TRADEMARKS




Trademark Law Firm

Trademarks are an important asset for any business. It is important that you properly use and protect your trademark(s) to maximize your investment. We are experienced trademark attorneys helping clients register and protect their trademarks throughout the world. We serve individuals, start-ups and mid-sized corporations with registering, monitoring and managing trademark portfolios. We can help you with all aspects of developing and managing your trademark portfolio and we provide counsel from a business perspective so we can guide you in the relationship between branding and trademark law.

Trademark Services

Our growing trademark practice includes the following services:

  • Trademark knock-out searches
  • Trademark clearance searches
  • Trademark and brand strategy
  • Trademark application filing and trademark registration with the USPTO (United States Trademark)
  • International trademark counseling and coordination with country experts for overseas registration
  • Helping client protect their brands and establish a strategy for maximizing the value of their brands
  • Monitoring proper trademark use
  • Trademark oppositions
  • Defending and enforcing trademark rights

International Trademark Protection

As business becomes more global, so does your trademark strategy. We have established relationships with law firms throughout the world and we regularly assist clients with international trademark protection. Whether you are focused only on North America or your strategy extends to numerous continents and countries, we are able to help guide you in effectively securing trademark rights outside the United States. We can assist with important decisions regarding filing for protection directly in each country or taking advantage of the Madrid Protocol to pursue international trademark registration.



What is a trademark?

A trademark is generally a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the sources of the goods of one party from those of others.



What is a service mark?

A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a good.



Do I need to register my trademark?

Federal registration of your mark is not required, but is highly recommended. You can establish rights in a trademark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of advantages, including: A legal presumption of ownership of the mark and your exclusive right to use the mark nationwide or in connection with the goods/services listed in the registration; Public notice of your claim of ownership of the mark; The right to use the federal registration symbol ®; The ability to bring an action concerning the mark in federal court, rather than having to sue for trademark infringement in individual states; The use of the U.S. registration as a basis to obtain registration in foreign countries.



What is the process for registering a trademark?

Identify one or more possible trademark(s) for registration Perform a trademark search Identify the description of goods/service and the applicable classes for registration If the trademark is currently in use in commerce, prepare an acceptable specimen of use for filing with the trademark application Prepare and file the trademark application electronically Respond to any office actions received from the trademark examiner Notice of publication; publication period Allowance and registration by the USPTO



How long does it take to get a trademark registered?

Generally, it takes 4-6 months before an examiner at the USPTO reviews the trademark application and provides a response to the applicant. The length of time needed to achieve registration varies considerably depending on the trademark. However, many trademarks can be registered within 1 year of filing the trademark application with the USPTO. The USPTO notes that the total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.



What is the cost for registering a trademark?

The cost for registering a trademark varies depending on the number of classes of goods/services for which you seek registration, the complexity of the trademark application prosecution with the USPTO and whether or not you request a search. The cost for filing a trademark application with the USPTO is approximately $775 for a trademark application for one class of goods/services. This amount does not include the cost of a search.



Do I need to have a trademark search performed before I use the mark?

A trademark search is a smart first step. If you are currently using or plan to use a trademark, it's always a good idea to see if there are similar marks that could be confused with yours, or might affect your ability to use and protect your trademark. If there are potentially confusing trademarks registered with the USPTO, those could affect your chances of registering your own mark. Also, if there are any potentially confusing marks already in use by businesses—even marks that haven't been registered—these could affect your ability to register or use your trademark. If you are sued by a trademark owner for using its trademark, you could be forced to stop using the trademark. Or, you could be sued for infringement and if you use a federally registered trademark, you could be found to be a willful infringer, which could result in treble damages. Our firm can provide a flat fee estimate if you are interested in ordering a trademark search.



What is the proper use of a trademark?

Trademarks should be set apart from normal text and should be used with a noun; your trademark should be used as an adjective accompanied by the appropriate noun. They should be used to identify the source of a specific product or service. Do not use a trademark as a noun and do not pluralize the trademark or use it as a verb.



When do I use the TM vs. the ® symbol?

There are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.



Do I need to register my trademark in other countries?

Registration of our trademark with the USPTO provides protection and rights in the United States. Your USPTO registration does not provide trademark protection or rights outside of the United States. If you are doing business in other countries, you should strongly consider filing for trademark rights in each country. In Europe you can file for a Community Trademark, which will cover all countries participating in the Community Trademark registration. Also, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. There are time requirements for taking advantage of such priority rights so please contact an attorney right away if you believe you might want/need such rights.



If you are interested in a free consultation regarding trademark registration, please contact our firm by phone 503-439-6500 or via email at tm@bltg-ip.com.