Portland, Oregon Businesses Use Cohn Legal for Trademark Services
Serving Portland, Oregon companies, 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 Portland Businesses Have About Obtaining a Trademark
If I Only Provide My Services in Portland, Oregon, 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 Portland, Oregon, 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 consists of a distinctive sign, symbol, word, or phrase used by a person or business to identify and distinguish their goods or services from those of others. It serves as a brand identifier and helps consumers recognize and associate specific products or services with a particular source. Trademarks can include company names, logos, slogans, product names, packaging designs, or even specific sounds and scents.
When a trademark is registered with the appropriate government authority, such as the United States Patent and Trademark Office (USPTO) in the United States, it grants the owner exclusive rights to use that mark in connection with the specific goods or services listed in the registration. This exclusivity allows the owner to prevent others from using a similar mark that may cause confusion among consumers.
Overall, trademarks play a crucial role in brand recognition, consumer trust, and establishing a competitive advantage in the marketplace. They help businesses protect their reputation, differentiate themselves from competitors, and build strong brand equity.
Is there a difference between a trademark and service mark?
Yes, there is a distinction between a trademark and a service mark, although the terms are often used interchangeably depending on the jurisdiction.
A trademark is typically used to identify and distinguish goods, which are tangible products or merchandise. For example, it can be a logo, word, or symbol associated with a specific product, such as a clothing brand or a technology device.
On the other hand, a service mark is specifically used to identify and distinguish services provided by a person or business. It is used to indicate the source of services rather than physical products. For instance, a service mark can be a logo or a phrase associated with services like legal consultation, healthcare, or financial advice.
In essence, while both trademarks and service marks serve the same purpose of identifying and protecting intellectual property, the distinction lies in their application to goods or services. It’s important to note that in many countries, including the United States, the term “trademark” is often used to encompass both trademarks and service marks, making the distinction less relevant from a legal perspective.
What’s the difference between the ® and TM symbols?
The ® symbol and the TM symbol serve different purposes and indicate different trademark statuses:
- The ® symbol: The ® symbol, also known as the “registered trademark symbol,” is used to indicate that a trademark or service mark is registered with the appropriate government authority. It signifies that the mark has been officially registered and granted protection under the law. Only trademarks that have completed the registration process and received approval can use the ® symbol. In the United States, the ® symbol is specifically used for federally registered trademarks.
- The TM symbol: The TM symbol, also known as the “trademark symbol,” is used to indicate that a person or business is claiming rights to a trademark. It is often used before a mark is officially registered or in situations where the mark is being used to identify goods or services without formal registration. The TM symbol can be used freely by anyone without the need for registration or approval, but it does not provide the same level of legal protection as a registered trademark.
In summary, the ® symbol is reserved for registered trademarks, while the TM symbol is used to assert ownership over a mark, whether registered or not. Using the appropriate symbol with your trademark can help communicate its status and provide notice to others regarding your rights and legal protections. It’s important to note that the use of these symbols may vary in different countries, so it’s advisable to consult local trademark laws and regulations when using them.
How can I determine if a trademark is available?
Before using or registering a trademark, it’s important to conduct a thorough search to determine if the mark is available and not already in use by someone else in a similar field. Here are some steps you can take to assess the availability of a trademark:
- Preliminary Search: Begin by conducting a preliminary search to identify any existing trademarks that might conflict with your desired mark. This can be done by searching online databases, such as the USPTO’s Trademark Electronic Search System (TESS), which allows you to search for registered and pending trademarks in the United States. Additionally, you can perform general web searches and check social media platforms to uncover any potential conflicting uses.
- Comprehensive Search: If the preliminary search yields no conflicting marks, it is advisable to conduct a comprehensive search. This can involve hiring a professional trademark search company or an experienced trademark attorney to perform an in-depth search. They have access to specialized databases and resources, which can uncover potential conflicts that may not have been found in a preliminary search. A comprehensive search helps minimize the risk of infringing on someone else’s trademark rights.
- Evaluate Search Results: Once you have the search results, carefully review them to identify any trademarks that are similar or related to your desired mark. Consider factors such as the similarity of the marks, the similarity of the goods or services, and the likelihood of confusion among consumers. If you find any potential conflicts, consult with a trademark attorney to assess the risks and determine the best course of action.
It’s worth noting that trademark searches can be complex, and interpreting search results requires knowledge of trademark law. Consulting with a qualified trademark attorney can provide valuable insights and guidance throughout the search process. They can help you understand the search results, assess the availability of your desired mark, and navigate the trademark registration process successfully.
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. Trademark rights can be acquired through actual use of the mark in commerce or through an intent-to-use application.
- Actual Use: If you are already using a trademark in commerce to identify your goods or services, you can apply for registration based on that use. This means you are actively selling the products or providing the services associated with the mark in the marketplace. You will need to submit evidence of this actual use, such as photographs, packaging, advertising materials, or other documentation that demonstrates the mark’s use in connection with your goods or services.
- Intent-to-Use Application: If you have not yet used the trademark but have a bona fide intention to use it in the future, you can file an intent-to-use application. This allows you to secure a priority filing date for your mark while you prepare to launch your products or services. However, you will need to provide evidence of actual use before the trademark can be registered. This evidence is typically submitted after the application is filed but before the mark is officially registered.
It’s important to note that obtaining a registered trademark provides additional legal protections and benefits compared to relying solely on common law rights. Registering a trademark with the appropriate government authority, such as the USPTO in the United States, establishes a public record of ownership, grants nationwide protection, and enables enforcement actions against infringers.
