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Whether you own a restaurant, retail store, startup, or any other type of business in New York City, the competition is fierce, and it’s crucial to ensure your most valuable asset is safeguarded. Failure to register your trademark with the United States Patent and Trademark Office can expose the intellectual property that represents your brand to misuse, theft, and reputational harm. After putting so much time, effort, and capital into growing your business, it is vital to take measures to protect the mark that represents it.
At the Trademark Lawyer Law Firm, PLLC we understand how hard you’ve worked to build your business and are committed to helping you shield the mark that makes it unique. With over 6,000 registered trademarks to our name, we assist New York City business owners in various industries with filing trademark applications and overcoming any obstacles that may arise during the registration process. With a strategic focus on helping our clients achieve their entrepreneurial goals, we also work with them to maintain and monitor their trademarks — and skillfully litigate any disputes when necessary.
The first step in filing a trademark application is conducting a thorough trademark search to ensure the mark you wish to register isn’t already being used by another company. These searches are often complex and time-consuming. However, knowing whether your mark (or a similar one) has been registered with the USPTO is critical to avoiding a cease and desist letter or potential infringement lawsuit.
While an initial knockout search may uncover any obvious problems with registering your mark, an in-depth clearance search by a trademark attorney can improve your chances of successful registration. Our trademark attorneys have extensive experience in performing detailed trademark clearance searches. We will work with you to create a customized strategy if we recognize any risks and implement a solution to meet your goals.
Securing ownership of your trademark is one of the most important things you can do to protect your business and bottom line. While nearly anything that represents your brand can be trademarked — including your name, slogan, symbol, or design — the USPTO imposes specific legal requirements that must be complied with. It is imperative to ensure your trademark application is thorough and filed correctly to avoid registration refusals or delays in the registration process.
Significantly, a trademark must be used in commerce before it can be granted federal trademark registration. But with so much competition vying for the loyalty of consumers, you should safeguard your mark as early as possible. This can be done by filing an Intent to Use application which serves as a placeholder until the mark is actually being used in the marketplace.
At the Trademark Lawyer Law Firm, we have assisted hundreds of New York trademark owners with filing and registration matters. Our qualified trademark attorneys will carefully assess your mark prior to filing with the USPTO and evaluate whether registration is likely to be successful the first time you file. In the event we identify any issues with your mark, or it conflicts with one that is already registered, we will work with you to implement an effective solution.
The Trademark Lawyer Law Firm, PLLC provides NYC business owners, entrepreneurs, and startups in New York City with a full range of trademark services at cost-effective rates. Contact us today to schedule a free 15-minute consultation with a trademark search attorney.
It’s not uncommon for the USPTO to issue an office action after a trademark application has been filed. This is not always a rejection of your mark — a non final office action simply serves as a notification that there is a problem with your application which must be corrected. However, you must address the issues set forth in an office action in a timely manner to avoid delay or denial of your application.
Some common issues with trademark applications that result in office actions include the following:
There are several different types of office actions issued by the USPTO and it is essential to respond accordingly. Whether there has been a substantive or administrative deficiency identified in your trademark application, a knowledgeable trademark attorney serving New York City can help you correct the issues, avoid pitfalls, and move forward. The attorneys at the Trademark Lawyer Law Firm are proficient in drafting meticulous office action responses to help ensure your mark will be registered the first time you file your application.
Even if you have taken all the necessary measures to fully protect your brand, trademark disputes can still occur. Such cases may involve claims of infringement, dilution, unfair competition, counterfeiting, or licensing issues. In the event a conflict cannot be settled outside of the courtroom, it may be necessary to proceed to litigation.
Your mark is not only how consumers recognize your brand — it’s how they know they can depend on the quality of your goods or services. If your brand and bottom line are threatened, protecting it should be your first priority. At the Trademark Lawyer Law Firm, we litigate a wide range of trademark disputes and zealously advocate for each of our clients to ensure the best possible outcome in their cases.
Protecting the mark that makes your brand stand out is paramount to your success. A diligent trademark attorney can help ensure that you have every safeguard in place to shield your mark from wrongdoers who seek to make a profit off your hard work — and your company’s goodwill. The Trademark Lawyer Law Firm, PLLC provides NYC business owners, entrepreneurs, and startups in New York City with a full range of trademark services at cost-effective rates. Contact us today to schedule a free 15-minute consultation with a trademark search attorney.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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