Trademark Attorney Services
for Durham NC
Companies.

Durham, North Carolina Businesses Use Cohn Legal for Trademark Services

Abe Cohn is the Managing Partner of Cohn Legal, PLLC. Serving clients in Durham, North Carolina, Abe loves working with startups and entrepreneurs and relishes the opportunity to help companies build something from the ground up. In addition, he assists his clients with a variety of intellectual property law matters in addition to managing various corporate transactional work.

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Top Questions Durham Businesses Have About Obtaining a Trademark

If I Only Provide My Services in Durham, North Carolina, 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 Durham, North Carolina, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.

What is a trademark?

A trademark is a form of intellectual property that represents the identity of a business, product, or service. It is a distinctive symbol, word, phrase, design, logo, or a combination of these elements that distinguishes one source of goods or services from another. Trademarks play a crucial role in the business world as they enable consumers to easily recognize and associate products or services with a specific brand or company.

The primary purpose of a trademark is to prevent confusion among consumers and protect the reputation and goodwill that a business has built around its products or services. By registering a trademark, the owner gains exclusive rights to use the mark in connection with the goods or services it represents. This gives the owner the legal authority to prevent others from using a similar mark that may cause confusion among consumers.

Trademarks can be registered at the national level through the United States Patent and Trademark Office (USPTO) or similar offices in other countries. Once registered, the trademark owner can use the symbol ® to indicate that the mark is officially registered with the relevant trademark authority.

It is important to note that trademarks are distinct from patents and copyrights. While patents protect new inventions and processes, and copyrights protect original works of authorship, trademarks focus on brand identification and protection.

A strong and recognizable trademark can significantly contribute to the success of a business by fostering brand loyalty and consumer trust. However, it is crucial to conduct a comprehensive trademark search before adopting and using a mark to ensure that it is not already in use by another entity. Failure to conduct a proper search can lead to potential infringement issues and legal disputes down the line.

In summary, a trademark is a unique symbol, word, or design that identifies the source of goods or services and provides exclusive rights and legal protection to the owner. Registering a trademark is an essential step for any business seeking to establish a strong brand presence and protect its identity in the marketplace.

Is there a difference between a trademark and service mark?

Yes, there is a difference between a trademark and a service mark, though both serve similar purposes of distinguishing the source of goods or services. The key distinction lies in the type of offerings they protect.

A trademark is used to identify and protect marks associated with goods, which can include physical products like clothing, electronics, or any tangible item. For example, a trademark can be a logo on a soda can, a brand name on a pair of shoes, or a unique design on a phone case. Trademarks are intended to prevent consumer confusion and to ensure that the reputation and quality associated with a particular product are linked to its rightful owner.

On the other hand, a service mark, often abbreviated as “SM,” is used to identify and protect marks associated with services rather than tangible products. It applies to services provided by businesses, such as legal services, consulting, hospitality, or entertainment. For instance, a service mark could be a distinctive logo used by a hotel chain, a name associated with a restaurant’s catering services, or a unique phrase linked to a specific law firm. Like trademarks, service marks aim to prevent confusion among consumers about the source of the services and protect the business’s reputation.

Despite the difference in terminology, the legal protection and registration process for trademarks and service marks are fundamentally the same. In the United States, both trademarks and service marks are registered with the United States Patent and Trademark Office (USPTO). In the application process, the USPTO examines whether the mark is already in use or registered by another party, regardless of whether it is for goods or services.

In some countries, including the United States, the term “trademark” is often used to encompass both trademarks and service marks. Therefore, regardless of whether you are protecting a product or service, you would generally refer to it as a trademark.

When considering whether to obtain protection for a mark associated with goods or services, it is essential to determine which category your business falls into and whether you need a traditional trademark or a service mark. Consulting with a trademark attorney can be beneficial in understanding the distinctions and guiding you through the registration process to safeguard your intellectual property effectively.

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

The ® symbol and the TM symbol serve different purposes and convey distinct legal meanings concerning trademark protection.

1. ® Symbol (Registered Trademark): The ® symbol is used to indicate that a trademark has been officially registered with the appropriate trademark office in a specific country. In the United States, the ® symbol is used to denote that a trademark is registered with the United States Patent and Trademark Office (USPTO). Registration provides the trademark owner with additional legal rights and remedies for enforcement, making it a valuable asset in protecting the brand.

Benefits of using the ® symbol:

– Public Notice: Displaying the ® symbol puts the public on notice that the mark is registered and protected.

– Presumption of Ownership: Registration creates a legal presumption of ownership and validity of the trademark.

– Enhanced Legal Protection: Registered trademarks have stronger protection against potential infringers, and owners can pursue statutory damages and attorney fees in case of infringement.

2. TM Symbol (Trademark): The TM symbol, on the other hand, is used to indicate that a business is claiming rights to a specific mark as a trademark, even if it is not yet officially registered. It can be used with both goods and services. The TM symbol does not require any formal registration process with a government agency; rather, it is a way to provide notice of a company’s intent to protect the mark.

Key points about the TM symbol:

– Common Usage: The TM symbol is widely used by businesses to signify that they consider a particular word, phrase, or logo to be their trademark.

– No Registration Required: Unlike the ® symbol, the TM symbol does not require formal registration and can be used freely by any business without government approval.

– Limited Legal Protection: While the TM symbol provides some level of notice, it does not offer the same level of legal protection as a registered trademark. In case of infringement, enforcing rights to an unregistered mark may be more challenging and limited to common law protections.

Using the appropriate symbol helps communicate the status of a mark and informs the public and potential infringers about the level of legal protection associated with it. Once a trademark is officially registered, it is essential to replace the TM symbol with the ® symbol to take full advantage of the enhanced protection and legal benefits offered by registration. Always ensure that your chosen trademark is legally available before using either symbol to avoid potential infringement issues. If you are unsure about trademark usage or registration, consulting with a trademark attorney can help navigate the process and protect your intellectual property rights effectively.

How can I determine if a trademark is available?

Determining the availability of a trademark is a critical step before adopting and using it for your business. Conducting a comprehensive trademark search helps identify any existing marks that might conflict with your proposed mark. Here are the essential steps to determine if a trademark is available:

1. Preliminary Search:

Start with a preliminary search to get an initial idea of potential conflicts. Use search engines like Google, Bing, or Yahoo to check if the name, logo, or slogan you intend to use is already in use by another company. Additionally, search social media platforms, domain name registries, and online directories to see if the mark is being used in the relevant industry.