Whether you are selling a product or planning to offer a service, it is advisable to consult with a trademark attorney to understand the specific requirements and best approach for your situation. They can guide you through the trademark application process, ensure compliance with the relevant laws, and help protect your trademark rights effectively.
If I only provide my services locally, can I still obtain a federal trademark?
Yes, it is possible to obtain a federal trademark even if you only provide services locally. The scope of protection offered by a federal trademark extends beyond the geographic area where the services are currently being offered. Here are some key points to consider:
- Interstate Commerce: To obtain a federal trademark registration in the United States, including a service mark, you must demonstrate that your mark is used in “interstate commerce.” Interstate commerce refers to any commercial activity that involves crossing state lines or having an impact on commerce between states. This can include activities such as advertising, marketing, or providing services to clients or customers located outside your immediate geographic area.
- Specimen of Use: As part of the trademark application process, you will need to provide a specimen of use that shows how your mark is used in connection with your services. The specimen should demonstrate actual use in commerce and can include items like brochures, advertisements, websites, or other materials that show the mark being used to promote and identify your services.
- Intent-to-Use Application: If you have a genuine intention to expand your services beyond your local area but have not yet done so, you can file an intent-to-use application. This allows you to secure a priority filing date while you continue to develop and expand your services. However, you will need to provide evidence of actual use in interstate commerce before the mark can be registered.
It’s important to remember that obtaining a federal trademark registration provides broader protection and advantages, even if you primarily offer services locally. It establishes a nationwide presumption of ownership and strengthens your ability to enforce your rights against potential infringers.
Consulting with a trademark attorney who is familiar with the relevant laws and regulations can help you navigate the trademark application process effectively and ensure that your rights are protected, regardless of the geographic scope of your services.
What should I register first: the name of my business or my brand logo?
When deciding what to register first, whether it’s the name of your business or your brand logo, it is generally recommended to prioritize registering the name of your business as a trademark. Here’s why:
- Identifying Your Brand: The name of your business often serves as the primary identifier of your brand. It is the most prominent element that customers and clients associate with your products or services. By registering the business name as a trademark, you secure exclusive rights to use that name in connection with the goods or services you provide. This helps protect the brand identity and prevent others from using a similar name that may cause confusion among consumers.
- Flexibility and Adaptability: Registering the business name provides more flexibility and adaptability for your brand as it allows for potential expansion into new product lines or services under the same name. If you register only your logo, it may limit your rights to the specific design or graphical representation of the logo, rather than the broader protection provided by the business name.
- Logo Protection: While registering the business name is generally recommended first, it is also important to protect your brand logo. A logo can have significant visual impact and serve as a recognizable symbol of your brand. Consider registering your logo as a trademark separately or in conjunction with the business name. This way, you can secure comprehensive protection for both elements of your brand identity.
In conclusion, registering the name of your business as a trademark provides a solid foundation for brand protection and enforcement. However, it is also advisable to seek legal advice from a trademark attorney to assess your specific circumstances, determine the best strategy for your brand, and ensure compliance with trademark laws and regulations.
Should I file a trademark application as an individual or as a business entity?
How you choose to file a trademark application is your choice. There are some advantages if you file as a business entity. First of all, you won’t have to re-assign ownership of the trademark to someone else if you sell the business.
Also, note that applicants who file as individuals may have their names, mailing addresses, and countries of citizenship appear on search engines in connection with their trademark. Therefore, filing as a business entity is also advisable for individuals who want to keep their personal details more private.
What is an “Arbitrary” trademark?
An arbitrary mark is a term that has an otherwise common meaning but bears no obvious connection to the goods or services being sold. Consider for example the Apple computer. The word “Apple” of course has nothing to do with computers and yet it is still a common word in the dictionary.
What is a fanciful trademark?
A fanciful trademark is a type of trademark that is highly distinctive and created specifically for the purpose of serving as a trademark. It is a term or symbol that has no inherent meaning or connection to the goods or services it represents. Fanciful trademarks are considered the strongest and most protectable types of marks. Here are some key characteristics of fanciful trademarks:
- Coined Terms: Fanciful trademarks are typically made up of entirely new or invented words that have no existing meaning in any language. These terms are created solely for the purpose of serving as a trademark. Examples of fanciful trademarks include “Xerox,” “Kodak,” or “Google.” These terms have no meaning before they are introduced as trademarks and acquire meaning through association with specific goods or services.
- Distinctiveness: Fanciful trademarks are highly distinctive because they are unique and do not describe the goods or services they represent. They stand out from generic or descriptive terms that merely describe the product or its qualities. The distinctiveness of fanciful trademarks makes them strong identifiers of a particular source and less likely to be confused with other marks in the marketplace.
- Trademark Protection: Fanciful trademarks enjoy a high level of legal protection. They are considered inherently distinctive, which means they are automatically eligible for trademark registration and are granted a broader scope of protection. Due to their unique and arbitrary nature, fanciful trademarks are less likely to infringe on existing trademarks or be challenged on grounds of similarity to other marks.
- Brand Recognition: Fanciful trademarks have the advantage of creating strong brand recognition and differentiation. Since these marks are unique and unrelated to the goods or services they represent, they can leave a lasting impression on consumers’ minds, making it easier for them to associate the mark with a particular brand.
In summary, fanciful trademarks are highly distinctive and coined terms that have no pre-existing meaning. They provide strong protection and help businesses establish unique brand identities. When considering a fanciful trademark, it’s advisable to consult with a trademark attorney who can provide guidance on the strength and protectability of the mark and assist with the trademark registration process.
What is TEAS?
