We Secure Your Registered Trademark
in 4 Easy Steps:
1
TRADEMARK APPLICATION
When submitting a Federal Trademark Application, the USPTO requires two sets of information: Administrative information about the trademark applicant and descriptive information about the trademark itself. Cohn Legal, PLLC has developed an easy and straightforward workflow to help you quickly and efficiently organize your filing information so we can proceed with the filing process seamlessly.
To help you prepare for your filing, please begin to gather the following information: Name of the trademark applicant (either a business entity or individual), Address of the applicant, State the business entity was incorporated and/or the Country of Citizenship of the applicant, and an email address to have on file. The information required concerning the trademark itself consists off the type of trademark (name, logo, slogan), the description of the trademark, the products/services sold under the banner of the trademark, and the extent to which (if any) the trademark has already been used in conjunction with the sale of products/services listed in the application in interstate commerce. We help you understand the nuances of each part of this application submission process and help you obtain the broadest protection for your trademarks available.
2
USPTO TRADEMARK SEARCH
The importance of a professional trademark search cannot be overstated. Trademark law is principally concerned with the question Likelihood of Confusion: does the newly appearing mark bare such a similarity to an existing trademark, given the products/services each respective mark covers, so that a consumer might be confused as to the owner of each trademark? If the answer to this question is yes, your mark will be rejected and may very well constitute trademark infringement.
Remember, this analysis considers not only the similarly of the marks but also the products/services listed under the marks. For this reason, two companies in entirely different industries have the right to use the same exact trademark to brand their disparate services. Our trademark attorneys will consider multiple appearance/sound/spelling variations of your mark to determine your mark’s availability.
3
NAVIGATING THE USPTO EXAMINATION PROCESS
Once our attorneys review your submission and run the trademark search, the next step is to file the application and wait for the USPTO to assign an examining attorney. Filing the trademark application correctly is critical in avoiding a costly rejection, or Office Action, from the USPTO. Once we file the application, we will provide you with our trademark reporting letter which contains both the date the application was submitted and the trademark application’s serial number.
Upon receipt, the examining attorney will vet both the procedural aspects of the application (business entity of applicant, description of the products/services etc.) and the substantive aspects of the application (is the mark too similar to an existing trademark, is this present mark merely descriptive of the products sold etc.) and decide and decide whether to allow the application through or reject the application with an Office Action. In the event that the examining attorney does in fact issue an Office Action, the applicant must respond to it within 6 months of receipt or the application will be canceled and “abandoned”. Our trademark attorneys will assist you in evaluating the trademark office action and drafting a professional response. Once the trademark is finally preliminarily accepted by the USPTO, it is published to the Official Gazette for a 30 day period where an opposing party can make the claim that the issuance of your trademark would be detrimental to their own trademark. If no one opposes your mark, you are on to the next and final step of the trademark registration process.
4
FEDERAL REGISTRATION CERTIFICATE
The glorious moment of trademark registration is upon us. Assuming your trademark passed the USPTO’s examination process and the mark was not opposed during the 30 days it was published to the Official Gazette, you are set to receive your official registration certificate from the USPTO. This registration certificate formally recognizes that through the entire US, you are the sole party with the right to use the trademark in conjunction with the sale of your products/services.
Trademark Application
INCLUDED
IN THE PACKAGE
- Consultation with a Trademark Attorney
- USPTO Trademark Search in Database
- Preparation of Trademark Application
- Draft of Trademark Application for client review
- Submission of Trademark Application
- Docketing of your trademark application once filed with the US Government
- Electronic Trademark Registration Certificate
TOTAL PRICE: $650
(+ Gov. Filing Fee of $250.00/Class)
Unparalleled Legal Counsel and Expertise for Your Brand
What is a Trademark?