2. Trademark Databases:

Consult the official trademark databases maintained by the trademark office in your country. In the United States, you can search for registered trademarks and pending applications using the United States Patent and Trademark Office’s (USPTO) online database called the Trademark Electronic Search System (TESS). In other countries, similar databases exist, such as the European Union Intellectual Property Office (EUIPO) or the Canadian Intellectual Property Office (CIPO) databases.

3. Professional Trademark Search Services:

Consider using the services of a professional trademark search company or a trademark attorney. They have access to specialized databases and can perform a more extensive search to uncover potential conflicts that might not be easily discoverable through a basic search.

4. Clearance Search:

Once you have conducted a preliminary search and checked the databases, it’s essential to conduct a thorough clearance search. This involves reviewing not only registered trademarks but also unregistered (common law) trademarks. Common law trademarks are rights acquired through use in commerce and might not be registered but still enjoy some level of protection.

5. Analyze Search Results:

Review the search results to identify any marks that are similar or identical to your proposed mark, particularly in the same or related industry. Pay attention to marks that might cause consumer confusion, as this is a key factor in determining trademark conflicts.

6. Legal Opinion:

Based on the search results, seek legal advice from a trademark attorney. They can assess the risk of potential conflicts and advise you on whether it’s safe to proceed with the selected mark or if adjustments are needed to avoid infringement.

It’s important to remember that trademark law is complex, and a thorough search is vital to avoid legal issues in the future. Relying solely on a basic search may not uncover all potential conflicts. Engaging a qualified trademark attorney can provide peace of mind and expert guidance throughout the process, increasing the chances of successfully registering and protecting your trademark.

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

No, you do not necessarily need to sell a product or service to obtain a registered trademark. In many jurisdictions, including the United States, you can apply for a trademark even if you haven’t yet started selling your products or services. This type of application is commonly known as an “intent-to-use” or “ITU” application.

Filing an intent-to-use application allows you to reserve the rights to a specific trademark before you launch your business or product. This can be advantageous for several reasons:

1. Securing Priority: Filing an intent-to-use application establishes a priority date for your trademark. If someone else tries to use a similar mark after your filing date but before you begin using the mark, your priority date can give you a legal advantage if a trademark dispute arises.
2. Early Protection: By filing an ITU application, you can start the process of obtaining trademark protection, which can be time-consuming. This way, you can ensure that your application is in progress while you prepare to launch your product or service.
3. Market Research: Filing an intent-to-use application provides you with a certain level of flexibility. If your market research indicates that the mark might not be suitable or that there could be potential conflicts, you can choose not to use the mark and avoid unnecessary expenses.
4. Preserving Rights: In some jurisdictions, including the United States, you have a limited timeframe to begin using the mark after the application is approved. This is usually between six months to three years. By filing an ITU application, you secure your rights to the mark during this timeframe, giving you the opportunity to finalize your product or service launch.

It’s important to note that you will need to provide proof of actual use of the mark in commerce before the trademark registration is granted. This proof is typically submitted to the trademark office in the form of a “Statement of Use” or “Declaration of Use” once you begin using the mark in connection with your products or services.

Overall, the ability to file an intent-to-use application provides significant benefits for businesses that are in the process of establishing their brands or developing new products or services. However, it’s essential to understand the specific requirements and deadlines associated with intent-to-use applications to ensure a smooth and successful trademark registration process. Consulting with a trademark attorney can be invaluable in navigating the complexities of trademark law and maximizing the protection of your intellectual property.

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

Yes, you can obtain a federal trademark in the United States even if you only provide your services locally. The scope of a trademark’s protection is not limited to the geographical area in which the goods or services are currently offered. Instead, trademark protection is based on the intent to use the mark in interstate commerce, which is a requirement for obtaining a federal trademark registration.

In the context of trademarks, “interstate commerce” refers to any commercial activity that involves goods or services being offered or sold across state lines or internationally. This includes activities such as advertising, promoting, or offering services to customers located outside of the state where the services are performed.

When you file a federal trademark application with the United States Patent and Trademark Office (USPTO), you will be required to demonstrate that you have a bona fide intention to use the mark in interstate commerce. This means that you must have a genuine intention to expand your services beyond your local area and offer them to customers in other states or regions. The intent-to-use application allows you to secure your rights to the mark while you prepare for this expansion.

It’s important to be aware that you will eventually need to provide proof of actual use of the mark in interstate commerce to obtain a federal trademark registration. This proof is typically submitted to the USPTO in the form of a “Statement of Use” once you have begun using the mark across state lines or nationally.

Local businesses with plans for future expansion or those that offer services through online platforms or websites accessible outside their immediate area can take advantage of federal trademark protection. Registering your trademark federally provides stronger legal rights and protection, making it easier to enforce your rights against potential infringers throughout the entire country.

However, if your services are genuinely limited only to a specific local area, you may still consider seeking state-level trademark registration, if available in your state. State-level registration offers protection within that specific state and may be more cost-effective for businesses with no immediate plans for interstate expansion.

Consulting with a trademark attorney can help you assess your specific situation and guide you through the process of obtaining the appropriate level of trademark protection based on your business needs and goals.

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

When deciding between registering the name of your business or your brand logo, it is essential to understand the distinctions and the level of protection each option provides.

1. Registering the Business Name (Trademark):

Registering the name of your business as a trademark offers protection for the specific words or combination of words used to identify your goods or services. This type of registration focuses on the textual elements of your brand. It prevents others from using a similar name in the same industry, which could cause confusion among consumers.

Advantages of registering the business name:

– Comprehensive Protection: A business name registration can cover various uses, including printed materials, marketing, websites, and other forms of advertising.

– Flexibility: If you plan to offer multiple products or services under the same name, a business name registration allows you to encompass them all.

2. Registering the Brand Logo (Trademark or Design Patent):

A brand logo, often a unique visual symbol or design, can also be registered as a trademark. This type of registration focuses on protecting the design itself rather than the words used in the logo. Alternatively, if the logo is highly distinctive and unique, you may also consider seeking a design patent to protect its ornamental features.

Advantages of registering the brand logo:

– Visual Identity: A registered logo can be a powerful tool to establish a visual identity for your brand and create a memorable impression on consumers.

– Exclusive Rights: Registering the logo as a trademark or design patent provides you with exclusive rights to use that specific design in connection with your goods or services.