TEAS stands for the Trademark Electronic Application System. It is an online platform provided by the United States Patent and Trademark Office (USPTO) that allows applicants to electronically file and manage their trademark applications. TEAS provides a convenient and efficient way to submit trademark applications, respond to office actions, and maintain and update trademark registrations. Here are some key features and benefits of using TEAS:
- Electronic Filing: TEAS allows applicants to file their trademark applications electronically, eliminating the need for paper forms and physical mail submissions. This streamlines the application process and reduces processing time.
- Application Types: TEAS supports various types of trademark applications, including standard character marks, stylized/design marks, collective marks, certification marks, and more. It provides different application forms and options to accommodate different types of marks and filing requirements.
- Cost Savings: Filing a trademark application through TEAS can be more cost-effective compared to traditional paper filings. The USPTO offers reduced filing fees for applications filed through TEAS, incentivizing applicants to use the electronic system.
- Real-Time Status Updates: Once an application is submitted through TEAS, applicants can track the progress of their applications in real-time. They can access their application data, view any updates or notifications from the USPTO, and monitor the status of their applications throughout the examination process.
- Office Action Responses: If an applicant receives an office action, which is a communication from the USPTO examining attorney regarding the application, they can respond through TEAS. It allows for the electronic submission of responses and supporting documents, making the process more efficient and convenient.
- Maintenance and Updates: Trademark owners can use TEAS to maintain and update their trademark registrations. This includes filing maintenance documents, submitting renewal applications, recording changes in ownership or address, and monitoring the status of their registrations.
Using TEAS offers several benefits, including speed, convenience, cost savings, and improved accessibility to the trademark application and management process. It is advisable to familiarize yourself with the system or seek guidance from a trademark attorney to ensure proper utilization and compliance with the USPTO’s requirements.
How long does the trademark application process take?
The duration of the trademark application process can vary depending on various factors and the specific jurisdiction in which you are seeking trademark protection. Here are the general stages of the trademark application process and the estimated timeframes associated with each stage:
- Application Filing: Once you submit your trademark application, it typically takes a few business days to receive a filing receipt from the trademark office confirming the application’s submission.
- Examination: After the initial filing, the trademark office will examine your application to determine if it meets the legal requirements for registration. The examination period can range from a few months to over a year, depending on the workload and backlog of the trademark office.
- Office Actions: If the examining attorney finds any issues or objections with your application, they will issue an office action detailing their concerns. You will generally have six months to respond to the office action. The time it takes to receive and respond to office actions can vary, but it typically ranges from a few months to several months.
- Publication: If your application passes the examination stage, it will be published for opposition. This allows third parties to review and potentially oppose your trademark registration. The publication period usually lasts 30 days, during which interested parties can file an opposition.
- Registration: If no oppositions are filed, or if an opposition is unsuccessful, your trademark will proceed to registration. The registration process typically takes a few months to finalize, including the issuance of a registration certificate.
In total, the trademark application process can take anywhere from several months to over a year, depending on the complexity of the application, any objections or issues that may arise, and the efficiency of the trademark office handling the application. It’s important to note that these timeframes are estimates and can vary based on the specifics of each case.
Engaging the services of a trademark attorney can help navigate the application process efficiently, as they can provide guidance, assist with the preparation of the application, respond to office actions, and ensure compliance with the trademark office’s requirements, potentially expediting the process.
How long does a trademark last?
A trademark can last indefinitely as long as it continues to be used in commerce and the necessary maintenance requirements are met. However, the duration of trademark protection can vary depending on the jurisdiction and the type of trademark. Here are some important points to consider:
- Common Law Rights: Even without formal registration, you may still have common law rights to a trademark based on your use of the mark in commerce. Common law rights arise automatically upon the use of a mark, and they can provide some level of protection in the geographic area where the mark is being used. However, common law rights are limited in scope and protection compared to registered trademarks.
- Registered Trademarks: Registered trademarks typically provide more robust and enforceable protection. In many countries, including the United States, a trademark registration can be renewed indefinitely as long as you continue to use the mark in commerce and meet the renewal requirements. In the United States, the initial term of a trademark registration is ten years, and subsequent renewals are required every ten years.
- Maintenance and Renewal: To maintain the registration and prevent it from being canceled or abandoned, you must fulfill certain maintenance requirements, such as filing periodic renewal applications, submitting proof of continued use, and paying the associated fees. These requirements vary by jurisdiction, so it’s important to comply with the specific rules of the trademark office where your mark is registered.
- Continuous Use: It’s crucial to consistently use your trademark in commerce to maintain its validity and prevent it from becoming vulnerable to cancellation for non-use. Failure to use the mark for an extended period or in a substantial manner may result in the loss of rights and potential cancellation of the registration.
- International Considerations: Trademark laws and duration can vary from country to country. If you seek international protection, it is important to understand the trademark laws and renewal requirements of each specific jurisdiction where you wish to protect your mark.
In summary, a trademark can potentially last indefinitely as long as it continues to be used in commerce and the necessary maintenance requirements are fulfilled. Registering your trademark and adhering to the renewal and maintenance obligations are vital to ensuring its long-term protection. Working with a trademark attorney can help you navigate the renewal process and maintain the validity of your trademark effectively.
Can I use a trademark without registering it?
Yes, you can use a trademark without registering it. Trademark rights are acquired through actual use of the mark in commerce, even without formal registration. These are known as common law rights. However, there are some important points to consider:
- Common Law Rights: When you use a mark in connection with your goods or services, you automatically acquire common law rights to that mark. These rights provide you with some level of protection within the geographic area where the mark is being used. Common law rights can be established by using the mark in commerce and demonstrating that it serves as a source identifier for your products or services.