Principally, A trademark is branding device which is attached to the sale of a product or a service. The idea is that when a prospective customer sees a product tagged with a company’s name (or trademark), he or she is more or less likely to purchase the product because of the pre-existing beliefs he/she has about the company whose trademark is attached to the product. Therefore, trademarks distinguish the product as belonging to a source-company and allows customers to make better decisions about their willingness to take a chance and purchase the product.
For example, take a moment and think about the eminently famous Mercedes Benz logo; Merely observing this ritzy icon attached to the hood of the car provides a certain level of expectation about the driving and comfort experience of the car. The point is not whether this expectation is justified or entirely misguided; what counts is that people believe it to be true. This belief, associated with a product or service because of the presence of the trademark is the spirit of trademark law. You must do everything to build a powerful brand and maintain its integrity by providing quality products and services.
What are Examples of Categories of Trademarks?
Generally, trademarks come in the following three formats: Names, Logos, and Slogans. Still, remember, trademarks are brand identifiers and therefore there are other forms of trademarks which while perhaps more exotic, are absolutely “trademarks”. For example, Sounds can serve as a trademark as long as they are tethered to a product/service and have developed the capacity to identify a source company. The Twentiety Century Fox, Drums + Trumpets + Strings sound which is played at the begging of motion picture films is an excellent example of such a trademark. Of course, not every sound is necessarily eligible for trademark protection; the sound cannot “merely describe” the products sold (the sound of the opening of a can for a beer company) and instead must be a distinctive sound, relative to the products sold.
Similarly, animations can serve as powerful trademarks and animated images (video clips) can undoubtedly be registered for trademark protection with the USPTO. Disney’s Eureka animation is an excellent example of this. Other types of exotic trademarks include scent trademarks, color trademarks (think the Louboutin red shoe bottom), product design trademarks and indeed even product packaging trademarks; All are in theory eligible if they are sufficiently distinct and serve as a source identifier.
What Sort of Companies Need Trademarks?
Any company serious about its business! Trademarks are legal tools which allow businesses to protect their brand assets. We live in a predatory society and the moment a company gains fame and success, a competitor emerges looking to steal its glory. By trademarking your name/logo/slogan, you ensure your legal rights to stop this theft. The reason that you cannot start a shoe company with the name “NIKAYY” is because of trademark law.
Do I have to Sell Something to Have a Trademark?
With rare exceptions, yes. Remember, the objective of a trademark is to pair a brand asset with the sale of a particular product or service. Without the sale element, Nike’s “Swoosh” would simply be a drawing. However, by selling shoes under the banner of the Swoosh, the check-mark design becomes a trademark.
This is a very important principle to understand because the rights associated with the trademark only extend to those products/services sold under the banner of the trademark. Therefore, if you came up with the name, SLOZIL, and filed a trademark application with the USPTO designating “clothing” in the goods portion of the application, your rights to the trademark would not stop others from selling “computers” under your name, SLOZIL.
Therefore, it is critical for businesses to determine in advance what products/services they intend on selling not only in the present but also in the future and include those items in any application filed with the United States Patent and Trademark Office (USPTO).
How does the Trademark Filing Process Work?
Step number one is to determine the inherent “distinctiveness” of the trademark, given the products/services sold under the trademark. If the trademark is a name which simply describes the products which the company sells, it is not a trademark. So, a watch company cannot trademark the name “Time Keeper” because Time Keeper simply describes the function of the product (watches).
“Rolex”, conversely, is an excellent trademark from a “distinctiveness” perspective because the word has no meaning-relationship with the product (watches).
Once a company determines that its trademark is sufficiently “distinct”, the next step is conduct a trademark search in order to confirm that the name is not already taken. Please remember; trademark law asks not only whether or not an exact match of the trademark already exists but instead whether the mark would cause a “likelihood of confusion” with a different mark. This test considers the similarity between a new mark and an existing mark, given the products/services provided by each respective applicant.