3. Consider Both Options:

In many cases, businesses opt to register both their business name and brand logo to ensure comprehensive protection of their intellectual property. Registering the business name protects the words used to identify the brand, while registering the logo protects the unique visual elements associated with the brand. Together, they create a stronger shield against potential infringers and imitators.

4. Consult with a Trademark Attorney:

The decision of whether to register the business name, the brand logo, or both depends on your specific business goals, industry, and the uniqueness of your brand elements. Consulting with a trademark attorney can provide valuable insights into the best strategy for protecting your intellectual property. They can conduct a thorough search to check for existing conflicts and guide you through the registration process to ensure your brand is adequately protected.

Remember, trademark protection is crucial for building and maintaining brand identity, reputation, and consumer trust. Investing in trademark registration can significantly benefit your business in the long run and provide a competitive advantage in the marketplace.

What is a fanciful trademark?

A fanciful trademark is a type of trademark that falls under the category of “distinctive” marks. It is a unique and coined word, term, or design that has no intrinsic meaning or association with the goods or services it represents. Fanciful trademarks are created specifically for the purpose of being used as trademarks and are highly distinctive in nature.

Unlike generic or descriptive marks, which may describe the product or service itself and are generally not eligible for trademark protection, fanciful trademarks are considered the strongest and most protectable marks on the trademark spectrum. This is because they are inherently distinctive and are less likely to be confused with other marks in the marketplace.

Examples of fanciful trademarks include:

1. Xerox – A well-known brand for photocopiers and related services, the term “Xerox” is a fanciful and made-up word with no meaning before the company adopted it as their brand name.
2. Kodak – Another iconic example, the term “Kodak” was created by the founder George Eastman, with no prior meaning or association.
3. Exxon – The name of a multinational oil and gas corporation, “Exxon” is a unique term designed exclusively for trademark use.

Fanciful trademarks enjoy a high level of legal protection because they are inherently distinctive and not easily replicated by others in the industry. When you create a fanciful mark for your brand, you have the advantage of developing a strong and memorable identity that is uniquely associated with your products or services.

When it comes to choosing a trademark, fanciful marks are often the preferred choice because they provide a greater likelihood of obtaining trademark registration and offer more robust protection against potential infringers. The uniqueness of a fanciful mark reduces the chances of consumer confusion and helps build a strong brand identity.

When developing a fanciful trademark, it’s essential to conduct a comprehensive search to ensure that the mark is not already in use or registered by another party. Consulting with a trademark attorney can be valuable in the process of creating and protecting your fanciful mark, as they can guide you through the registration process and help secure your intellectual property rights.

What is the difference between a fanciful trademark and an arbitrary trademark?

Fanciful trademarks are marks that are usually made up or invented. These marks only have meaning when applied to a specific product or service. An example of a fanciful trademark would be Exxon or Pepsi. Neither word has meaning outside of its use as a brand name of a specific product.

An arbitrary mark is a mark that has a meaning on its own, but applied to a particular product or service that’s unrelated to that meaning. An example would be Apple. An apple is the generic name of a fruit, but when applied to a technology company, it has no particular meaning. Another example is Peter Pan. Peter pan is the name of a character in a book, but when applied to peanut butter, it has no particular meaning and is considered to be distinctive.

What is TEAS?

TEAS stands for the Trademark Electronic Application System, which is an online platform provided by the United States Patent and Trademark Office (USPTO) for filing trademark applications. TEAS allows applicants to electronically submit their trademark applications and related documents, streamlining the application process and reducing paperwork.

There are different versions of TEAS, each catering to specific types of trademark applications. The most commonly used versions are:

1. TEAS Plus: TEAS Plus is a streamlined version of the electronic application that requires applicants to meet specific requirements and follow certain rules. In exchange for meeting these requirements, the filing fee is lower than other TEAS options. To qualify for TEAS Plus, applicants must agree to use pre-approved descriptions of goods and services, select the appropriate filing basis, and commit to communicating with the USPTO through email.
2. TEAS Standard: TEAS Standard allows for more flexibility in the application process. Applicants can provide their own descriptions of goods and services, but the filing fee is slightly higher compared to TEAS Plus.
3. TEAS Reduced Fee (TEAS RF): TEAS RF is an option available for applicants who meet specific criteria, such as claiming ownership of a prior registration for the same mark or being eligible for certain international agreements. The filing fee for TEAS RF is lower than both TEAS Plus and TEAS Standard.

Using the TEAS system offers several benefits to applicants:

– Efficiency: TEAS allows for faster processing times and immediate filing of applications without the need for physical paperwork.

– Cost-Effectiveness: Some TEAS versions offer reduced filing fees, making the application process more affordable for certain applicants.

– Real-Time Confirmation: Applicants receive immediate confirmation of their submissions, reducing uncertainty and allowing them to track the status of their applications.

It’s important to note that filing a trademark application through TEAS requires careful attention to detail, as errors or omissions can lead to delays or rejection of the application. Consulting with a trademark attorney before filing can ensure that your application is properly prepared, increasing the chances of a successful registration.

Overall, TEAS is a valuable tool for trademark applicants, simplifying the process and promoting efficient communication between applicants and the USPTO throughout the trademark registration process.

How long does the trademark application process take?

The duration of the trademark application process can vary depending on various factors, and it typically involves several stages. On average, the entire process can take anywhere from several months to over a year to complete. Here is a breakdown of the different stages and their approximate durations:

1. Initial Application Filing: The first step is to submit the trademark application through the Trademark Electronic Application System (TEAS) or the relevant trademark office’s filing system. This process generally takes a few hours to a day, depending on the completeness of the application and whether any technical issues arise during submission.
2. USPTO Examination: After submitting the application, it undergoes examination by the United States Patent and Trademark Office (USPTO) or the relevant trademark office in your country. The examination stage typically takes several months. During this time, a trademark examiner reviews the application to ensure it meets all formal requirements and that the mark is eligible for registration. If any issues or deficiencies are identified, the applicant is given an opportunity to respond and address them.
3. Publication Period: If the trademark application passes examination, it is published in the official gazette or trademark journal for a specific period, usually 30 days. During this period, third parties have the opportunity to oppose the registration of the mark if they believe it may cause confusion with their existing marks. If an opposition is filed, the process can be further delayed.
4. Registration or Statement of Use: If there are no oppositions or if any oppositions are successfully resolved in favor of the applicant, the trademark is allowed for registration. For “intent-to-use” applications, the applicant must submit a “Statement of Use” or “Declaration of Use” to demonstrate actual use of the mark in commerce. This step can add several months to the process.
5. Certificate of Registration: Once the USPTO (or relevant trademark office) verifies that all requirements have been met, the trademark is registered, and a Certificate of Registration is issued. The entire process from initial filing to registration can take approximately 8 to 14 months, depending on the complexity of the application and the workload of the trademark office.