- Limited Protection: Common law rights are limited in scope and geographical reach. They may only provide protection within the specific geographic area where you are actively using the mark. This means that someone else may be able to use a similar or identical mark in a different geographic area without infringing on your common law rights.
- Benefits of Registration: While registration is not mandatory, there are several benefits to registering a trademark. Registration provides stronger and broader protection, as it establishes a legal presumption of ownership, nationwide or international protection (depending on the jurisdiction), and the ability to enforce your rights against potential infringers. It also acts as public notice of your claim to the mark, which can help deter others from using similar marks.
- Enhanced Legal Protection: Registering your trademark offers additional legal advantages, including the ability to recover monetary damages and attorney’s fees in case of infringement. It provides a stronger basis for legal action and simplifies the enforcement process.
- Exclusive Rights: Registering your trademark grants you exclusive rights to use the mark in connection with the goods or services specified in the registration. This exclusivity helps protect your brand identity, prevents others from using similar marks that may cause confusion, and enhances the value and market recognition of your brand.
In conclusion, while you can use a trademark without registration and obtain common law rights, registering your trademark provides stronger protection, broader geographical reach, and numerous legal benefits. Consulting with a trademark attorney can help you understand the best strategy for your specific circumstances and ensure that your trademark rights are effectively protected.
When should I hire a trademark lawyer?
Hiring a trademark lawyer is highly recommended when dealing with trademark matters, as they possess specialized knowledge and experience in trademark law. Here are some situations where it is advisable to engage a trademark lawyer:
- Trademark Search and Clearance: Conducting a thorough trademark search to ensure your desired mark is available and not already in use can be complex. A trademark lawyer can help you navigate the search process effectively, assess the search results, and provide a professional opinion on the availability and registrability of your mark. They can also help you identify potential conflicts and develop strategies to mitigate risks.
- Trademark Application: Filing a trademark application requires careful preparation and adherence to legal requirements. A trademark lawyer can assist with drafting and filing the application, ensuring that it includes all necessary information, meets the proper format and requirements, and maximizes your chances of success. They can also help determine the appropriate goods and services classification, which is crucial for accurate registration.
- Office Actions and Responses: If your trademark application receives an office action, which is an official communication from the trademark office regarding issues or objections, a trademark lawyer can guide you in preparing a well-crafted response. They have the expertise to address legal arguments and effectively overcome objections raised by the examining attorney.
- Trademark Infringement: If you believe someone is infringing upon your trademark rights or if you receive a notice of infringement, a trademark lawyer can assess the situation, provide legal advice, and guide you through the enforcement process. They can help you understand your rights, develop a strategy to protect your mark, and take appropriate legal action if necessary.
- International Trademark Protection: If you plan to expand your business internationally or seek trademark protection in multiple jurisdictions, a trademark lawyer can navigate the complexities of international trademark law. They can assist with filing applications, coordinating with foreign counsel, and ensuring compliance with each jurisdiction’s requirements.
- Trademark Portfolio Management: If you have a portfolio of trademarks, a trademark lawyer can assist with ongoing maintenance, renewals, monitoring for potential infringements, and enforcing your trademark rights.
Overall, hiring a trademark lawyer can provide valuable expertise, guidance, and peace of mind throughout the trademark process. They can help you navigate complex legal requirements, maximize the protection of your trademark rights, and handle any potential disputes or challenges that may arise.
What is a trademark’s specimen?
In the context of trademark registration, a specimen refers to a sample or evidence of how you are using your trademark in commerce. It is a crucial element of the trademark application process, as it demonstrates to the trademark office how the mark is being used in connection with your goods or services. Here are some important points to understand about specimens:
- Purpose of the Specimen: The purpose of submitting a specimen is to show the trademark office that you are actively using the mark in commerce to identify and distinguish your goods or services. It helps establish that the mark is not merely an idea but is actually being used as a source identifier in the marketplace.
- Types of Specimens: The type of specimen required depends on whether your mark is associated with goods or services. For goods, acceptable specimens can include labels, tags, packaging, product displays, or photographs showing the mark directly on the product. For services, specimens can include advertisements, brochures, website screenshots, or any materials that demonstrate the mark’s use in connection with the services provided.
- Acceptable Format: Specimens must be in a format that can be easily reviewed by the trademark examiner. They should be clear, legible, and accurately represent the manner in which the mark is used in commerce. If the specimen is a website screenshot, it should clearly display the mark and show the goods or services being offered.
- Actual Use vs. Intent-to-Use: If you are filing an intent-to-use application, meaning you have not yet used the mark in commerce, you will submit a specimen at a later stage in the application process. However, an intent-to-use application still requires a specimen to be submitted before the mark can be registered.
- Specimen Requirements Vary: It’s important to note that the specific requirements for acceptable specimens can vary by jurisdiction and by the type of mark. Different trademark offices may have specific guidelines on what constitutes an acceptable specimen. It is advisable to consult the guidelines and requirements of the relevant trademark office to ensure compliance.
Submitting an appropriate and accurate specimen is crucial for a successful trademark registration. Working with a trademark attorney can help you navigate the specimen requirements, ensure you submit the correct evidence, and maximize your chances of a smooth trademark application process.
Can I request an expedited approval of my trademark registration?
Yes, in certain cases, it is possible to request expedited or accelerated processing of your trademark application. Different jurisdictions have different procedures and criteria for expedited examination. Here are some factors to consider:
- United States: In the United States, the USPTO offers a program called the “TEAS Plus” option, which provides expedited examination in exchange for meeting specific requirements. To qualify for TEAS Plus, you must meet certain criteria, such as using the online filing system, paying the application fee upfront, and meeting strict filing requirements. Choosing the TEAS Plus option can significantly expedite the examination process.
