Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Filing an Intent to Use Trademark Application with the USPTO

Intent to use trademark registration application tips: 

Many clients wonder whether or not they have to start using their trademark in commerce before they register their trademark with the USPTO.  The answer is simple.  You do not need to use your trademark before filing for trademark registration.  You can file an "intent to use" trademark application in order to put a marker down and tell the rest of the world that you are claiming trademark rights in the particular words, stylized design, logo, catchphrase or slogan. 

All too often clients seek to have trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application, let alone achieve trademark registration.  More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time (six months until an Amendment to Allege Use must be filed) during which the applicant can begin to produce the goods, offer the services, or simply prepare the mark.  With priority being so important, it is not out of the realm of possibility that applicants become overly aggressive in their filings.

Trademark Registration with the USPTO: Know the Rules and Avoid Fraud

The USPTO is requiring additional requirements for an applicant filing a trademark with the United States Patent and Trademark Office.  The most recent change to the PTO Rules requires a description of the mark in all filings that are not for a standard character mark.  This means, for example, that if you are filing for a design mark, you will need to describe what the mark consists of, consistent with the design search codes.  Unsuspecting applicant’s may not recognize this rule change, file a trademark as they normally would have, and unnecessarily delay their trademark registration by having to respond to USPTO office actions and amend their trademark application. 

Besides the required attention to the ever-changing rules, applicants who choose not to consult with an attorney or have an attorney file their trademark may be subject to fraud charges. Fraud charges may lead to, among other things, a successful trademark registration being cancelled if challenged by an opposer.  While an applicant can undoubtedly complete the online form for a trademark application, the average applicant may not understand the intricacies of trademark law, let alone understand that she is submitting sworn documents that, once submitted, can not be remedied.  Innocence is no defense, and “I’m sorry” will not cut it.  Trademark attorneys can help an applicant avoid the common pitfalls that may subject the trademark to refusal, opposition, or even cancellation.  While the actual filing a trademark through the TEAS may appear rather simple, the research required to determine the availability of a trademark, the international class within which to file the trademark, and the accompanying rules that determine likelihood of registration of that trademark require the knowledge, education, and expertise of a trademark attorney.  There is no reason to go after what may become your, or your business’s, greatest attest – its intellectual property.  Contact a trademark attorney today.

How to Register a Trademark & Copyright for a Catchphrase.

A catchphrase is an expression usually popularized by continued use by individuals and consumers.  People love a good catchphrase.  But many clients wonder how to protect a good catchphrase once it catches on. We are often asked by clients "can i copyright a catchphrase" or "can I trademark a catchphrase."

A catch phrase, like a word or design, can be registered as a trademark and entitled to the same protection and rights as a brand name or other mark.  Although catchphrases are most often made popular by oral repetition which lends itself to trademark protection, a catchphrase can also be registered as a copyright if its rendition on paper, the internet or digitally incorporates a unique or artistic design. Trademarking a catchphrase is always a good idea if it denotes the source and origin of goods or services (see trademarked catchphrase list below).  Protected correctly, a catchphrase can become yet another valuable piece of your intellectual property assets. 

"Traverse Legal's attorneys know how to trademark a catchphrase and, for artistic renderings, how to copyright a catchphrase. Our trademark and copyright attorneys pride themselves on advanced trademark and copyright registration techniques which are both cost-effective and budget oriented."

We have compiled a list of some of the most famous catchphrases below.  If you are wondering if your catchphrase stands up to some famous ones, take a look at this list.  (list of some well-known and extremely valuable catch phrases, protected as an intellectual property right, as reported on by Caroline Donnelly here).

Register a Brand Name? | Why a Trademark Lawyer Can Help

A simple assessment by a competent trademark lawyer can cost anywhere from $350 to $2,000 depending on the breadth of the search.  That price is pretty cheap compared to the cost of having an injunction issued against you for infringement of intellectual property.  All told, being named as a defendant in a trademark infringement or cybersquatting lawsuit can cost hundreds of thousands of dollars. 