If your trademark attorney provides reasonable assurances that your trademark will be accepted by the USPTO (trademark law is largely subjective so it is impossible to predict with 100% certainty your likelihood of success), the last step is to file the trademark application. Here, there are some details that require greater contemplation (should the Applicant file as an individual or a corporation etc.) and it is worthwhile to speak with a trademark lawyer before filing.
Trademark Law from Cohn Legal, PLLC
Looking to file a US trademark? We are here to help.
At Cohn Legal, PLLC, we understand that your brand is everything for your business. Our trademark attorney will help you navigate the process of filing a trademark with our trademark registration process!
Contact Us Today!
Trademark Registration by Cohn Legal, PLLC
Trademark registration doesn’t have to be as tough as it sounds. The legal team at Cohn Legal, PLLC is here to make the entire process simple for you. Go through our trademark registration process below and get ready to register your trademark.
Trademark Application
The USPTO expects administrative information about you and descriptive information about the trademark when you apply for trademark registration. At Cohn Legal, PLLC, we have developed a simple workflow to help you accurately organize your filing information so that we can go ahead and file your application.
Filing and Prosecution of Trademark Applications
Filing and prosecuting trademark applications involves the legal process of registering a trademark for a specific product or service. A trademark is a symbol, word, phrase, design, or combination thereof that distinguishes and identifies the source of goods or services in the marketplace. The process generally consists of several steps:
- Preparation and Research: Before filing a trademark application, it’s crucial to conduct a comprehensive search to ensure that the proposed trademark is unique and not already registered by someone else. This search helps prevent potential conflicts and rejections during the application process. The search might involve checking national and international trademark databases, domain names, and common law usage.
- Application Filing: Once you’ve determined that your proposed trademark is available, you can proceed to file a trademark application with the relevant government agency. In the United States, for instance, you would file with the United States Patent and Trademark Office (USPTO). The application includes information about the trademark, its intended use, the class of goods or services it pertains to, and the applicant’s details.
- Examination: After the application is filed, the trademark office examines it to ensure it meets the necessary legal requirements and doesn’t conflict with existing trademarks. Examiners review the application to check for distinctiveness, potential confusion with other trademarks, and compliance with formalities. They might issue office actions requesting clarifications or amendments.
- Office Actions and Responses: If the examiner raises concerns or objections, they will issue an office action detailing the issues that need to be addressed. The applicant must respond to these office actions within a specified period, providing arguments, evidence, or amendments to overcome the objections. This process might involve negotiations between the applicant and the trademark office.
- Publication and Opposition: If the trademark application passes examination, it is typically published in an official gazette or on a public database for a set period. During this time, third parties who believe the trademark could infringe on their existing rights can file oppositions to prevent the registration. Oppositions initiate a legal proceeding where the parties present their arguments.
- Registration: If there are no oppositions or if the oppositions are resolved in favor of the applicant, the trademark is registered. The applicant receives a registration certificate, indicating their exclusive rights to use the trademark for the specified goods or services in the designated jurisdiction. Registration grants legal protection and the ability to enforce the trademark against infringing parties.
It’s important to note that trademark processes can vary from country to country, and the timelines for examination and registration can also differ. The entire process can take several months to years, depending on factors such as the complexity of the application, the number of office actions, and any potential oppositions.
Working with a legal professional who specializes in trademark law can greatly assist in navigating this process effectively and ensuring your trademark is properly protected.
Global Trademark Search and Clearance
A Global Trademark Search and Clearance is a comprehensive process undertaken before filing a trademark application to ensure that the proposed trademark is available for use and registration in multiple countries or jurisdictions. This process helps identify potential conflicts with existing trademarks and reduces the risk of legal issues arising after the trademark has been registered. Here’s an overview of the steps involved:
- Identify Relevant Jurisdictions: Before conducting the search, determine the countries or regions where you intend to use and protect your trademark. This could be based on your target markets, business expansion plans, or areas where potential trademark conflicts might arise.