- Other Jurisdictions: Other countries may have similar programs or procedures for expedited examination. It is essential to consult the guidelines and requirements of the specific trademark office where you are seeking registration to determine if expedited processing is available.
- Special Circumstances: In some cases, you may be able to request expedited examination based on special circumstances. For example, if you are involved in a legal dispute or if there is a risk of irreparable harm if your mark is not registered promptly, you may be able to make a case for expedited processing. Each jurisdiction will have its own criteria for considering such requests.
- Additional Fees: Expedited processing often comes with additional fees, which can vary depending on the jurisdiction and the program you are utilizing. It’s important to factor in the cost implications of requesting expedited examination.
It’s worth noting that even with expedited processing, the timeline for trademark registration can still vary depending on the workload of the trademark office and any potential issues or objections that may arise during examination. It’s advisable to consult with a trademark attorney who can guide you through the process, assess whether expedited examination is appropriate for your situation, and help you navigate the specific requirements and procedures of the relevant trademark office.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain conditions. A phrase can be eligible for trademark protection if it meets the requirements for distinctiveness and serves as a source identifier for goods or services. Here are some key points to consider:
- Distinctiveness: To be eligible for trademark protection, a phrase should possess a level of distinctiveness that allows it to identify and distinguish your goods or services from others in the marketplace. There are different categories of distinctiveness, ranging from strongest to weakest:
– Fanciful or Coined Phrases: These are completely invented or made-up phrases with no existing meaning. They are typically considered the strongest and most protectable trademarks.
– Arbitrary Phrases: These are common words or phrases used in an unrelated context, creating a distinctive association. For example, “Apple” used for computers.
– Suggestive Phrases: These indirectly suggest qualities or characteristics of the goods or services without explicitly describing them. They require some imagination or thought to understand the connection. For example, “Netflix” for online streaming services.
– Descriptive Phrases: These directly describe the goods or services, providing information about their nature, quality, or characteristics. Descriptive phrases may be more difficult to register without acquiring secondary meaning through extensive use.
– Generic Terms: Generic terms, which are common names for goods or services, cannot be registered as trademarks because they are not distinctive.
- Actual Use or Intent-to-Use: To obtain trademark registration for a phrase, you must either demonstrate its actual use in commerce or file an intent-to-use application. Actual use requires providing evidence that the phrase is being used to identify and distinguish your goods or services in the marketplace.
- Specimen Requirement: Like other trademarks, you will need to submit a specimen that shows the phrase being used in connection with your goods or services. The specimen should demonstrate how the phrase functions as a trademark to identify the source of the goods or services.
- Trademark Classifications: It is important to identify the appropriate class or classes of goods or services for which you are seeking trademark protection. Trademark applications require specifying the goods or services associated with the phrase to ensure accurate registration.
It’s important to conduct a comprehensive search before attempting to trademark a phrase to ensure it is available and not already in use by others in a similar field. Consulting with a trademark attorney can help assess the distinctiveness of your phrase, guide you through the application process, and increase the likelihood of a successful registration.
Can I trademark a logo?
Yes, you can trademark a logo. A logo can be registered as a trademark if it meets the necessary requirements for distinctiveness and serves as a source identifier for goods or services. Here are some important points to consider:
- Distinctiveness: To be eligible for trademark protection, a logo should possess a level of distinctiveness that allows it to identify and distinguish your goods or services from others in the marketplace. Similar to phrases, logos can fall into different categories of distinctiveness:
– Fanciful or Coined Logos: These are original and unique designs that have no pre-existing meaning. They are considered the strongest and most protectable trademarks.
– Arbitrary Logos: These are designs that use common elements or images in an unrelated context, creating a distinctive association. For example, the bitten apple in Apple Inc.’s logo.
– Suggestive Logos: These designs indirectly suggest qualities or characteristics of the goods or services without explicitly describing them. They require some imagination or thought to understand the connection.
– Descriptive Logos: These designs directly describe the goods or services, providing information about their nature, quality, or characteristics. Descriptive logos may be more difficult to register without acquiring secondary meaning through extensive use.
– Generic Logos: Logos that consist of basic or common shapes, symbols, or designs that do not possess distinctiveness cannot be registered as trademarks.
- Use in Commerce or Intent-to-Use: Similar to phrases, you can obtain trademark registration for a logo by demonstrating its actual use in commerce or by filing an intent-to-use application. Actual use requires providing evidence of the logo being used to identify and distinguish your goods or services in the marketplace.
- Specimen Requirement: As with other trademarks, you will need to submit a specimen that shows the logo being used in connection with your goods or services. The specimen should demonstrate how the logo functions as a trademark to identify the source of the goods or services.
- Trademark Classifications: It is crucial to identify the appropriate class or classes of goods or services for which you are seeking trademark protection. Trademark applications require specifying the goods or services associated with the logo to ensure accurate registration.
It’s important to conduct a comprehensive search before attempting to trademark a logo to ensure it is available and not already in use by others in a similar field. Consulting with a trademark attorney can help assess the distinctiveness of your logo, guide you through the application process, and increase the likelihood of a successful registration.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances, but it can be more challenging compared to traditional word marks or logos. Here are some important points to consider:
- Secondary Meaning: To obtain a trademark registration for a color, you must demonstrate that the color has acquired “secondary meaning” in the minds of consumers. This means that consumers have come to associate the specific color with your goods or services, indicating the source of those goods or services. Establishing secondary meaning typically requires extensive use of the color in commerce over a significant period.