In the case discussed below, Palantir Technologies branded its company in 2005 with a name that easily could have been identified in a trademark availability search.  A good trademark lawyer would have discovered both a prior US trademark registration and a Panantir.net's web site.  The common use in a service category which includes databases would have resulted in an attorney opinion that the Palantir name was too high risk.

A Google Search reveals this result for Palantir Technologies.  Palantir Technologies : The future of analysis.  It turns out Palanir forgot to analyze trademark availability or failed to understand the risks associated with brand name selection of a prior use.

Palantir.net began providing Web design, development, and database services nationally under the Palantir name in 1996. It acquired the palantir.net domain name in 1997. Palantir.net incorporated in 2000 and obtained a federal registration for PALANTIR in 2006. It sells to educational and cultural institutions, as well as financial, corporate, and governmental clients.

Palantir Technologies designs database software for the Central Intelligence Agency and a financial services company. It started offering products under PALANTIR in 2005. It is a small company but it purchases the word “palantir” from Google’s AdWords service and outranks Palantir.net in Google search engine results.

Palantir.net moved for a preliminary injunction enjoining Palantir Technologies from using PALANTIR in advertising. In imposing a preliminary injunction, the court required Palantir Technologies to place on all of its Web sites, including its blog, a “prominent disclaimer that advises viewers that it is different from Palantir.net and that advises viewers how to access Palantir.net.” The court also enjoined Palantir Technologies from “engaging in any Internet advertising under the palantir mark, that is, no more Google advertisements.”

The case cite is Palantir Technologies, Inc. v. Palantir.net, Inc., 2008 WL 152339, No. 07-3863 (N.D. Calif. Jan. 15, 2008).

Seattle Trademark Lawyer - Published by Michael Atkins  Palantir.net Gets Preliminary Injunction Against Palantir Technologies

Technorati Tags: brand, marketing, Palantir

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Trademark Registration: Do I have To Hire a Lawyer?

Why can’t I simply file the trademark registration myself?  Do I really need a lawyer?

The answer is simple.  Some people do register their trademarks with the USPTO without legal assistance.  However, you need to be aware of the risks associated with filing a trademark with competent lawyer assistance.  While anyone can fill out an on-line trademark form, there is a lot more to trademark registration than filling in the blanks and paying a filing fee. Here are some things to think about.

Is someone else already using the trademark I want to register? An experienced trademark attorney has the database tools and search query skills to let you know whether you should even spend the time and money investing in a trademark. If someone else is or was using the mark in commerce  before you, even if they have not registered their mark with the trademark office, they have superior trademark rights. Moreover, it is very difficult for a layman to determine whether they have a fanciful, arbitrary, suggestive, descriptive or generic trademark.  Such a categorization is critical when determining how much to invest in a particular trademark.  Keep in mind, a trademark is meant to protect a good or service and distinguish it from the marks of others.  Therefore, a weak trademark will give you weak protection.

Should I register a  "standard character" or "stylized or special form" mark? There are different kinds of trademark registrations.  Knowing which kind of trademark to file is one of the most important trademark decisions you will make.

What international class should I register my trademark?  Selecting an international class that accurately reflects the goods or services you are offering is critical.  When more than one class might apply, you need expert advice to make the correct designation.

What risks am I incurring by registering a trademark? Non-lawyers do not typically have the necessary education, experience and training to identify the liabilities that he or she may be exposing themselves if they register a mark without proper due diligence. 

What happens if the examining attorney tells me I need to amend my trademark registration? The examining attorney almost always raises questions and requires amendments. If you get this part wrong, chances are you will not be successful in registering your proposed mark.

What is someone opposes my registration after the examining attorney has published it for opposition? This starts an administrative proceeding akin to arbitration.  Good legal advice at this juncture is critical.

Hiring a trademark specialist can minimize your trademark risk.   While you can file a trademark without a lawyer or hire a service that will provide self-generated forms for you to fill out on your own, the old maxim “you get what you pay for" is as applicable to trademark registration as it is to other purchases. 

An experienced trademark lawyer has the necessary tools to conduct a trademark availability search,  analyze problematic existing trademarks and the likelihood of a successful registration.  The legal value is delivered by the attorney through background research, analysis and recommendations both before and after registration. 

