914-908-6757 anthony@vernalaw.com

Trademark Applications and Registrations

At Verna Law, we are experienced in filing a trademark application and finding the path towards registration.  There is a process to consider for every mark.

Step One: Search for Trademarks

Your brand name, your logo, and other symbols of your business are what you want to protect.

Your brand name, i.e. your trademark, is central to you and your business. It represents your business in the marketplace. It represents the quality that your business and its products stand for.

That brand name or logo or symbol might be in use by another business. Finding that out is the first and most essential step in the trademark registration process: it is necessary to search for marks that may be the same or confusingly similar.

Searching for similar trademarks (on federal, state, and common-law basis) is necessary before making any decision to apply for trademark registration on a federal or state basis.

Once a search is performed on your behalf, we analyze the results and prepare a written opinion for you to consider before taking next steps. The purpose of that opinion is to identify risks of your business’ use of the trademark in commerce and its application to register that mark.

Once you have made the decision to proceed with use and registration of a trademark, filing the application is the next step in the process.

 

Step Two: File the Trademark Application

 

After a business has done its due diligence and searched the marketplace for the same or similar trademarks, a business can apply for trademark registration.

The United States Patent and Trademark Office employs attorneys to review all trademark registration applications. These attorneys apply a set of procedures to all applications.  Some applications are rejected by the examining attorneys for a variety of reasons, often triggered because businesses have filed an application without assistance of counsel.  We can often help address the problems in many of those situations.

Once the application for registration is approved, published without opposition, and an affidavit of using the trademark in commerce is properly filed, the USPTO will issue a registration for that trademark.

Step Three: Monitor and Protect the Trademark

What does it mean to protect a trademark? Trademarks are not nouns or verbs, they are adjectives.  There are certain rules of usage of a trademark that have an impact on whether or not that trademark will be protected.

It is possible that others will try to register a mark that is similar to your mark.

As the owner of a registered mark, there is only a certain period of time to object to another’s similar application.  Additionally, it is incumbent of the owner of a registered mark to monitor the marketplace; otherwise, marks that might be objectionable to the owner might be approved by the USPTO.  For example, once a mark is published for opposition, the owner of another trademark has only 90 days to after publication within which to object to the application of another person.

The important step is to search regularly for new trademark applications that can possibly interfere with a business’ registered trademarks.

Our firm can assist in advising in how to monitor and protect your business’ trademarks and can offer options for action.

Trademark Registrations and Disputes

Our attorneys are recognized as knowledgeable in trademark disputes.  Anthony Verna teaches Continuing Legal Education classes to other lawyers about the Trademark Trial and Appeal Board.

 

(Prior results do not guarantee future success.)

What is the Trademark Trial and Appeal Board?

The Trademark Trial and Appeal Board (TTAB) is a federal administrative court that hears many trademark disputes.  A Trademark Opposition is a proceeding in which the plaintiff is trying to protect its mark by stating its objection to a defendant that is trying to register a trademark.  A Trademark Cancellation is a proceeding in which the plaintiff is trying to cancel the registration of a trademark.

A plaintiff must have a “real interest” in the proceeding; and a “reasonable basis” for believing that it would suffer damage if the mark is registered.

Our victories:

 

  • Aventis Pharmaceuticals, Inc., vs. Heal the World, Inc., TTAB Opposition No. 91192046
  • Smash Men’s, Inc. vs. Rosado, TTAB Cancellation No. 92052447
  • B Hotel Group, LLC, vs. Le, TTAB Opposition No. 91196813
  • Diversified Renewable Concepts, LLC vs. Blue Sky Solar Group, Inc., TTAB Opposition No. 91202383

  • Weiner vs. E&J Starz, Inc., TTAB Opposition No. 91204005
  • Diamondback Realty L.L.C. vs. Instant Assistant, Inc., TTAB Cancellation No. 92055651

  • Cheese Plus, LLC vs. Pane D’Oro Food Company LLC, TTAB Opposition No. 91209953
  • Feel the World, Inc. vs. Heapsylon LLC, TTAB Opposition No. 91210390
Precedential decision:

 

  • General Council of the Assemblies of God v. Heritage Music Foundation, 97 USPQ2d 1890 (TTAB 2011)

Trademark Monitoring

Why Should Trademark Owners Monitor Trademarks?

One responsibility trademark owners neglect often is to monitor trademarks.  This is probably due to a lack of understanding about the trademark application and registration process.

During the trademark application process, the U.S. Patent and Trademark Office take the trademark and

  • Reviews the application for similar marks in similar goods and services;
  • Reviews the application for a specific, coherent goods/services description; and
  • Offers the application to public review by third parties.