- Distinctiveness and Functionality: Colors can be classified into two categories when it comes to trademark protection: inherently distinctive and non-inherently distinctive. Inherently distinctive colors, such as unique and arbitrary colors, may have a higher chance of being granted trademark protection. On the other hand, non-inherently distinctive colors, such as colors commonly used in an industry, may face more challenges as they are considered functional or essential to the industry.
- Trade Dress Protection: In some cases, color can be protected as part of the trade dress of a product or packaging. Trade dress refers to the overall appearance, design, or packaging of a product that identifies and distinguishes it from others. Protection of color as trade dress often requires a showing of acquired distinctiveness and non-functionality.
- Examples of Registered Color Marks: While more difficult to obtain, some well-known examples of registered color marks include the pink color for insulation (registered by Owens-Corning), the blue color for prescription inhalers (registered by GlaxoSmithKline), and the red color for the soles of shoes (registered by Christian Louboutin).
It’s important to note that successfully registering a color as a trademark can be challenging due to the higher threshold for distinctiveness and secondary meaning. Working with a trademark attorney who has experience in color trademarks can help you navigate the complexities and increase your chances of success. They can guide you through the application process, help gather evidence of acquired distinctiveness, and provide advice on the best strategy for protecting your color mark.
Can I transfer my trademark to someone else?
Yes, you can transfer your trademark to another party through a process called trademark assignment. Trademark assignment involves transferring the ownership and associated rights of a trademark from one entity to another. Here are some key points to consider regarding trademark assignment:
- Written Agreement: To transfer a trademark, it is essential to have a written agreement called a trademark assignment agreement. This agreement should clearly state the intent to transfer the trademark rights, identify the parties involved (assignor and assignee), describe the specific trademark being transferred, and outline the terms and conditions of the assignment.
- Recordation: It is advisable to record the trademark assignment with the appropriate trademark office or registry where the trademark is registered. While recordation is not always mandatory, it provides public notice of the transfer and helps establish the assignee’s rights as the new owner of the trademark. Recordation requirements vary by jurisdiction, so it’s important to consult the specific rules and procedures of the relevant trademark office.
- Goodwill and Assets: When transferring a trademark, it’s important to consider the associated goodwill and assets. Goodwill refers to the reputation, recognition, and value associated with the mark. In many jurisdictions, the assignment of a trademark automatically includes the transfer of associated goodwill unless otherwise specified in the agreement.
- Assignee’s Rights and Responsibilities: The assignee, or the new owner of the trademark, assumes all rights and responsibilities associated with the mark, including the right to use the mark in connection with the specified goods or services and the responsibility to maintain and enforce the trademark rights.
- Consideration: Trademark assignment often involves a consideration, which is the payment or other valuable consideration exchanged between the assignor and the assignee. The consideration can be monetary or non-monetary and should be clearly stated in the assignment agreement.
It is advisable to consult with a trademark attorney when considering trademark assignment to ensure compliance with the relevant laws and to properly draft the assignment agreement. An attorney can guide you through the process, assist with the necessary documentation, and help protect your rights during the transfer of ownership.
Can I license my trademark to others?
Yes, you can license your trademark to others through a trademark licensing agreement. Trademark licensing allows you, as the trademark owner (licensor), to grant permission to another party (licensee) to use your trademark in connection with specific goods or services. Here are some important points to consider regarding trademark licensing:
- Licensing Agreement: A trademark licensing agreement is a legally binding contract that outlines the terms and conditions of the license. It should clearly define the scope of the license, including the specific goods or services covered, the duration of the license, and any limitations or restrictions on the use of the mark.
- Quality Control: As the trademark owner, you have a responsibility to maintain the quality and reputation associated with your mark. Therefore, it is essential to include provisions in the licensing agreement that require the licensee to maintain certain quality standards and to comply with your guidelines for the use of the mark.
- Royalties and Consideration: Trademark licensing often involves the payment of royalties or other forms of consideration from the licensee to the licensor. The licensing agreement should clearly outline the payment terms, including any upfront fees, ongoing royalties, or revenue sharing arrangements.
- Term and Termination: The licensing agreement should specify the duration of the license, including any renewal or termination provisions. It’s important to establish mechanisms for terminating the license in the event of breach or non-compliance by the licensee.
- Geographic and Usage Restrictions: You can include geographic restrictions in the licensing agreement to limit the use of the mark to specific regions or territories. Additionally, you can impose restrictions on the types of goods or services for which the mark can be used to ensure that it aligns with your overall brand strategy.
- Monitoring and Enforcement: While the licensee is granted the right to use your mark, you should retain the ability to monitor and enforce the proper use of the mark. The licensing agreement should include provisions allowing you to inspect the licensee’s use of the mark and take appropriate action in case of misuse or infringement.
It is highly recommended to consult with a trademark attorney when considering trademark licensing. They can help draft a comprehensive licensing agreement that protects your rights, ensures compliance with trademark laws, and helps maintain the integrity and value of your trademark.
If my trademark is registered in the United States, is it protected in other countries as well?
No, a trademark registered in the United States is not automatically protected in other countries. Trademark protection is territorial, meaning that rights are typically granted on a country-by-country basis. Registering your trademark in the United States provides protection within the United States jurisdiction only. Here are some important points to consider:
- International Trademark Registration: If you wish to protect your trademark in multiple countries, you have the option to pursue international trademark registration through mechanisms such as the Madrid System for the International Registration of Marks. This system allows you to seek protection in multiple member countries by filing a single international application based on your existing U.S. registration.
- National Trademark Applications: Alternatively, you can file separate national trademark applications in each country where you seek protection. This typically involves engaging local counsel or trademark agents who are familiar with the specific requirements and procedures of each jurisdiction.
