Madison, Wisconsin Businesses Use Cohn Legal for Trademark Services
Based in New York, Cohn Legal, PLLC is committed to providing outstanding legal counsel and expertise on trademark law to their clients. Our trademark attorneys absolutely love helping companies protect their brand names and logos. While excellence in legal representation is a given, we take greater pride in our ability to forge lasting bonds with our clients.
Top 7 Questions Madison Businesses Have About Obtaining a Trademark
Can you please explain what a trademark is?
A trademark is a branding device that when used along with the sale of a product or service, enables a consumer to understand who is selling the product or service. The key here is that trademarks (names, logos, slogans) must be used in conjunction with sales. Without sales, there is no trademark.
Can I trademark a color?
Nearly always, the answer is no. It naturally wouldn’t be fair to allow one applicant to own exclusive trademark rights to a single color. However, in certain instances, like the Louboutin shoe, trademark rights may extend to colors when their association with a given product is so strong as to warrant trademark rights.
What is an examining attorney?
The person at the USPTO who receives and reviews trademark applications is known as an examining attorney or the examiner. Upon receipt of an application, the examining attorney will review it to make sure everything is in good order. They’ll also search the USPTO database looking for registered or pending trademarks that may be similar to the trademark you’re trying to register. If a trademark that is similar enough to cause confusion in the marketplace is found, then your application will most likely be rejected.
Am I allowed to file a trademark if I’m not yet selling my product or service?
If you want to file a trademark before you’re ready to bring your goods or services to market, then you can do so with an Intent-To-Use (ITU) trademark application.
Assuming the ITU Trademark Application has been accepted, you will receive a Notice of Allowance (NOA). That means you have 6 months to submit your Statement of Use with proof of your trademark in commerce to the USPTO. If you are still not ready to bring your product to market, then you can or file a petition to extend your submission of a Statement of Use, which will give you another 6 months. You can file for an extension 5 times.
What is a Trademark Office Action?
If your trademark application is rejected, then you’ll receive an Office Action, which lists the reasons that your trademark application was rejected. Your trademark could be rejected if it’s too similar to an existing trademark, you failed to provide an important piece of information on your application, or your specimen is not sufficient.
These are just a few examples of why you might receive an Office Action. Contact a trademark attorney as soon as possible if you receive an Office Action. Your attorney can advise you on what to do next and draft a response to the USPTO, if needed.
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.
The USPTO offers three different types of applications to choose from when registering your trademarks. Each has its own fee:
1. The TEAS Plus Filing option is $225 per class of goods or services. The rate of refusal for TEAS Plus applicants is lower than the other applications.
2. The TEAS Reduced Fee option is $275 per class of goods or services.
3. The TEAS Regular Filing option is $400 per class of goods or services. The TEAS Regular filing option affords the greatest flexibility for the applicant.
Consult a trademark attorney if you are unsure of which option to choose.
What is the Official Gazette?
The Official Gazette (OG) is a USPTO publication, which is released on a weekly basis. It 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.
Why Trademark Registration Matters for Madison Businesses
The domed Wisconsin State Capitol, Madison is known for its beautiful landscapes and a wide variety of outdoor activities. Wisconsin Historical Museum documents the state’s immigrant and farming history. On top of that, there’s plenty of sunshine and friendly residents, making Madison an ideal place to start a business.
Madison business owners know that opening a new business requires a business plan, a marketing plan, finding a location, hiring employees and so much more. However, they also need to make sure they conduct a proper trademark search and register the trademark with the USPTO.
Some entrepreneurs in Madison search for their desired business name on Google. They may do this to save time and money. However, Google searches are far from comprehensive and may cause unforeseen hassles in the future.
Imagine the following: Jackson and Bridget are husband and wife who have spent years developing all-natural soaps and skincare products. Now, they want to open up a store in downtown Madison. They choose the name Sunshine Soap Company. Jackson knows they can’t use that name if someone else is already using it. He searches for the name and finds no matches in Wisconsin. Feeling excited, the couple moves forward with producing their inventory, ordering product labels, designing a website, and creating marketing materials.
About a year after they have opened, the couple gets some bad news. It turns out that there is another soap manufacturer in Florida call the Sunshine State Soap Company. They registered the trademark with the USPTO about 15 years ago. The Florida Company believes that Jackson and Bridget’s brand is too similar to their own and send a cease-and-desist letter to the couple.
Jackson and Bridget can either close their shop or rebrand or try and fight for their rights to use the name in court. Both options will cost the couple a lot of time and money.
If the couple had worked with a trademark attorney from the beginning, then they wouldn’t be in this predicament. Never rely on just a Google search to find out if the business name you want is taken.
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 Madison and yet it can assist businesses from Wisconsin in registering a federal Trademark because trademarks are governed under federal law.