During that public review, any third party that believes it will be harmed by a new trademark application has the chance to challenge and oppose that new application.

That chance to challenge and oppose a new application is an enforcement of trademark rights.  Searching the Internet for uses of a trademark and challenge those uses is an enforcement of trademark rights.

If your trademarks are worth filing, then they are also worth monitoring and enforcing, else that filing is worthless.  Like a right and left shoe, both are needed.  One risk is that a registered trademark becomes generic and it is difficult to return a mark from “genericization.”  (Xerox was able to do this, but it needed a massive advertising campaign.)

What are the Consequences of not Monitoring?

Once you achieve trademark registration, you have been granted very important and powerful rights in your trademark. That being said, you have several legal responsibilities as a trademark owner. If you do not meet these responsibilities you can lose the rights you have earned in your trademark.

Failure to police your trademark(s) and notify others of your rights (should infringement occur) can result in complete loss of your trademark rights.

Trademark Law FAQ

 

What is a Trademark?

 

A trademark is any set of words or a design that identifies goods or services with a particular origin.

This origin is usually the company that makes the goods or provides the services.

The goods or services are marked to show the quality of the origin. For example, certain types of colas taste differently. The name on the package brings to mind the taste right away.

 

What do I need to create a Trademark?

Any name associated with a mark can be treated as a trademark. The mark needs to be placed on the goods or with materials that advertise the goods or services. These marks do not have to be registered – these are described as common law trademarks. They lack the protection of a mark that is registered with the United States Patent and Trademark Office.

Registered trademarks are divided by the industry the mark is used in and the strength of the trademark in relation to the goods.

Trademark relationships are defined as:

1) Arbitrary or Fanciful – the strongest trademark. The mark has no relation to the product. “Kodak” is the best example because the word was created for use as a trademark.

2) Suggestive – the mark suggests a quality of the product.

3) Descriptive – the mark describes the product. This is a weak trademark that requires “secondary meaning” in order to gain trademark protection. Usually, it must be proven that the public can identify the product comes from one producer.

4) Generic – these words can never be used as trademark protection. For example, a company will never be able to protect the word “Apple” in selling apples. “Apple” brand apples mean nothing because the word is generic, unlike “Apple” brand computers, for example.

What rights do I have in a Trademark?

Owning a registered trademark means that the trademark is registered throughout the United States.

If a restaurant in Dallas, Texas is called “Joe’s Barbeque,” but the name is not registered, the rights of the restaurant owner are limited. The restuarant owner might only be able stop other restaurants in Dallas to be named “Joe’s Barbeque.” If a restaurant opened in New York City called itself “Joe’s Barbeque,” the owner of the Dallas restaurant may not be able to stop the New York restaurant from using the name.

Common-law trademarks like “Joe’s Barbeque” are limited in their scope by industry and by geographic area! In order to obtain all the rights of a registered trademark, the mark must be registered.

Registration allows the industry and the goods or services branded by the mark to be defined by the trademark owner. Registration of a mark used in interstate commerce allows its geographic area to be in the United States, not just a specific location.

Can I Lose Trademark Rights?

YES!

A trademark can be cancelled if it is discovered that the trademark owner is no longer using the mark in interstate commerce.

Also, in the United States, a registered trademark owner must file a Declaration of Continued Use at the end of the 6th year after the date of registration of the mark. Every 10 years after the date of registration, the trademark owner must file another Declaration of Continued Use. Failure to do so will cause the trademark registration to be cancelled.

What are Trademark Infringement and Dilution?

Trademark infringement is the unauthorized use of a registered trademark or of a trademark that is confusingly similar to the registered mark. The unauthorized use may or may not be on the goods and services discussed in the trademark application; it may be on dissimilar goods and services under some conditions. The key result is confusion for consumers in the unauthorized mark.

Trademark dilution is more difficult to describe, as it is reserved for strong trademarks. Those trademarks with the strongest in identity in a market cannot be used in other noncompeting markets. This is to avoid “diluting” the strong, recognizable mark by its use in noncompeting markets.

Dilution is best described in an example. A mark that is recognizable is “Barbie.” The mark “Barbie” brings up an idea of a girl’s doll of an adult woman and friends in a pink box. Most likely, “Barbie” would not be allowed to be used in another market, even if it did not compete with children’s toys because of how strong the mark is and how identifiable the mark is to the goods.

What is Trade Dress?

Trade dress is very specific. Trade dress is an area of law concerning the packaging of a product. The shape of the container, the colors on the container, the utilitarian artwork on the container can all help to identify a product.

The shape of a Coca-Cola bottle is distinctive. The decor of a restaurant that caters to a certain market with certain kinds of food could identify that particular restaurant or chain of restaurants.

Trade dress involves many different and difficult factors.