It’s important to note that the timeframes mentioned above are approximate and can vary based on the specifics of each application and the backlog of the trademark office. Additionally, any issues or challenges that arise during the process can extend the timeline.

While the trademark application process may seem lengthy, it is crucial to ensure that your intellectual property is adequately protected. Working with a trademark attorney can help navigate the process efficiently and avoid common pitfalls, increasing the likelihood of a successful and timely registration.

How long does a trademark last?

Unlike patents, which have a limited term of protection, trademarks can potentially last indefinitely, as long as they are properly maintained and renewed. Trademark rights are based on the continued use of the mark in commerce and the regular submission of maintenance filings with the appropriate trademark office.

In the United States, a registered trademark can have an initial term of 10 years from the date of registration. After the initial 10-year period, the trademark owner must file a “Declaration of Use and Incontestability” to maintain the registration. If this declaration is accepted, the trademark will continue to be protected for subsequent periods of 10 years each.

The trademark owner must also continue to use the mark in commerce to maintain its validity. If the mark is not used for a continuous period of five years or more, it may be vulnerable to cancellation due to non-use.

In addition to the maintenance filings, there are specific requirements for continuous use of the mark in commerce. The mark should be used in connection with the goods or services for which it was registered. Failure to maintain proper and continuous use of the mark can also result in the cancellation of the trademark registration.

It is important for trademark owners to keep track of renewal deadlines and to ensure that all necessary maintenance filings are submitted on time. The process of maintaining a trademark requires ongoing attention and management to protect the brand identity and the associated legal rights.

For trademarks registered in other countries, the duration of protection can vary. Some countries offer registration terms of 10 years, while others may have different terms or renewal procedures. It is crucial for trademark owners with international interests to be aware of the specific requirements and timelines for each country in which their trademark is registered.

To ensure the continued protection of your trademark and to avoid any lapses in protection, it is advisable to work with a trademark attorney who can assist in monitoring renewal deadlines, handling maintenance filings, and providing guidance on trademark management strategies to protect your valuable intellectual property rights.

Can I use a trademark without registering it?

Yes, you can use a trademark without registering it. Trademark rights are primarily acquired through actual use of the mark in commerce, and registration is not a strict requirement for establishing certain rights to a trademark. These rights are often referred to as “common law” trademark rights.

When you use a mark in connection with your goods or services, you automatically acquire common law rights to that mark in the geographic area where the mark is used. These rights grant you limited protection against others using a confusingly similar mark in the same area of commercial activity.

However, there are some important considerations to keep in mind when using an unregistered trademark:

1. Limited Protection: Common law trademark rights are typically limited to the specific geographic area where you use the mark in commerce. This means that if someone else starts using a similar mark in a different location, your common law rights may not extend to that area.
2. Difficulty of Enforcement: Enforcing common law rights can be more challenging and costly than enforcing registered trademark rights. Proving ownership and prior use of an unregistered mark can be complex, especially in legal disputes.
3. Priority of Use: In case of a conflict with another party over a similar mark, the owner who can establish priority of use (the first to use the mark in commerce) may have the stronger claim to the mark.
4. Benefits of Registration: Registering a trademark with the United States Patent and Trademark Office (USPTO) or the relevant trademark office in your country offers significant advantages. It provides nationwide or international protection, creates a legal presumption of ownership and validity, and gives you enhanced legal remedies and protection against potential infringers.

While registration is not mandatory, it is highly recommended for businesses seeking broader and stronger protection for their brands. Registering a trademark provides numerous benefits, including the ability to use the ® symbol, public notice of your ownership, and a stronger position in legal disputes.

To determine the best course of action for your specific situation, it is advisable to consult with a trademark attorney. They can help you assess the risks and advantages of using an unregistered trademark and guide you through the registration process if you decide to pursue federal trademark protection.

When should I hire a trademark lawyer?

Hiring a trademark lawyer is a wise decision when you are considering using a trademark for your business or product. Trademark attorneys are legal professionals with specialized knowledge and expertise in trademark law, and they can provide valuable guidance throughout the trademark process.

Here are some key situations where hiring a trademark lawyer is highly beneficial:

1. Trademark Search and Clearance:

Before adopting a new trademark, conducting a comprehensive search to check for existing conflicts is crucial. A trademark attorney can conduct a thorough search and analyze the results to assess potential risks and help you avoid trademark infringement issues.

2. Trademark Application Filing:

Filing a trademark application with the United States Patent and Trademark Office (USPTO) or the relevant trademark office can be a complex process. A trademark lawyer can assist in preparing and filing the application correctly, ensuring that it meets all legal requirements and increasing the chances of a successful registration.

3. Responding to Office Actions:

If the trademark office raises any objections or issues an office action regarding your application, a trademark attorney can help you prepare a suitable response to address the concerns effectively.

4. Trademark Monitoring and Enforcement:

After your trademark is registered, monitoring the marketplace for potential infringement is essential to protect your rights. A trademark lawyer can help you monitor and enforce your trademark, taking appropriate legal action against potential infringers.

5. Trademark Portfolio Management:

For businesses with multiple trademarks or plans for expansion, a trademark lawyer can assist in managing your trademark portfolio, ensuring that all registrations are up-to-date, and handling renewal and maintenance requirements.

6. Handling Trademark Disputes:

If your trademark rights are challenged or if you need to challenge someone else’s trademark, a skilled trademark attorney can represent your interests and navigate the dispute resolution process.

7. International Trademark Protection:

If you plan to expand your business internationally, a trademark lawyer can guide you through the complexities of securing trademark protection in other countries and coordinating international trademark strategies.

Trademark law can be intricate and challenging, and mistakes in the trademark process can be costly. Engaging a trademark attorney can save you time, effort, and potential legal headaches in the long run. They can provide personalized advice, ensure compliance with the law, and help you make informed decisions to protect and maximize the value of your trademarks. Whether you are a new entrepreneur or an established business, consulting with a trademark lawyer is an investment in safeguarding your brand and intellectual property rights.

What is a trademark’s specimen?