- Priority and Convention Rights: The filing date of your U.S. trademark application can be used as a priority or filing date for subsequent applications in other countries. Many countries recognize the principle of priority, allowing you to claim the earlier filing date of your U.S. application if you file within a specified period (usually six months) in those countries.
- Individual Country Requirements: Each country has its own trademark laws, registration processes, and requirements. It is important to research and understand the specific regulations and procedures of the countries where you wish to seek protection. This may include examining the availability of your mark, preparing and filing the necessary documents, and paying the applicable fees.
- Local Counsel or Trademark Agents: Given the complexity and variations of international trademark registration, it is advisable to engage the services of local counsel or trademark agents in each country. They can provide guidance on local requirements, assist with the application process, and ensure compliance with the specific rules and regulations of each jurisdiction.
Remember that timely action is crucial when seeking international trademark protection. It is recommended to consult with a trademark attorney who can help develop a comprehensive international trademark strategy, assist with the registration process, and navigate the complexities of global trademark protection.
Is there such a thing as an “International Trademark”?
While there is no single registration or “International Trademark” that provides worldwide protection, there are mechanisms in place to facilitate the process of seeking trademark protection in multiple countries. Here are a couple of key systems for international trademark protection:
- Madrid System: The Madrid System for the International Registration of Marks, administered by the World Intellectual Property Organization (WIPO), offers a centralized and streamlined process for seeking trademark protection in multiple member countries. It allows trademark owners to file a single international application based on an existing trademark registration or application in their home country. Through the Madrid System, you can designate multiple member countries where you seek protection, simplifying the application process and reducing costs.
- Regional Systems: Some regions, such as the European Union (EU) and the African Intellectual Property Organization (OAPI), have established regional trademark systems. These systems allow applicants to seek trademark protection across multiple countries within the region through a single application process. For example, the EU offers the European Union Trademark (EUTM) system, which provides trademark protection in all member states of the EU.
It’s important to note that while these systems facilitate the process of seeking trademark protection in multiple countries, they are not a guarantee of automatic registration or protection in every country. Each designated country or region still conducts its own examination and registration process, and the protection granted will depend on the specific laws and regulations of each jurisdiction.
Additionally, there are some international treaties and agreements, such as the Paris Convention for the Protection of Industrial Property, that provide certain rights and benefits to trademark owners across multiple countries. These agreements establish principles of national treatment and priority rights, allowing trademark owners to claim priority based on an earlier filing date in one member country when filing in another member country.
Overall, while there is no single “International Trademark” that provides universal protection, international trademark systems, regional systems, and international agreements offer avenues for seeking trademark protection in multiple countries. Engaging the services of a trademark attorney experienced in international trademark matters can help navigate these systems and ensure proper protection for your mark in various jurisdictions.
What is a trademark office action?
A trademark office action is an official communication issued by the trademark office in response to a trademark application. It typically outlines issues, objections, or requirements related to the application that need to be addressed or resolved before the application can proceed to registration. Here are some key points to understand about trademark office actions:
- Examination Stage: After you file a trademark application, it goes through an examination process by the trademark office. During this stage, a trademark examiner reviews the application to ensure compliance with the relevant laws, regulations, and procedures.
- Types of Office Actions: Office actions can vary depending on the specific issues identified by the examiner. They can include:
– Substantive Office Actions: These are issued when there are legal or substantive issues with the application, such as a likelihood of confusion with an existing mark, issues with the description of goods or services, or lack of distinctiveness.
– Procedural Office Actions: These are issued when there are procedural or technical deficiencies in the application, such as missing or incorrect information, improper classification, or failure to submit required documents.
- Content of Office Actions: Office actions typically contain a detailed explanation of the examiner’s findings, objections, or requirements. They may reference specific sections of the trademark law or provide specific instructions for addressing the identified issues. The office action will also specify a deadline by which you must respond.
- Response Deadline: Upon receiving an office action, you must carefully review its contents and prepare a timely and appropriate response. The response deadline is typically set by the trademark office and varies depending on the jurisdiction. It is important to adhere to the deadline to avoid abandonment or refusal of the application.
- Response Options: When responding to an office action, you have several options. You can amend the application, provide additional evidence or arguments to overcome objections, or seek a resolution through negotiation or argumentation with the examiner. It is crucial to strategize your response carefully and consult with a trademark attorney for guidance.
- Iterative Process: The trademark office may issue multiple office actions during the examination process. It is common for the examiner to raise new issues or request further clarification in subsequent office actions. Each office action requires a response until all objections are addressed, and the examiner is satisfied with the application.
Responding effectively to office actions is crucial to advancing the trademark registration process. Working with a trademark attorney can be highly beneficial, as they can help you understand the examiner’s concerns, develop an appropriate response strategy, and ensure compliance with the trademark office’s requirements.
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’s important to respond appropriately to address the issues raised by the trademark examiner. Here are some steps to take if you receive an office action:
- Carefully Review the Office Action: Read the office action thoroughly to understand the objections, issues, or requirements identified by the examiner. Pay close attention to the specific sections of the trademark law referenced and any instructions provided.
- Seek Legal Guidance: Consider consulting with a trademark attorney. They can provide professional advice, help you understand the implications of the office action, and guide you through the response process. An attorney can assess the strength of the examiner’s objections and develop a strategy to overcome them effectively.
- Analyze the Objections: Evaluate the objections raised by the examiner. Determine whether they relate to substantive issues, procedural deficiencies, or both. This will help you understand the nature of the objections and how to address them in your response.
- Gather Supporting Evidence: Collect any additional evidence, documentation, or arguments that can support your position and address the examiner’s concerns. This may include evidence of acquired distinctiveness, clarification of goods or services descriptions, or arguments regarding the dissimilarity of your mark to others.
