Trademarks

A full trademark clearance search should be obtained prior to using the mark. It is important to determine both whether the mark can actually serve as your trademark, and whether use of the mark would potentially infringe the trademark rights of anyone else. If the results of the search are positive, an application to register the mark may be filed. Trademark registration on the Principal Register provides a presumption of the right to use the mark in connection with your goods or services throughout the United States. An application for federal trademark registration can be filed based on a bona fide intention to use the mark in connection with your goods and services. However, you will need to actually use your mark in connection with your goods or services in order to complete the registration process. Furthermore, actual trademark rights result from actual use of the mark in connection with your goods and services, not from registration of the mark.

Yes. Your use of your trademark provides the right to use the trademark within the current geographic area in which it is currently used. However, it will not stop someone else from filing an application to register a confusingly similar trademark. If this application results in registration, they will have a presumption of the right to use the name throughout the entire country, and you will lose the right to expand your business under your current trademark without initiating an opposition or cancellation proceeding against the owner of the other trademark. Early federal registration provides the best, least expensive protection for your trademark.

No. Business name or domain name registration is granted unless there is an exact match to the proposed name. The standard for trademark infringement is likelihood of confusion, which requires a much broader search to ensure that you may use a particular name without risk of liability.

It depends on the strength of the other trademark and the degree to which your proposed trademark is different, but you probably cannot safely use such a trademark. The standard for trademark infringement is likelihood of confusion. If use of the modified name would still cause a consumer to believe that your product or service is affiliated with or endorsed by the other trademark holder, you would be liable for trademark infringement. A full clearance search is always recommended before beginning use of any trademark.

If your logo serves to identify a source of goods or services, then trademark protection is the most critical form of protection. However, your logo may also be appropriate subject matter for copyright protection, and both forms of protection should be considered.

The specific manner in which you intend to use the logo should be reviewed. In many cases the logo will be viewed as “ornamentation” rather than as an identifier of a source of goods or services. Depending on your specific situation, advice can be provided about using the logo in a manner that serves as an identifier of the source of the clothing as well as ornamentation on the clothing.

Trademark protection can be extended to foreign countries through the Madrid Protocol. Although the laws of each country vary, in most cases actual use of the trademark within each country in which trademark registration is sought will be necessary to obtain registration in that country, or to defend a registration in that country.  Read more about international trademark registration here.

We can begin by sending a cease-and-desist letter, explaining and demonstrating your rights to the trademark, and demanding that they stop using the confusingly similar trademark. Sometimes this is enough to persuade someone to pick a different name. If not, then we can file a suit for trademark infringement, with the goal of obtaining monetary damages and an injunction. Once they are aware of the infringement accusation, if they fail to take reasonable action to ensure that they do not infringe, they risk liability for willful infringement, subjecting them to potentially enhanced monetary damages and attorney fees.

You must act promptly to ensure that you are not infringing the trademark. The rights of the accuser to their trademark, as well as your rights to your trademark, must be investigated to determine who has superior rights, and in which geographic region those rights are superior. The similarity of the trademarks, the strength of the trademarks, the goods or services sold under the trademarks, and other factors must be reviewed to determine whether a likelihood of confusion exists. If there is no likelihood of confusion or if you have superior rights in the relevant geographic region, we can inform the accuser of this fact, and you can continue your activities with relative safety (but no guarantee that you will not be sued). If infringement appears likely, then steps can be taken to mitigate your liability for trademark infringement, including discontinuing use of the infringing trademark, negotiating a coexistence agreement, etc.

I do not recommend doing so. Your intellectual property is a critical asset that needs the best possible protection. Trademark applications may seem simple, but the simplicity is deceiving. Trademark rights accrue from use of the mark, not from registration. Therefore, ensuring that your mark does not infringe someone else's rights requires consideration of marks found in a wide variety of sources, far beyond the federal and state registration records. Proper counseling in the selection of marks can avoid not only potential liability, but also wasted time and resources pursuing registrations for marks for which trademark protection is unavailable. Doing a job properly the first time is always easier and less costly than trying to repair mistakes later, and also ensures that rights will not be lost as a result of mistakes or omissions. Please contact me to discuss your needs before taking action yourself.

These document preparation services claim to provide services at lower cost than a typical law firm. However, read the description of what you actually get carefully – the total cost estimate may be lower, but you might not get much for the amount you spend. Although a trademark application may appear simple, there are numerous issues that may affect your ability to obtain registration and/or right to use a given name or mark, and it is critical to spot these issues early in the application process. For more information, read the opinion of the Pennsylvania Bar Association’s Unauthorized Practice of Law Committee here. Consider the value of the intellectual property you wish to protect before deciding who to retain to protect these valuable assets.