In the context of trademark registration, a specimen is a crucial component of the application process. It is a sample or example of how the trademark is used in commerce to identify and distinguish the goods or services associated with the mark.

When you file a trademark application with the United States Patent and Trademark Office (USPTO) or the relevant trademark office in your country, you are required to submit a specimen that demonstrates the actual use of the mark in connection with the goods or services listed in the application.

The purpose of the specimen is to provide evidence that the mark is being used in a way that meets the requirements for trademark registration. It verifies that the mark is not merely an idea or concept but is indeed functioning as a source identifier for the goods or services it represents.

The type of specimen you submit depends on whether you are seeking to register a trademark for goods or services:

1. Specimen for Goods:

For trademarks associated with goods (e.g., physical products), acceptable specimens may include labels, tags, packaging, product containers, or displays showing the mark as it appears on the goods or their packaging.

2. Specimen for Services:

For trademarks associated with services, acceptable specimens may include brochures, advertising materials, website screenshots, photographs of signage, or other materials showing the mark used in connection with the services offered.

It’s essential to submit a proper and acceptable specimen that meets the USPTO’s requirements. The specimen should demonstrate clear and continuous use of the mark in commerce as of the filing date of the application.

If the specimen does not meet the USPTO’s criteria, the application may be rejected or suspended until an acceptable specimen is provided. Therefore, it is crucial to carefully select and prepare the specimen to support your trademark application.

Working with a trademark attorney can be valuable in preparing and submitting the appropriate specimen as part of your trademark application. They can guide you through the process, ensuring compliance with the USPTO’s guidelines and increasing the likelihood of a successful registration for your mark.

Can I request an expedited approval of my trademark registration?

Yes, you can request an expedited or accelerated examination of your trademark application in certain situations. The United States Patent and Trademark Office (USPTO) and other trademark offices offer various programs and options for faster processing of trademark applications, depending on the specific circumstances.

In the United States, the USPTO offers two primary expedited examination options:

1. TEAS Reduced Fee (TEAS RF):

TEAS RF is an option available to applicants who meet specific requirements. If you qualify for TEAS RF, you can benefit from a reduced filing fee for your trademark application. This option is designed to encourage electronic filing and is available for both intent-to-use and use-based applications.

2. Petition to the Director:

You can file a petition to the Director of the USPTO to request expedited examination based on special circumstances. To be successful, the petition must demonstrate that there are compelling reasons to expedite the application. Examples of such compelling reasons might include pending litigation related to the mark, potential infringement issues, or the need to obtain foreign registration in a short timeframe.

It’s important to note that expedited examination is not automatically granted and is typically reserved for specific situations. Normal processing times for trademark applications can already be quite efficient, and expedited examination is generally not necessary for most applications.

If you believe your situation warrants expedited examination, it is advisable to consult with a trademark attorney. They can evaluate your case, determine if you meet the eligibility criteria for expedited examination, and assist you in preparing and submitting the necessary documentation to support your request.

Additionally, some countries and international trademark systems offer expedited examination options as well. Each jurisdiction may have specific requirements and procedures for requesting expedited examination, so it’s essential to research and follow the guidelines of the relevant trademark office.

While expedited examination can expedite the processing of your trademark application, it’s essential to ensure that your application is complete, accurate, and meets all legal requirements to avoid potential delays or refusals. A trademark attorney can guide you through the process and increase the chances of a successful and timely registration for your trademark.

Can I trademark a phrase?

Yes, you can trademark a phrase under certain conditions. Phrases can be eligible for trademark protection if they meet the requirements for distinctiveness and are used to identify and distinguish your goods or services in the marketplace.

To qualify for trademark protection, a phrase must fall into one of the following categories of distinctiveness:

1. Fanciful or Coined Phrase: These are unique and made-up phrases that have no existing meaning or association with the goods or services they represent. Fanciful phrases are considered inherently distinctive and are strong candidates for trademark registration.
2. Arbitrary Phrase: Arbitrary phrases are common words or phrases that are used in a manner unrelated to the goods or services they identify. For example, “Apple” for computers and electronic devices is an arbitrary phrase because it has no direct relation to the products.
3. Suggestive Phrase: Suggestive phrases imply a quality or characteristic of the goods or services without directly describing them. They require consumers to use their imagination or perception to understand the connection between the phrase and the products or services. For instance, “Netflix” suggests the streaming of movies and TV shows without explicitly describing the service.
4. Descriptive Phrase with Secondary Meaning: In some cases, descriptive phrases that directly describe the goods or services may be eligible for trademark protection if they have acquired secondary meaning. Secondary meaning refers to the situation where consumers associate the phrase with a specific source, rather than just its descriptive meaning. Establishing secondary meaning typically requires substantial evidence of long and exclusive use, extensive advertising, and consumer recognition.

However, generic phrases that merely describe the goods or services themselves cannot be trademarked. For example, “Pizza Shop” cannot be registered as a trademark for a pizzeria because it directly describes the nature of the business.

When applying for a trademark for a phrase, you must provide a specimen that shows how the phrase is used in commerce in connection with your goods or services. This specimen helps demonstrate the actual use of the mark and its distinctiveness.

It is essential to conduct a thorough search to ensure that your chosen phrase does not conflict with any existing trademarks. Consulting with a trademark attorney can help you determine the registrability of your phrase, guide you through the application process, and maximize the protection of your intellectual property rights.

Can I trademark a logo?

Yes, you can trademark a logo. Trademark protection is not limited to just words or phrases; logos and designs can also be registered as trademarks if they meet the requirements for distinctiveness and are used to identify and distinguish your goods or services.

When seeking trademark protection for a logo, it is crucial to ensure that the design is distinctive and capable of serving as a source identifier for your products or services. Like other types of trademarks, logos must fall into one of the following categories of distinctiveness:

1. Fanciful or Coined Logo: A fanciful or coined logo is a unique and original design that has no pre-existing meaning or association with the goods or services it represents. Fanciful logos are inherently distinctive and are strong candidates for trademark registration.
2. Arbitrary Logo: Arbitrary logos use common symbols or images in a manner unrelated to the goods or services they identify. An example is the “Apple” logo used by Apple Inc., which has no direct connection to electronic devices.
3. Suggestive Logo: Suggestive logos imply a quality or characteristic of the goods or services without directly describing them. These logos require consumers to use their imagination or perception to understand the connection between the design and the products.
4. Descriptive Logo with Secondary Meaning: In some cases, descriptive logos may be eligible for trademark protection if they have acquired secondary meaning. Secondary meaning refers to consumers associating the logo with a specific source, rather than just its descriptive meaning.