- Prepare a Response: Craft a well-structured and persuasive response to the office action. Address each objection raised by the examiner and provide clear and concise arguments supported by relevant legal and factual evidence. Make sure to comply with any specific instructions provided in the office action.
- Meet the Deadline: Respond within the specified deadline given in the office action. Missing the deadline can result in the abandonment or refusal of your application. If additional time is needed, consult with your attorney to explore any available extension options.
- Submit the Response: File your response with the trademark office through the designated channel or online system. Ensure that your response includes all necessary documents, forms, and any required fees.
- Follow Up: After submitting your response, monitor the status of your application. The trademark office may issue a subsequent office action, request further information, or ultimately approve your application. Stay in communication with your attorney to address any further requirements or actions needed.
Responding effectively to an office action is crucial to advancing your trademark application. Working with a trademark attorney can provide valuable guidance throughout the process, increasing your chances of a successful registration. They can help you navigate the legal complexities, craft a persuasive response, and address the examiner’s concerns in a comprehensive manner.
How can I make sure no one starts using my trademark?
It is your obligation as a trademark owner to enforce your rights and protect your mark against infringement. There are monitoring services that will alert you when someone seeks to register your trademark or a similar trademark so you can take action. Ask about the monitoring services offered at Cohn Legal.
What can I do if I believe someone is infringing on my trademark?
Step one – Determine that this person really is infringing on your trademark? Ask yourself, “How similar are the trademarks and how similar are the goods/services”? The trademarks must be so similar as to cause a “Likelihood of Confusion” as to the owner of the trademarks. Too similar for your liking? Speak to a trademark lawyer.
What can I do if someone is using my trademark?
If you believe your trademark is being infringed, you should immediately contact a trademark attorney who can advise you on next steps. Typically, the first step is to send a cease-and-desist letter to the infringer. An attorney can tell you if further legal action should be considered.
How do I enforce my trademark rights?
Enforcing your trademark rights is crucial for protecting your brand and maintaining its exclusivity in the marketplace. Here are some steps to take when enforcing your trademark rights:
- Monitor and Identify Infringements: Regularly monitor the marketplace for potential infringements of your trademark. This can involve conducting online searches, monitoring industry publications, and staying vigilant for unauthorized use of similar or identical marks. Identify instances where others are using your mark without permission or using confusingly similar marks that may cause consumer confusion.
- Gather Evidence: Collect evidence of the infringing activity. This can include photographs, screenshots, product samples, advertisements, packaging, or any other material that demonstrates the unauthorized use of your mark. Documentation is crucial for building a strong case and demonstrating the infringement.
- Consult with a Trademark Attorney: Seek the advice of a trademark attorney experienced in enforcement matters. They can evaluate the evidence, assess the strength of your case, and guide you through the enforcement process. An attorney can help determine the appropriate legal strategy and actions to take based on the specific circumstances.
- Cease and Desist Letter: Often, the first step in enforcing your trademark rights is sending a cease and desist letter to the infringing party. This letter informs them of their unauthorized use and demands that they immediately stop using your mark. The letter should be drafted by your attorney and include details of the infringement, evidence, and a clear deadline for compliance.
- Negotiation or Mediation: In some cases, it may be possible to resolve the issue through negotiation or mediation. Your attorney can engage with the infringing party and their legal representation to explore options for reaching a mutually acceptable resolution, such as a licensing agreement, brand name change, or cessation of the infringing activity.
- Litigation: If negotiation or mediation does not yield a satisfactory outcome, you may need to consider initiating legal proceedings. This typically involves filing a lawsuit against the infringing party to protect your trademark rights. Litigation can be complex and costly, so it’s important to work closely with your attorney to assess the risks and potential outcomes.
- Remedies and Damages: If successful in court, you may be entitled to remedies and damages. Remedies can include injunctive relief (court orders to stop the infringement) and the destruction of infringing goods. Damages can include monetary compensation for actual damages suffered and, in some cases, statutory damages and attorney’s fees.
Enforcing trademark rights requires a proactive approach and the guidance of a knowledgeable trademark attorney. They can help you navigate the enforcement process, protect your brand, and take the appropriate legal actions to safeguard your trademark rights.
Why Trademark Registration Matters for Portland Businesses
Portland is a great location for anyone starting a new business venture. Entrepreneurs from Portland have an independent spirit and prefer to handle all aspects of their business themselves. That’s an admirable quality, but the one thing business owners definitely need assistance with is trademark registration.
Imagine the following: Liza graduated from culinary school a few years ago and has been working on creating a new hot sauce. She finally comes up with a recipe that she thinks is a winner. Her plan is to have local grocery stores stock her hot sauce and sell it directly to consumers through her website.
She conducts a Google search for the name she came up with, Fire Breath Hot Sauce, and no exact matches pop up. She assumes that she’s good to go so she forges ahead with creating a website, printing labels, and pitching her product to local stores.
Six months later, Liza is pleased with her new business. Online sales are steadily increasing and she has half a dozen stores stocking her product. Unfortunately, she’s about to get some bad news.
There’s a company in Oklahoma that manufactures a hot sauce with a very similar name. They trademarked the name with the USPTO so they are well within their rights to demand that Liza stop selling her product on her website and take it down from store shelves.
This is a huge financial setback for Liza. If she had contacted a trademark attorney before she moved forward with her business idea this could have been avoided. It’s never a good idea to rely on Google when it comes to trademarks. Always contact a trademark attorney who can help you properly protect your brand and 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 Portland and yet it can assist businesses from Oregon in registering a federal Trademark because trademarks are governed under federal law.