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NJ-Trademark-LawyerWhat is a Trademark?

You can increase your productivity by using the many faceted services offered by professional registered agents. These include, but are not limited to, accessing your accounts and documents online, as well as filing state required annual documentation of LLCs and corporations.

In order to be eligible for trademark protection, a word or phrase must be “distinctive” — unique enough to help customers recognize a particular product in the marketplace — rather than generic, like “The Coffee House.” A mark may either be inherently distinctive (the mark is unusual in and of itself, such as Diesel fashions) or may become distinctive over time because customers come to associate the mark with the product or service (for example, McDonald’s restaurants).

How do I know if I need trademark or copyright protection?

The choice between registering a trademark and a copyright is not always a clear one. Trademark and copyright registration are both means of protecting your intellectual property rights. There are, however, important differences between trademark and copyright protection.

Copyrights are a form of protection for the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other creative works.

Copyright does not cover intellectual property such as titles, names, short phrases, and slogans; familiar symbols or designs; or mere variations of typographic ornamentation, lettering, or coloring. This type of intangible property is often more appropriately protected by a trademark. Think of memorable advertising slogans you have heard. Chances are these slogans are protected by a trademark of some sort, while they are unlikely to qualify for copyright protection.

A trademark protects a word, phrase, symbol or design (or a combination of these), that identifies and distinguishes the goods or services of one person or company from those of others.

Some things, such as more complex logos, may qualify for both trademark and copyright protection. This is because the amount of original authorship in a logo can vary greatly. Most highly recognizable logos are extremely simple objects, such as the Nike “swoosh,” and would not qualify for copyright protection. However, a more ornate logo with a great deal of creative authorship might qualify for both trademark and copyright protection.

To protect the name of your company, your newly designed name, logo or a catchphrase, a trademark is probably what you need. To protect your latest painting, the next great American novel or even a brilliantly choreographed dance sequence, a copyright is probably the best route for you.

Why should I get a Trademark?

Trademarks are important business tools because they allow companies to establish their products reputation without having to worry that an inferior product will diminish their reputation or profit by deceiving the consumer. A company name or logo can become a company’s most valuable asset. Registering a trademark provides constructive notice nationwide of the trademark owner’s claim and prevents others from adopting your name or design. A trademark registration can also be used as a basis for obtaining registration in foreign countries. Your trademark registration may be filed with the US. Customs Service to prevent importation of infringing foreign goods.

Once the United States Patent and Trademark office approves your registration, you can use ®.

What are the benefits of a registered trademark?

Many people assume they can protect their trademark simply by using the mark in commerce. It is true that you are not required to register a trademark to achieve some level of protection and that one establishes common law rights simply by using a mark in commerce.

However, having a federally registered trademark on the USPTO’s principal register provides several advantages:

  • Serves as constructive notice to the public of the registrant’s ownership of the trademark
  • Establishes a legal presumption of your ownership of the mark and your exclusive right to use the trademark nationwide on or in connection with the goods and/or services listed in the registration
  • Allows the registrant to bring an action concerning the trademark in federal court US. registration can be used as a basis to obtain registration in foreign countries Can be filed with US. Customs to prevent the importation of infringing foreign goods Federal registration also allows you to use the ® (the “Circle-R”) symbol. Any time you claim rights in a trademark, you may use the TM (trademark) or SM (service mark) symbol to alert the public to your claim, regardless of whether you have filed an application with the USPTO. However, you can only use the federal registration symbol ® after the USPTO has actually registered the trademark, not without an application or while an application is pending. Following registration, you can only use the ® symbol on or in connection with the goods and/or services listed in the federal trademark registration.

Is a federal trademark registration valid outside the United States?

Not formally. Certain countries, however, do recognize a US. registration as a basis for registering the trademark in those countries. Many countries maintain a register of trademarks
and some will act to protect the holders of US. trademarks from activity that occurs abroad which would, if transacted in the US., infringe upon the owner’s trademark.

Furthermore, a suit in US. Federal Court can be brought by a US. trademark owner against another US. citizen for exportation of goods wholly for sale abroad that would confuse foreign consumers as to whether the goods were those of the trademark owner.

Finally, the holders of “famous” trademarks may be able to block foreign registration of confusing (same or similar) trademarks abroad (e.g., someone other than Disney registering Mickey Mouse in Iran). Each country’s laws about registration should be consulted.

How long does it take for a trademark to be registered?

It is hard to predict how long it will take for an application to mature into a registration since many factors can affect the process. Generally, an applicant will receive a filing receipt almost instantly after filing. In addition, you should receive an initial response from the US Patent and Trademark Office (USPTO) within approximately three months of filing the application.

However, the total application processing time may be anywhere from 6 months to a year, or even longer. Most applications are processed completely in slightly less than one year. Overall processing time depends on your basis for filing and any legal issues that arise in the examination process.

How long does a trademark registration last?

For a trademark registration to remain valid, a Declaration of Use must be filed: (1) between the fifth and sixth year following registration and (2) within the year before the end of every 10-year period after the date of registration.

Assuming that a Declaration of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term. Registrations granted on or after November 16, 1989 have a 10-year term. Trademarks can be renewed for additional 10-year terms. There is no limit to the number of times a trademark can be renewed, as long as use of the mark by its owner continues.

Can the ownership of a trademark be assigned or transferred from one person or entity to another?