However, logos that are generic or merely descriptive of the goods or services cannot be registered as trademarks. A generic logo is one that merely depicts the product itself or its common features and does not serve as a unique identifier.

When applying for a trademark for a logo, you must provide a specimen that shows how the logo is used in commerce in connection with your goods or services. This specimen helps demonstrate the actual use of the mark and its distinctiveness.

As with any trademark application, conducting a comprehensive search is essential to ensure that your logo does not conflict with any existing trademarks. Consulting with a trademark attorney can assist you in determining the registrability of your logo, guiding you through the application process, and maximizing the protection of your intellectual property rights.

Can I trademark a color?

Yes, it is possible to trademark a color under certain circumstances. However, obtaining a trademark for a color can be more challenging than trademarking words, phrases, logos, or other traditional trademarks. In general, a color can be registered as a trademark if it meets the distinctiveness and non-functionality requirements set forth by the trademark office.

To qualify for trademark protection, a color must be inherently distinctive or have acquired secondary meaning in the minds of consumers, indicating that the color is associated with a specific brand or source of goods or services. Here are two ways in which a color may be eligible for trademark protection:

1. Inherently Distinctive Color:

If a color is considered inherently distinctive in the context of the specific goods or services it represents, it may be eligible for trademark registration. This means that the color itself is so unique and unrelated to the product that consumers automatically associate it with a particular brand or source. However, colors that are commonly used in an industry to describe or differentiate products are less likely to be considered inherently distinctive.

2. Acquired Secondary Meaning:

A color that is not inherently distinctive may still be eligible for trademark protection if it has acquired secondary meaning. Secondary meaning refers to the situation where consumers have come to recognize the color as a source identifier for the goods or services associated with a particular brand. Establishing secondary meaning typically requires significant evidence of long and exclusive use, extensive advertising, and consumer recognition.

A well-known example of a color trademark is the distinctive “Tiffany Blue” color used by Tiffany & Co. for its jewelry packaging. The company successfully registered the color as a trademark after demonstrating that the specific shade of blue had acquired secondary meaning and was uniquely associated with their brand.

Keep in mind that obtaining a color trademark can be a complex and rigorous process. The burden of proof is often higher for color trademarks than for traditional word or logo marks. Additionally, color trademarks may be more susceptible to challenges or objections from competitors.

If you are considering trademarking a color, it is advisable to work with a trademark attorney who has experience in handling color trademark applications. They can assess the distinctiveness of the color and guide you through the process, ensuring that your application meets the necessary legal requirements for successful registration.

Can I transfer my trademark to someone else?

Yes, you can transfer your trademark to someone else through a process known as trademark assignment. Trademark assignment is the legal transfer of ownership rights to a registered or pending trademark from one party (the assignor) to another (the assignee).

The transfer of a trademark may occur for various reasons, such as a sale of a business, a merger or acquisition, or a strategic restructuring. It is essential to execute a proper trademark assignment to ensure that the new owner becomes the rightful proprietor of the mark and retains the exclusive rights associated with it.

Here are the key steps involved in transferring a trademark:

1. Drafting a Trademark Assignment Agreement:

The first step in the process is to draft a written agreement between the current owner (assignor) and the new owner (assignee). This agreement, known as the trademark assignment agreement, should clearly state the intent to transfer ownership, describe the trademark being assigned, and outline the terms and conditions of the transfer.

2. Recording the Assignment:

In many jurisdictions, including the United States, trademark assignments should be recorded with the appropriate trademark office. Recording the assignment helps establish a public record of the transfer and ensures that the assignee’s ownership is officially recognized.

3. Updating Trademark Office Records:

After recording the assignment, the trademark office will update its records to reflect the new owner’s information. This ensures that all correspondence regarding the trademark, such as renewal notices and office actions, is directed to the correct party.

4. Notifying Licensees and Business Partners:

If the trademark owner has granted licenses or entered into agreements with third parties involving the trademark, those licensees and partners should be informed of the transfer. The new owner will assume the rights and responsibilities associated with these agreements.

It’s important to note that a trademark assignment involves the transfer of the rights to the mark and not just the physical assets related to the mark. The assignor no longer holds any rights to the trademark after the assignment is complete, and the assignee becomes the exclusive owner of the mark.

For a smooth and legally valid trademark assignment, it is highly recommended to work with a trademark attorney who can draft the necessary documents, ensure compliance with the relevant laws and regulations, and assist in recording the assignment with the appropriate trademark office.

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 for specific purposes and under certain conditions.

A trademark licensing agreement is a legally binding contract that outlines the terms and conditions of the licensing arrangement. It defines the scope of the license, the permitted uses of the trademark, the duration of the license, and any restrictions or limitations on the licensee’s use of the mark.

Here are some key points to consider when licensing your trademark:

1. Quality Control:

As the trademark owner, you have a responsibility to maintain the quality and reputation associated with your mark. A licensing agreement should include provisions that allow you to exercise quality control over the goods or services offered by the licensee. This ensures that the use of your trademark reflects the standards you have established for your brand.

2. Exclusive or Non-Exclusive License:

You can grant an exclusive or non-exclusive license. An exclusive license means that only the licensee can use the trademark for the specified goods or services within a designated territory. In contrast, a non-exclusive license allows you to grant the same permission to multiple licensees.

3. Consideration and Royalties:

The licensing agreement should address the consideration or payment to be provided by the licensee in exchange for using your trademark. This can be a one-time fee, ongoing royalties, or other forms of compensation.

4. Territory and Duration:

The agreement should clearly define the geographical area in which the licensee can use the trademark and specify the duration of the license. Licenses can be short-term, long-term, or renewable.

5. Termination and Revocation:

The licensing agreement should outline the circumstances under which either party can terminate the license. It should also address the procedures for revoking the license if the licensee fails to comply with the terms of the agreement.

6. Proper Licensing Registration:

While registration of a licensing agreement is not mandatory in all jurisdictions, recording the agreement with the appropriate trademark office can provide added protection and establish a public record of the licensing arrangement.

Licensing your trademark can be a strategic way to generate additional revenue, expand your brand’s reach, and enter new markets. However, it is essential to carefully draft the licensing agreement to protect your intellectual property rights and maintain control over the use of your mark.

