New York Trademark Infringement Lawyers
Scope of Protection • Litigation for Infringement • Domain Name Disputes
In the U.S., trademark rights are based on use. Therefore, the most important rule to remember is that you must use your trademark in connection with your goods or services or you may lose your rights.
When you need legal advice on your rights to a Mark, or you need trial court representation to defend your rights against infringement, contact Trademark Law Esq. Our trademark lawyers have decades of experience in every area of trademark and copyright law, from applying for a trademark to defense or prosecution in court.
Trademark infringement knows no state or national borders, and neither does our law firm. We prosecute trademark applications in New York, Connecticut, across the U.S. and internationally. We have global connections with legal associates working in a number of key foreign countries. Our attorneys act as your liaison with the foreign associates, managing and supervising your case.
Are all trademarks extended the same scope of protection?
The amount of protection given to a trademark depends on the strength or weakness of a Mark. Some Marks will be entitled to greater protection than others. Trademarks can be divided into five basic categories:
- Coined Marks: These are Marks consisting of invented words or phrases (completely made up) without a dictionary meaning. Examples are KODAK®, ROLEX®, and EXXON®. Coined Marks are the strongest types of Marks. A trademark owner who selects a coined Mark will have a distinct advantage in the marketplace.
- Arbitrary Marks: These Marks are comprised of common words, but applied in an unfamiliar way. You will find a meaning in the dictionary for these words or terms but they will not relate to the trademark owner's goods or services. Examples are IVORY® for soap, APPLE® for computers, CAMELS® for cigarettes. These types of Marks are inherently distinctive and very strong.
- Suggestive Marks: These Marks suggest something about the goods or services but you will need to use your imagination to make a determination as to the nature of the goods or service. Suggestive Marks are afforded less protection than coined or arbitrary Marks. Examples include PLAYBOY®, CITIBANK®, and UNCOLA®.
- Descriptive Marks: These Marks have words or terms that describe some characteristic, quality, purpose, or property of a product or service. Descriptive Marks can be registered, but the United States Patent and Trademark Office will usually require that they first develop secondary meaning. This occurs when the consumer learns to associate the Mark with a single source. Hence, the primary meaning is the ordinary English language meaning conveyed by the term. The secondary meaning (or distinctiveness) is the consumer's learned association. Secondary meaning is established by some period of use, sales, or advertising. Examples are QUIK PRINT® for fast printing and copying services, and BABY BRIE® for mini-size brie cheeses. These are not considered strong marks.
- Generic Terms: These consist of the common or generic word or words for goods or services. These terms cannot serve as a trademark, and thus are not afforded any protection. An example is TABLE for tables.
What do I have to do to maintain my federal trademark registration?
Rights in a federal registration can last indefinitely if the owner continues to use the Mark and files the necessary documentation in the United States Patent and Trademark Office at the appropriate times. The current term of a registered Mark is ten years from the date of registration. Registrations and renewal certificates issued prior to November 16, 1989 are for a term of twenty years.
We will handle filing the requisite Affidavits of Use or Excusable Nonuse, Affidavits of Incontestability, Applications for Renewals, and any other documentation necessary for maintaining your federal trademark registration.
After acquiring a federal trademark registration, if I discover a competitor using a similar Mark, what can be done?
We would evaluate the use of the potentially infringing trademark. If we determine that there is a likelihood of confusion on the part of the consumer, we will write a Cease and Desist letter to the infringing party. We would also write a Cease and Desist letter if we believe there is a counterfeit situation, a case of dilution, unfair competition, or other infringement of your rights.
We would try and resolve the matter in the most cost-effective way possible by attempting to negotiate a settlement. However, if the infringement continues and if it is clear that the matter cannot be resolved outside of court, we will advise you as to your litigation options, such as an injunction to bar future infringement or the availability of treble damages and reasonable attorney fees.
Under what circumstances would I file a domain name dispute?
You would file a complaint with ICANN (Internet Corporation for Assigned Names and Numbers) if you have rights in a trademark and a third party (in bad faith) uses your trademark as part of its domain name. You can also bring a complaint against a third party for using a domain name that is confusingly similar to your Mark without legitimate interests in the Mark.
The costs for filing for arbitration in a domain name dispute are substantially less than the costs of taking a case to court. An ICANN arbitration allows you to receive a decision in a short period of time (sometimes as few as 60 days).
Contact Trademark Law Esq.
To set up an appointment, contact Trademark Law Esq or call us at 914-381-2728. We offer experienced trademark assistance to clients in Stamford,Connecticut, Westcheter County, New York, the surrounding communities including all the boroughs of New York City, and nationwide.