For help in protecting your valuable intellectual property and trademarks as well as protecting yourself from liability for trademark infringement, contact a trademark attorney today. 

The Life of a USPTO Trademark Application

People often ask why it takes so long for a trademark to be registered with the United States Patent and Trademark Office (USPTO). In order to understand the answer to this question, an individual looking to file a trademark must know what happens between the time of filing and the time of achieving registration.  While the USPTO does provide some answers, they do not provide much.  First things first, an individual, or even better a lawyer on behalf of the individual, files the trademark with USPTO.  Sometime thereafter, usually within a month, the new application is entered into the trademark system.  However, once the trademark is entered into the system, the trademark application must wait until an examiner is assigned to it.  The examining attorney is the individual who reviews the trademark filing, requests additional information, and ultimately approves the trademark for registration or denies the trademark for a variety of possible reasons.  So, not only does it take several months to be assigned an examining attorney, but it also may take time for that examining attorney to review the trademark and notify the applicant of next steps. 

These next steps may include the requirement for the applicant to respond to an outgoing office action, provide additional information, or identify reasons as to why the trademark application should not be rejected.  If an outgoing office action is issued, a response is usually due within six months.  Therefore, the earlier you can respond, the more likely it is the earlier you will get a final decision.  Usually there is more than one response required, but as soon as the examining attorney approves the trademark application for publication, which is likely between six and twelve months after the first filing, the rest of the process moves along at a set pace.  The trademark applicant is provided a notice of publication, and within about a month, the trademark is published for opposition. The mark is then published for opposition for 30 days, and may be extended if someone requests to extend the time to oppose.  If an opposition is received, this time period may be extended longer.  Usually, however, within about two months after the time the trademark is published for opposition, the trademark will be registered on the principal register.  All in all, the process usually takes anywhere between ten and eighteen months depending on how many outgoing office actions are necessary, how long it takes to respond to those actions, and whether or not there is an opposition or a request to extend the time to oppose to the trademark.  Therefore, it is critical that you contact an attorney as soon as you can to get the trademark registration process started. 

The Trademark-Domain Connection: Understanding How to Pick a Trademark Based On Domain Name Availability

As soon as your company has selected its new trademark, your company should work to register the respective domain name in at least one of the top-level domains (.com or .info). This is because it will allow your customers to contact your company with nothing more than the trademark that you are marketing.

Registering the domain name can be done through many different registrars, but it is important to find a reputable one, and be fully aware of the rights you hold under the service agreement for that company. There are important questions that must be asked and answered if you intend on maintaining the domain name for as long as your company is around, and to enter into an agreement without knowing your rights to sale and transfer is to seriously inhibit your options in the future.

Contact an attorney today for a free consultation on your rights under the many service agreements for different registrars and enhancing and protecting your trademark on the internet.

Choosing a Trademark

Since a trademark is the method through which consumers will remember and choose your product, the selection of the brand you would like to turn into a trademark is one that should be done carefully. Your selection of a trademark is one of the most important decisions that will be made in a brand's lifetime, and so it should not be a decision made in haste, since it is the first step in building the brand recognition that will drive your product and company.

While many companies try to select a trademark that describes the product or service in some way, shape, or form, the opposite is what should be done. A mark that describes the product is generally a weak one because it is going to fail at distinguishing that product or service from those offered by competitors.

A strong mark is one that is distinctive and sets the product or service apart from others. A mark like this will also eliminate any doubt on the part of the consumer as to the source of the product or service.

How Long Does it Take to Register a Trademark?

It is difficult to predict exactly how long it will take an application to mature into a registration, because there are so many factors that can affect the process. Generally, an applicant will receive a filing receipt approximately three weeks after filing, which will include the serial number of the application. All future correspondence with the USPTO must include this serial number. You should receive a response from the Office within six to seven months from filing the application. However, 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 which may arise in the examination of the application.

Current status information may be obtained through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199. Applicants should check on the status of their pending applications every six months.

Checking the Status of a Pending Trademark Application

Once you receive a filing receipt containing the serial number of your application, you may check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database at http://tarr.uspto.gov/ or by calling the Trademark Assistance Center at 571-272-9250 or 800-786-9199.