Working with a trademark attorney can help ensure that your licensing agreement is comprehensive, legally enforceable, and tailored to your specific business objectives. They can assist in drafting the agreement, negotiating terms with the licensee, and ensuring compliance with the relevant laws and regulations.

My competitor didn’t trademark their logo. Can I register it for myself?

You can certainly try to trademark it for yourself but speak with a trademark attorney first. Even though a competitor’s mark has not been federally registered, it may be protected under “common law” rules, which gives your competitor certain rights to an unregistered mark if they’ve been using it commercially.

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

No, registering your trademark in the United States does not automatically grant protection in other countries. Trademark rights are generally territorial, which means they are limited to the specific country or region where the mark is registered or being used in commerce.

If you wish to protect your trademark in other countries, you will need to pursue registration in each individual country or consider regional trademark systems where available. This process is known as international trademark registration or filing in foreign jurisdictions.

There are two primary routes for seeking international trademark protection:

1. National or Regional Filings:

You can apply for trademark registration directly in each country where you seek protection. This involves filing a separate application with the trademark office of each country. The requirements, procedures, and costs may vary significantly from one country to another.

Alternatively, some regions, such as the European Union, offer regional trademark systems where a single application can cover multiple countries within the region.

2. International Trademark Systems:

International trademark systems provide mechanisms to seek protection in multiple countries through a single application process. The most well-known international trademark system is the Madrid System, administered by the World Intellectual Property Organization (WIPO).

Under the Madrid System, you can file an international application based on your existing national or regional trademark application or registration (known as the “basic application” or “basic registration”). This central application can then be extended to multiple member countries or regions that are part of the Madrid Protocol or Madrid Agreement, respectively.

It’s important to note that each country has its own trademark laws, and the registration process and requirements may differ significantly from those in the United States. Therefore, seeking international trademark protection can be complex, time-consuming, and costly.

Before pursuing international registration, it is advisable to conduct a thorough trademark search to assess the availability of your mark in the target countries and to determine the most suitable strategy for your business.

Working with an experienced trademark attorney who specializes in international trademark law can be immensely valuable. They can guide you through the process, assist in selecting the appropriate countries for registration, handle the necessary filings, and help you navigate any potential challenges or issues that may arise during the international registration process.

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

While there is no single “international trademark” that provides global protection for your mark, there are mechanisms and treaties that simplify the process of seeking trademark protection in multiple countries. These systems allow trademark owners to pursue registration in multiple countries through a centralized procedure, making it more efficient and cost-effective.

The two primary systems for international trademark registration are:

1. Madrid System:

The Madrid System, administered by the World Intellectual Property Organization (WIPO), allows trademark owners to seek protection in multiple countries by filing a single international application. The international application can be based on an existing national or regional trademark application or registration (the “basic application” or “basic registration”).

Through the Madrid System, trademark owners can designate multiple countries that are part of the Madrid Protocol or Madrid Agreement for trademark protection. The designated countries will individually examine and decide on the registration or refusal of the mark based on their respective laws and requirements.

One of the key advantages of the Madrid System is its central management and administration, which simplifies the process of filing, maintaining, and renewing trademark registrations across multiple jurisdictions.

2. European Union Trade Mark (EUTM):

The European Union Trade Mark (formerly known as the Community Trade Mark) is a regional trademark system that provides protection in all current European Union member countries through a single application. A trademark owner can apply for an EUTM to secure protection across the entire European Union, making it an attractive option for businesses seeking a unified trademark protection strategy within the EU.

It’s essential to recognize that international trademark registration through these systems does not create a single, unitary right. Each registration obtained through these mechanisms is independent and subject to the laws and regulations of the individual countries or regions where protection is sought.

Additionally, not all countries are part of the Madrid System or the European Union Trade Mark system. For countries that are not part of these systems, trademark protection must be pursued through national or regional filings.

Deciding which countries to seek trademark protection in depends on your business’s specific needs and markets. Conducting a thorough trademark search and consulting with a trademark attorney who is well-versed in international trademark law can help you determine the most effective and strategic approach for protecting your brand on a global scale.

What is a trademark office action?

A trademark office action is a communication issued by the trademark examining attorney at the United States Patent and Trademark Office (USPTO) or the relevant trademark office in other countries. It occurs during the examination process of a trademark application and typically identifies issues or deficiencies that must be addressed before the application can proceed to registration.

When you submit a trademark application, it undergoes review by a trademark examiner to determine if the mark meets all the legal requirements for registration. If the examiner identifies any concerns or discrepancies, they will issue an office action to inform the applicant of the issues that need to be resolved.

There are several types of office actions, each addressing specific issues that may arise during the examination process. Some common types of office actions include:

1. Formalities Office Action:

This type of office action is usually related to procedural or administrative issues, such as missing information, incorrect fees, or technical errors in the application. The applicant will be given a deadline to correct these formalities, and failure to do so may result in the application being abandoned.

2. Substantive Office Action:

A substantive office action relates to the registrability of the mark itself. It may raise concerns about the mark’s distinctiveness, likelihood of confusion with existing marks, or compliance with other statutory requirements. The applicant will be required to respond with arguments and evidence supporting the mark’s eligibility for registration.

3. Specimen Requirement Office Action:

If the submitted specimen does not meet the USPTO’s requirements to demonstrate the mark’s use in commerce, the applicant will receive a specimen requirement office action. The applicant will need to provide an acceptable specimen to demonstrate use in connection with the goods or services specified in the application.

4. Disclaimer Requirement Office Action:

In some cases, the USPTO may require the applicant to disclaim exclusive rights to certain descriptive or generic terms included in the mark. By disclaiming these terms, the applicant acknowledges that they do not seek exclusive rights over them.

5. Priority or Ownership Office Action:

In international applications or cases involving conflicting claims of ownership, an office action may request additional information or evidence to establish priority of use or ownership.

It is essential to carefully review and respond to the office action within the specified timeframe. Failure to respond or inadequate responses may result in the refusal or abandonment of the trademark application. If you receive an office action, seeking guidance from a trademark attorney can be beneficial. They can assist in preparing a proper response, addressing the examiner’s concerns, and increasing the chances of successful registration for your mark.

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 common occurrence, and it is essential to handle it promptly and effectively to ensure the successful registration of your mark. Here are the steps you should take if you receive an office action:

1. Review the Office Action Carefully:

Take the time to thoroughly read and understand the contents of the office action. Identify the specific issues or objections raised by the trademark examiner and the actions required to address them.