- Comprehensive Search: Perform a thorough search of trademark databases, including both registered trademarks and pending applications, in the selected jurisdictions. This search aims to identify any trademarks that are similar or identical to your proposed trademark and are used for related goods or services. The goal is to uncover potential conflicts that could result in rejection or opposition during the application process.
- Search Sources: Use official trademark databases of each relevant country’s trademark office or international trademark databases like the World Intellectual Property Organization’s (WIPO) Global Brand Database. Additionally, consider searching domain name registrations, business directories, and common law usage to identify unregistered trademarks that could still pose a conflict.
- Evaluate Search Results: Review the search results to identify any trademarks that are similar or identical to your proposed trademark. Pay attention to trademarks that are used in similar industries or for related products and services. Assess the potential risk of confusion or infringement if your trademark is granted registration.
- Legal Analysis: Engage with a trademark attorney or legal expert to analyze the search results. They can help interpret the findings, assess the risk level of potential conflicts, and provide guidance on whether to proceed with the chosen trademark or consider modifications to mitigate risks.
- Clearance Opinion: Based on the legal analysis, the attorney can provide a clearance opinion that outlines the likelihood of success in registering your trademark in the selected jurisdictions. This opinion considers the legal factors, potential conflicts, and the strength of your proposed trademark’s distinctiveness.
- Decision and Adjustments: After receiving the clearance opinion, you can make an informed decision on whether to proceed with the chosen trademark, modify it to minimize conflicts, or choose an alternative trademark altogether. This decision is crucial for avoiding potential legal disputes and expenses down the line.
Conducting a Global Trademark Search and Clearance is an essential step for businesses seeking to protect their trademarks across different jurisdictions. It helps ensure that the chosen trademark is legally viable, reduces the risk of infringement claims, and enhances the chances of successful trademark registration. Working with legal professionals who specialize in trademark law is recommended to navigate this complex process effectively.
Managing Worldwide Trademark Portfolios
A legal professional, especially one with expertise in trademark law and international intellectual property, can play a crucial role in effectively managing worldwide trademark portfolios. Here’s how they can help:
- Strategic Planning:
A legal professional can work with your business to develop a strategic plan for managing your trademark portfolio on a global scale. This plan might include identifying key markets, prioritizing jurisdictions, and determining the most effective filing strategies.
- Trademark Search and Clearance:
They can conduct comprehensive trademark searches and clearance analyses to identify potential conflicts and risks before filing for trademark registration in various jurisdictions. This helps avoid costly disputes and rejections.
- Filing and Registration:
Legal experts can assist in preparing and filing trademark applications in different countries, ensuring compliance with each jurisdiction’s specific requirements. They can help navigate the complexities of each registration process and communicate with local trademark offices.
- Portfolio Management:
Legal professionals can help you maintain and monitor your trademark portfolio. They can track renewal deadlines, ensure proper maintenance, and handle any required documentation or submissions to keep your trademarks in force.
- Infringement Monitoring and Enforcement:
Legal experts can set up systems to monitor and detect potential trademark infringements globally. They can take appropriate legal action against infringers, from sending cease-and-desist letters to initiating legal proceedings if necessary.
- Licensing and Agreements:
If you intend to license your trademarks to others, legal professionals can draft licensing agreements that outline the terms and conditions of use. They can ensure that your interests are protected and that the agreements comply with local laws.
- Due Diligence for Mergers and Acquisitions:
When your business is involved in mergers, acquisitions, or joint ventures, legal professionals can conduct due diligence on the target company’s trademark portfolio. They can identify risks, assess the value of the trademarks, and provide guidance on integration.
- International Treaties and Conventions:
Legal experts are well-versed in international treaties and conventions related to trademarks, such as the Paris Convention and the Madrid Protocol. They can help you leverage these agreements to streamline your global trademark protection efforts.
- Resolution of Disputes:
If disputes arise over your trademarks, legal professionals can represent you in negotiations, mediation, or litigation to protect your rights. They can provide guidance on the best course of action to resolve conflicts effectively.
