domestic and international trademark offices and serve as a means for the trademark office to evaluate the registrability of a mark.
There are two main types of trademark office actions:
1. Non-Substantive Office Actions: These office actions typically relate to procedural or administrative matters, such as clarifying the identification of goods or services, correcting typographical errors, or requesting additional information or documents. Non-substantive office actions do not directly challenge the registrability of the mark and can often be resolved by providing the requested information or making the necessary amendments.
2. Substantive Office Actions: These office actions raise substantive issues regarding the registrability of the mark. They may include objections based on legal grounds, such as a likelihood of confusion with an existing mark, descriptiveness of the mark, lack of distinctiveness, or issues related to the identification of goods or services. Substantive office actions require a substantive response addressing the objections raised by the trademark office.
Upon receiving an office action, it is crucial to carefully review its contents and understand the objections or requirements stated. Failure to respond to an office action within the specified timeframe may result in the abandonment of the trademark application.
What should I do if I receive an office action on my trademark application?
If you receive an office action on your trademark application, it is essential to carefully review the contents of the office action and promptly respond within the specified timeframe. Here are the steps you should take:
1. Read and Understand the Office Action: Thoroughly review the office action to understand the objections or requirements raised by the trademark office. Pay attention to the specific issues and any deadlines mentioned.
2. Seek Professional Assistance: Consider consulting with a trademark attorney who can provide guidance on how to respond effectively to the office action. An attorney experienced in trademark law can assess the objections, advise on the best course of action, and draft a persuasive response.
3. Assess the Merits of the Objections: Evaluate the objections raised by the trademark office and determine if they have a valid basis. Research and analyze relevant case law, prior registrations, and other factors that may impact the registrability of your mark.
4. Prepare a Comprehensive Response: Craft a well-reasoned and persuasive response to address each objection raised in the office action. Provide supporting arguments, evidence, and legal authority, if applicable, to demonstrate that your mark is registrable.
5. Make the Necessary Amendments or Clarifications: If the office action requests amendments or clarifications to your application, ensure that you make the required changes accurately and in accordance with the guidelines provided.
6. Submit the Response Timely: Adhere to the deadline specified in the office action and submit your response within the given timeframe. Failure to respond within the deadline may result in the abandonment of your trademark application.
7. Maintain Open Communication: Stay in contact with the trademark office and keep records of all communications, including proof of submission of your response.
Responding to an office action can be complex, and the success of your response can significantly impact the outcome of your trademark application. Working with a knowledgeable trademark attorney will increase your chances of overcoming the objections and securing registration for your mark.
How do I enforce my trademark rights?
Enforcing your trademark rights is essential to protect your brand and prevent unauthorized use or infringement by others. Here are steps you can take to enforce your trademark rights:
1. Monitor and Identify Infringements: Regularly monitor the marketplace, including online platforms, to identify potential infringers using marks similar to yours. Use online tools, search engines, and professional trademark monitoring services to detect unauthorized use or potentially infringing activities.
2. Document Infringements: Collect evidence of the infringing activities, including screenshots, photographs, purchase receipts, advertisements, or any other relevant documentation that demonstrates the unauthorized use of your trademark.
3. Evaluate the Strength of Your Case: Assess the strength of your trademark rights and the degree of similarity between your mark and the infringing mark. Consult with a trademark attorney to evaluate the legal merits of your case and determine the most appropriate course of action.
4. Cease and Desist Letter: In many cases, sending a cease and desist letter to the infringing party can be an effective initial step. The letter should clearly state your rights, the basis for the infringement claim, and demand that the infringing activities cease immediately.
5. Negotiation and Settlement: If the infringing party is receptive to resolving the matter amicably, you may consider negotiating a settlement agreement. This can involve obtaining their agreement to cease the infringing activities, modify their mark, or compensate you for damages incurred.
6. Alternative Dispute Resolution: In cases where negotiation or settlement is not feasible, alternative dispute resolution methods, such as mediation or arbitration, can be pursued to resolve the dispute outside of court. These methods offer a quicker and less costly alternative to litigation.
7. Litigation: If all other attempts at resolution fail, litigation may be necessary to enforce your trademark rights. Consult with a trademark attorney who specializes in intellectual property litigation to assess the viability of a legal action and represent your interests in court.
Remember, enforcing your trademark rights is an ongoing process. Regular monitoring, prompt action, and working closely with a trademark attorney will help protect your brand and maintain the integrity of your trademark rights.
Is there such a thing as an “International Trademark”?
Trademarks are constrained and governed by the territory in which they are used to sell products/services. Thus, obtaining trademark registration in the United States only protects trademark holders from infringement in the United States; A US trademark has no effect on trademark rights in other countries. If one wanted to obtain international trademark protection, one would need to apply for a trademark using the Madrid Protocol and designate specific countries for protection.
How long does a trademark last?
In general, a trademark can last indefinitely as long as it continues to be used in commerce and the necessary renewal fees are paid. However, the duration of trademark protection can vary depending on the country and the type of trademark. Here are some common durations:
1. United States: In the United States, trademarks can last indefinitely as long as they are continuously used in commerce and the required maintenance filings, known as Declarations of Use or Excusable Nonuse, are submitted between the 5th and 6th years after registration, as well as between the 9th and 10th years and every 10 years thereafter.
2. European Union: In the European Union, a trademark registration lasts for 10 years. It can be renewed indefinitely for successive 10-year periods as long as the renewal fees are paid.
3. United Kingdom: The duration of a trademark registration in the United Kingdom is also 10 years. It can be renewed indefinitely by paying the renewal fees.
4. Other countries: The duration of trademark protection varies in other countries. Some countries offer initial registration terms of 10 years, while others may have longer or shorter durations. In most cases, trademarks can be renewed indefinitely.
It’s important to note that simply registering a trademark does not guarantee protection indefinitely. Trademark owners must actively use and enforce their trademarks to maintain their rights. Failure to use a trademark or defend it against infringement can result in the loss of protection. It’s recommended to consult with a qualified intellectual property attorney or professional for specific and up-to-date information regarding trademark durations in a particular jurisdiction.
Why Trademark Registration Matters for Daytona Beach Businesses
Daytona Beach is filled with plenty of shops, restaurants, and art galleries, but it’s also close to world-class skiing and gorgeous national parks. If you’re an entrepreneur in the Daytona Beach area, then it’s a fabulous location to start a new business venture. While you’re scouting locations and creating a business plan, be sure to also register your trademarks.
Imagine the following: Alaina has noticed an uptick in tourism in Daytona Beach and she sees an opportunity for a new business. She has always wanted to run a bed and breakfast, so when she sees a small inn for sale in the Blake neighborhood, she jumps on it.
Alaina calls her new B&B the Five South Bed & Breakfast. She gets to work renovating the place, creating a business plan, hiring staff, and so much more. A friend of hers recommends that she contact a trademark attorney, but Alaina is reluctant to spend the money on trademark registration so early in the process.
After Alina opens, she sees early success. She’s booking rooms and customers give her establishment glowing reviews online. However, Alaina soon gets a cease-and-desist letter in the mail. It turns out there is a property company called Five South Rentals in Daytona Beach. They own and rent out many of the properties in the same neighborhood as Alaina’s B&B.
Because they own the trademark to the name, they demand that Alaina close her business and not reopen until she rebrands. Alaina is upset and confused by the demand. If she closes down, she may not be able to afford to reopen.
The lesson here is that you should always work with a trademark attorney to ensure your desired trademark is available for use. That way you know you can invest in your business and your brand with confidence.
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 Daytona Beach and yet it can assist businesses from Florida in registering a federal trademark because trademarks are governed under federal law.