2. Seek Legal Guidance:

Consider consulting with a trademark attorney upon receiving the office action. A knowledgeable attorney can review the office action in detail, interpret the examiner’s concerns, and provide informed advice on the best course of action.

3. Understand the Deadline:

Office actions typically have a deadline for responding. Make sure you are aware of the deadline and plan to submit your response well before the due date to avoid any potential delays or abandonment of the application.

4. Prepare a Comprehensive Response:

Your response to the office action should be thorough and well-supported. Address each issue raised by the examiner in a clear and organized manner. Provide evidence, arguments, and legal reasoning to support the registrability of your mark.

5. Amend the Application, if Necessary:

If the office action points out any deficiencies in your application, such as errors in the identification of goods or services, make the necessary amendments in your response.

6. Address Substantive Issues:

If the office action raises substantive concerns, such as likelihood of confusion with existing marks or issues of distinctiveness, carefully address each point. Provide evidence of use, market research, or consumer recognition to support your claim.

7. Comply with Formal Requirements:

If the office action involves formalities or procedural issues, such as missing documents or incorrect fees, ensure that you rectify these matters in your response.

8. Consider an Interview with the Examiner:

In some cases, a direct conversation with the trademark examiner through an interview may be beneficial. An attorney can help arrange and conduct the interview, providing an opportunity to clarify points and resolve issues in real-time.

9. File a Timely Response:

Submit your response to the office action before the specified deadline. Late responses may result in the application being abandoned.

10. Monitor the Application:

After submitting your response, monitor the status of your application to ensure that it progresses through the examination process.

Responding to an office action requires careful attention to detail and a comprehensive understanding of trademark law. Engaging a trademark attorney can greatly improve your chances of overcoming the issues raised in the office action and securing the successful registration of your trademark. They can guide you through the process, craft a strong response, and advocate for your mark’s registrability before the trademark office.

How do I enforce my trademark rights?

Enforcing your trademark rights is essential to protect your brand from unauthorized use and to maintain the distinctiveness and reputation of your mark. Trademark enforcement involves taking action against others who infringe on your trademark or use confusingly similar marks in commerce. Here are the key steps to enforce your trademark rights:

1. Monitor Trademark Use:

Regularly monitor the marketplace, including online platforms, to identify any unauthorized use of your trademark or potential infringement. This can be done manually or through the use of trademark watch services that track and report on potential infringing activities.

2. Investigate Potential Infringements:

If you suspect someone is infringing on your trademark, conduct a thorough investigation to gather evidence of the infringement. Document instances of unauthorized use and gather information on the parties involved.

3. Cease and Desist Letter:

The first step in enforcing your trademark rights is often to send a cease and desist letter to the infringing party. The letter should clearly state your trademark rights, provide evidence of the infringement, and demand that the infringing activity stop immediately.

4. Negotiate or Mediate:

In some cases, negotiation or mediation may be appropriate to resolve the dispute amicably. This could involve licensing agreements, coexistence agreements, or other arrangements that allow both parties to use their marks in specific ways without causing confusion.

5. File a Trademark Opposition or Cancellation Proceeding:

If the infringing party does not comply with your demands, you may consider initiating a trademark opposition or cancellation proceeding before the relevant trademark office. These proceedings can challenge the validity of the infringer’s mark or prevent them from obtaining trademark registration.

6. Pursue Legal Action:

If all other attempts at resolution fail, you may need to initiate legal action against the infringing party. This typically involves filing a lawsuit for trademark infringement in a court of law.

7. Seek Injunctive Relief and Damages:

In a trademark infringement lawsuit, you can seek injunctive relief, which is a court order that stops the infringing activity. You may also seek damages, including monetary compensation for any harm caused by the infringement.

8. Defend Against Opposition or Cancellation Proceedings:

If someone else challenges the validity of your trademark or files an opposition against your trademark application, you must defend your rights. Respond to opposition or cancellation proceedings with well-prepared arguments and evidence.

Trademark enforcement can be complex, and the appropriate actions will depend on the specific circumstances of each case. Consulting with a trademark attorney is crucial to navigate the enforcement process effectively. An experienced attorney can guide you through the appropriate legal actions, protect your rights, and help you maintain the strength and exclusivity of your trademark.

Is it ever too late to hire a trademark attorney?

It is never too late to hire a trademark attorney. Ideally, you should hire a trademark attorney as soon as you know that you want to trademark a piece of intellectual property, but a trademark attorney can step in at any time.

If you’ve already submitted an application on your own, but it was rejected, a trademark attorney can help. An attorney can help you monitor the market for infringement of your existing trademarks. An attorney can draft a cease-and-desist letter to anyone infringing upon your mark.

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Why Trademark Registration Matters for Durham Businesses

Durham, known as a part of the Research Triangle Durham is a thriving city that has become a hot spot for entrepreneurs in recent years. If you’re starting a new business in Durham, then you may be focused on product development, marketing plans, and a million other tasks.

One task you don’t want to overlook, however, is trademark registration. Failing to register your trademark early on can have devastating consequences for your new business.

Imagine the following: Lucian has been working for a prominent house painter in the Durham area for several years and has decided to strike out on his own. He uses only low-VOC and eco-friendly supplies. He calls his new company Fresh Air House Painting.

Excited to get started, Lucian dives in. He creates a logo for his company and has it painted on the side of his van. He creates a website, flyers, and postcards to mail out to Durham homeowners. Lucian’s sister asks him if he’s considered contacting a trademark attorney, but he says that he’ll get to that after his business is making a profit.

Lucian’s new business is going great. He’s just 6 months in and he’s already thinking about expanding his crew. However, he’s about to get some troubling news.

What Lucian doesn’t realize is that a prominent paint manufacturer is currently developing a low-VOC paint that has yet to hit the market. They’ve already trademarked the name Fresh Air Paint for themselves.

Lucian receives a cease-and-desist letter from the paint manufacturer asking him to stop operating under the name Fresh Air Paint because it’s too similar to their trademark and may cause confusion in the market. Now Lucian must close his business, rebrand, and reopen under a new name. This is a costly and time-consuming process.

A situation like this can be avoided if you hire a trademark attorney and conduct a proper trademark search when you’re ready to start your business. 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 Durham and yet it can assist businesses from North Carolina in registering a federal Trademark because trademarks are governed under federal law.

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Trademarks Services for Durham 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