- Cost Management:
Managing a worldwide trademark portfolio can be expensive. Legal professionals can help you develop cost-effective strategies, such as focusing on priority markets and optimizing your portfolio for maximum protection.
- Continuous Updates:
Trademark laws and regulations vary across countries and can change over time. Legal professionals stay updated on these changes and ensure that your portfolio remains compliant and protected.
Overall, partnering with a legal professional experienced in international trademark law can provide your business with the expertise needed to navigate the complex landscape of worldwide trademark management, safeguard your brand’s identity, and maximize the value of your intellectual property assets.
Recording Trademark Registrations With Customs
Recording Trademark Registrations with Customs refers to the process of registering your trademark with customs or border protection authorities in a specific country. This registration allows customs officials to identify and take action against the importation or exportation of goods that infringe upon your registered trademark rights. Here’s a breakdown of the concept:
- Trademark Registration: Before you can record your trademark with customs, you need to have a registered trademark. A registered trademark grants you exclusive rights to use your trademark for specific goods or services within the jurisdiction where it is registered.
- Customs Registration: After obtaining a registered trademark, you can take steps to protect your rights at the borders of a particular country. This involves submitting information about your trademark registration to the customs or border protection agency of that country.
- Information Provided: When registering with customs, you typically provide details about your registered trademark, such as its image, description, and the goods or services it covers. This information helps customs officials easily identify potentially infringing goods during inspections.
- Border Enforcement: Once your trademark is registered with customs, border protection authorities are empowered to enforce your trademark rights at the border. This means that customs officials can identify goods that bear trademarks similar to yours and that are being imported or exported without authorization.
- Monitoring and Detection: Customs officials use the information you’ve provided to monitor shipments and detect counterfeit or infringing goods. They may inspect goods that are suspected of bearing counterfeit trademarks or imitations of your registered trademark.
- Seizure and Actions: If customs officials identify goods that appear to infringe on your trademark rights, they can seize these goods and take appropriate actions. This might involve contacting you as the trademark owner and working with you to determine the appropriate course of action, which could include destruction of the infringing goods or legal proceedings against the infringing parties.
- Deterrence: Recording your trademark with customs serves as a deterrent to counterfeiters and infringers who might attempt to import or export counterfeit goods. The knowledge that customs authorities are actively monitoring and taking action against trademark infringements can discourage such activities.
- International Protection: Trademark owners often choose to record their trademarks with customs in multiple countries to ensure comprehensive protection for their brand against counterfeit and infringing goods in international trade.
In summary, “Recording Trademark Registrations with Customs” is a proactive measure that allows trademark owners to collaborate with customs authorities to prevent the entry or exit of counterfeit or infringing goods. This helps protect the brand’s reputation, maintain the integrity of the marketplace, and preserve the value of the registered trademark.
USPTO Trademark Search
Having a professional trademark is critical to your business and brand’s success. In addition, it is important that your trademark is unique from others. In fact, a part of trademark law deals with the chances of confusion and similarities between trademarks. And if there are similarities between your trademark and some others, then your application can get rejected and constitute trademark infringement. Our USPTO trademark search considers the similarity of the trademarks and the products or services listed under them. Our attorneys, while conducting the search, will consider different variations of appearance, spelling, and sound of your trademark to determine whether it is available.
Navigate the USPTO Examination Process
Once the search is done and the application is reviewed, you can file it and wait for an examining attorney to be assigned by the USPTO. Once the application is filed, our attorneys will give you our trademark reporting letter that contains the date of application and the application’s serial number. The attorney from the USPTO will then check the procedural and substantive aspects of the application and decide whether to approve it or not. If the application gets approved, it will get published in the Official Gazette for 30 days to allow any opposing party to make a claim. In case the application is rejected, our attorneys will help you understand the trademark office’s action and draft a professional response.