Yes. All trademarks can be sold or assigned. The “goodwill” of any business associated with that trademark must be included in any such transfer. Even trademarks that are unregistered or are the subject of pending applications can be sold or assigned. Written assignments of registered trademarks are recommended, and may be recorded with the USPTO for a fee.

What kind of review will the USPTO conduct after I file my trademark application?

When you file a trademark application, your proposed trademark will go through two main types of review. First, the USPTO will review your application to determine whether or not you have met the minimum filing requirements. Next, the application is forwarded to an examining attorney. (Note: this transition can take several months.)

The examining attorney will then review the application to determine whether it complies with all applicable rules and statutes and includes all required fees. A complete examination includes a search for conflicting trademarks (both registered and pending) as well as a review of the written application, drawing and any specimen. If the examining attorney decides, based on your application, that your trademark should not be registered, he or she will send you a letter, called an Office Action. This letter explains the reasons for the refusal and any technical or procedural problems with your application. Most often, you will have a chance to cure any deficiency in your application, other than a conflict with another trademark.

If minor corrections are all that is required for filing the trademark, the examining attorney may contact you by phone or email. If the examining attorney sends a written Office Action, you have six months from that letter’s mailing date to respond with corrections or the application will be declared abandoned.

If your response to an Office Action does not overcome all of the examining attorney’s objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, you can appeal to the Trademark Trial and Appeal Board (TTAB) for an additional fee. This board is an administrative tribunal within the USPTO.

Once your trademark application passes the examining attorney’s review, your mark will be published in the Official Gazette. This gives the public an opportunity to object to the mark if they believe they will be damaged by that registration. If no objections are filed within 30 days of publication, the mark will typically be registered in 3-12 months. At that point, you are an official holder of a federally registered US. trademark.

Will the examining attorney search for conflicting trademarks?

Yes. The examining attorney will search the USPTO records to see if a conflict exists between the trademark in your application and another trademark that is live and registered with or pending with the USPTO. In doing this, he or she will also look for other trademarks that might be confused with yours. The USPTO does not provide preliminary searches for conflicting trademarks before an application is filed.

The principal factors the USPTO examining attorney uses to determine if there would be a chance of confusion include:

  • The similarity of the marks
  • The commercial relationship between the goods and/or services listed in the application (what “class” or “classes” the trademarks are in and the goods and/or services to which they are applied)
  • For a conflict to be found, your trademark does not have to be identical to another, and the goods and/or services do not have to be the same. It may be enough that the trademarks are similar and the goods and/or services related.

If a conflict exists between your proposed trademark and a registered trademark, the examining attorney will refuse registration on the ground of likelihood of confusion. If a conflict exists between your trademark and one in a pending application that was filed first, the examining attorney will notify you of the potential conflict and may suspend action on your application, pending the outcome of the conflicting application. If the first application registers, the examining attorney will then refuse your registration on the ground of likelihood of confusion.

What are some other reasons the USPTO might refuse my trademark?

In addition to likelihood of confusion (discussed above), an examining attorney will refuse registration if the trademark is:

– Merely descriptive or deceptively mis-descriptive of the goods/services

– Primarily geographically descriptive or geographically deceptive

– Mostly a surname

– Solely Ornamental

How do I register my company name?

Registration of your company name as a trademark is the same for USPTO purposes as all other trademark registrations.

However, before you register your company name, you want to determine if your company name is already in use in your state. Your state will generally not let you use a name that is too similar to an already registered business. For this reason, whenever you consider registering your company name as a trademark, you want to research your state’s database for registered corporations, LLCs and partnerships with similar names.

What is a service mark?

A service mark is simply a type of trademark. In fact, the words “trademark” and “mark” often refer to both trademarks and service marks. Trademarks help the government and consumers distinguish manufacturers of goods or products from one another. A service mark helps the government and consumers distinguish service providers from one another. Common law service marks are accompanied by SM as opposed to the TM of common law trademarks. Both goods and services with federally registered trademarks use an ® symbol.

What are the differences between my business filings and my trademark rights?

When setting up and maintaining a business, a business owner will need to accomplish many tasks, many of which involve filings with the state or states in which he or she wishes to do or is doing business. These filings include things like registering your business name, setting up a d/b/a, getting an EIN, etc. It is important that business owners understand that NONE of these things give them ANY trademark rights, and especially not federal trademark rights. ONLY use of a trademark to sell or advertise goods or services affords a business trademark rights, and ONLY federal trademark registration carries the benefits of federal trademark registration.

On the flip side, simply registering your trademark with the USPTO does not necessarily mean that someone has not already registered to do business under such a name with a state, since the USPTO does not search state business filings when determining whether your trademark is registrable. The USPTO also does not search to see whether someone else may already be using the name you are seeking to register as a trademark.

What is a trademark specimen and how does it relate to goods and services?

For your trademark to be federally registered, you are required to provide proof (called a “specimen”) to the US. Patent and Trademark Office (USPTO). The specimen you provide should be an actual example that clearly shows how the trademark is being used in connection with the goods and/or services you listed in your application.

Products (“Goods”) Specimens

If you are providing products, acceptable specimens include photographs of packaging labels, clothing tags or labels on containers that prominently display your trademark.

Invoices, order forms, receipts, brochures, catalogs, press releases, business cards, and stationery are generally NOT acceptable specimens for products.

Services Specimens

If you are providing services, acceptable specimens include a sign, brochure, advertisement, business card, stationary or website prominently displaying your trademark in connection with the services you’ve listed in your application. The specimen must include a reference to the service, not just the trademark by itself.

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