Federal Registration Certificate
Once the USPTO approves your application and if no one else opposes it, you will get an official registration certificate. This certificate recognizes that you are the only owner of the trademark in the entire country and can use it to sell your services or products.
Apply for Your Trademark Registration Today!
Industries We Serve
Hemp/CBD Law
Our trademark lawyers will help you with the legal aspects of setting up your hemp company and advice on intellectual property protection.
Startup Law
Our startup lawyers understand how challenging setting up a new company can be. They have worked with veteran founders, entrepreneurs, and established businesses who are looking to branch out and try something new. Our lawyers will guide you legally and provide you with all the tools you require to set up your company with complete legal compliance.
Food and Beverages, and CPG
Our food and beverage lawyers have been actively helping several food and beverage companies form, develop, and progress in their businesses. We have experience working with food entrepreneurs who focus on the development of new products and interact with distributors, brokers, co-packers, and other key players in the industry. Our lawyers will help you create a comprehensive plan and structure and advice you on choosing the right business entity, help you select a partner if you need one, and advise you on food labeling compliance and branding.
Trademark Law from Cohn Legal, PLLC
Looking to file a US trademark? We are here to help.
At Cohn Legal, PLLC, we understand that your brand is everything for your business. Our trademark attorney will help you navigate the process of filing a trademark with our trademark registration process!
Contact Us Today!
Trademark Registration by Cohn Legal, PLLC
Trademark registration doesn’t have to be as tough as it sounds. The legal team at Cohn Legal, PLLC is here to make the entire process simple for you. Go through our trademark registration process below and get ready to register your trademark.
Trademark Application
The USPTO expects administrative information about you and descriptive information about the trademark when you apply for trademark registration. At Cohn Legal, PLLC, we have developed a simple workflow to help you accurately organize your filing information so that we can go ahead and file your application.
USPTO Trademark Search
Having a professional trademark is critical to your business and brand’s success. In addition, it is important that your trademark is unique from others. In fact, a part of trademark law deals with the chances of confusion and similarities between trademarks. And if there are similarities between your trademark and some others, then your application can get rejected and constitute trademark infringement. Our USPTO trademark search considers the similarity of the trademarks and the products or services listed under them. Our attorneys, while conducting the search, will consider different variations of appearance, spelling, and sound of your trademark to determine whether it is available.
Navigate the USPTO Examination Process
Once the search is done and the application is reviewed, you can file it and wait for an examining attorney to be assigned by the USPTO. Once the application is filed, our attorneys will give you our trademark reporting letter that contains the date of application and the application’s serial number. The attorney from the USPTO will then check the procedural and substantive aspects of the application and decide whether to approve it or not. If the application gets approved, it will get published in the Official Gazette for 30 days to allow any opposing party to make a claim. In case the application is rejected, our attorneys will help you understand the trademark office’s action and draft a professional response.
Federal Registration Certificate
Once the USPTO approves your application and if no one else opposes it, you will get an official registration certificate. This certificate recognizes that you are the only owner of the trademark in the entire country and can use it to sell your services or products.
Apply for Your Trademark Registration Today!
Industries We Serve
Hemp/CBD Law
Our trademark lawyers will help you with the legal aspects of setting up your hemp company and advice on intellectual property protection.
Startup Law
Our startup lawyers understand how challenging setting up a new company can be. They have worked with veteran founders, entrepreneurs, and established businesses who are looking to branch out and try something new. Our lawyers will guide you legally and provide you with all the tools you require to set up your company with complete legal compliance.
Food and Beverages, and CPG
Our food and beverage lawyers have been actively helping several food and beverage companies form, develop, and progress in their businesses. We have experience working with food entrepreneurs who focus on the development of new products and interact with distributors, brokers, co-packers, and other key players in the industry. Our lawyers will help you create a comprehensive plan and structure and advice you on choosing the right business entity, help you select a partner if you need one, and advise you on food labeling compliance and branding.