Trademark Representation in New York, Connecticut, and Nationwide
Experienced Trademark Attorneys Can Make a Difference
At Trademark Law Esq., in Mamaroneck, our attorneys bring decades of experience to individuals and businesses in Westchester County, Stamford, and the surrounding communities in New York and Connecticut and the surrounding communities including all the boroughs of New York City. We handle a broad range of intellectual property matters, from trademark registrations and trademark litigation to licensing matters and copyrights.
The hallmark of our practice is our commitment to personal service and attention. We treat every client as if they were our only client, dedicating our full attention to every detail of your case. We also provide prompt, thoughtful and thorough responses to all your questions.
The information below is designed to help you use the trademark laws and process to more effectively protect the good will of your business. To set up an appointment with our attorneys, contact our office by e-mail or call us at 914-381-2728.
Register Your Mark
There are multiple benefits to federally registering your Mark. You will:
- Receive nationwide priority to use your Mark in connection with your goods or services.
- Have the right to sue in federal court.
- Increase the value of your business by protecting a valuable business asset.
- Put competitors on notice of your trademark rights.
- Acquire the right to use the ® symbol in connection with your goods or services.
- After five consecutive years of continued use of the Mark in commerce, have incontestable rights.
- Have a registration that is a deterrent to cybersquatting.
- Reserve your rights to expand your business.
- Gain the option of using your U.S. registration as a basis for foreign registrations.
- Be able to use your trademark registration to prevent the importation of infringing goods.
To learn more, see our page on why you should register your trademark.
Select a Mark with Your Budget in Mind
Your budget can affect the Mark you select. The strongest trademarks and the ones afforded the broadest protection are invented/coined marks (examples are ROLEX® and KODAK®). However, sometimes you have to spend more advertising and marketing dollars to build brand recognition with your product or service with an invented Mark. The same theory applies to arbitrary marks (common words applied in an unfamiliar way). These trademarks are considered to be strong and are afforded extensive protection as well. An example of an arbitrary mark is APPLE® for computers.
If you are limited in your advertising and marketing budget, you may want to consider selecting a suggestive mark. This type of Mark creates a memorable impression or association with the product or service features, by suggesting something about the characteristics, but you must use your imagination to make a determination as to the nature of the goods or services. A benefit to choosing this type of Mark is that you spend less on advertising and marketing because the Mark will provide hints to the purpose of the product or service. The drawback of course is that the Mark will not be afforded as much protection as a coined trademark or an arbitrary trademark. For more, see trademark basics.
Protect Your Business Against Litigation
Before adopting and investing (time and money) in a new Mark, we highly recommend conducting a preliminary and a full search to determine whether anyone else has prior rights in a similar or identical Mark. A trademark search is the primary means of assessing risk. The failure to adequately search before investing in a new Mark can result in extraordinary trouble and expense. Failing to do your due diligence exposes your business to unnecessary litigation. A plaintiff who proves trademark infringement can seek disgorgement of the infringer's profits, damages caused by the infringement (which can be trebled), the costs of the action, and in certain cases, reasonable attorney fees. If infringement is found, a court can order affirmative relief, such as the recall and destruction of goods bearing the infringing mark.
Also keeping records of your use of the Mark in connection with the product or service will protect your business should you need to prevent a third party infringer or should a third party accuse you of trademark infringement. Maintain copies of advertising, brochures, Web site materials, customer invoices, etc.
Avoid Commonly Used or Descriptive Terms
Avoid using terms in the trademark that are widely used in your industry. You may either have to make a disclaimer that you have no rights to the word apart from the Mark as shown or you will be afforded a narrow scope of protection. In addition, it will be extremely difficult to police these types of Marks.
Many entrepreneurs are under the misconception that marks describing the characteristics, qualities, or purpose of a product or service are strong marks. This is not true. In fact, descriptive marks are weak marks that the USPTO will refuse to register unless they have developed secondary meaning (this occurs when the consumer learns to associate the Mark with a single source). It usually takes several years to develop secondary meaning.
Avoid Signs of Trademark Conflicts
Avoid selecting or using a Mark where there are signs of conflict. Entrepreneurs rarely have a portion of their budget reserved for competitive challenges or litigation. Moreover, investors will stay clear of any company that may have to face a trademark conflict or litigation.
You Can File a Trademark Application Before You Use Your Mark in Commerce
You need not wait until you use a trademark in connection with your goods or services in commerce before filing an application at the USPTO. You may file on an Intent-to-Use basis. However, the intent must be bona fide and you must use the trademark in commerce in connection with your goods or services before the USPTO will issue a Certificate of Registration.
Trademark Applications are not as Simple as They Look
Trademark applications look simple to complete, but in reality are quite technical. An incorrect response can cause the Examining Attorney to refuse to register the proposed Mark.
Trademarks Should Be Used as Adjectives and Not Nouns or Verbs
The manner in which a trademark is used can negatively affect the scope of protection it is afforded. Marks should be used as adjectives, not nouns or verbs. Generally, use of the Mark should be followed by the common descriptive term for the goods or services. For example, you should say "please pass me a KLEENEX® tissue" and NOT "please pass me a KLEENEX®".
Eight Factors to Consider When Determining Infringement
When determining whether there is a likelihood of confusion as to whether the ordinary buyer (one that is not looking for subtle differences) would believe that two products or services originated from the same source, consider:
1) Similarity of the conflicting trademarks (the marks' look, phonetic similarities, and underlying meanings)
2) Relatedness or proximity of the two companies' products or services
3) Strength of the senior user's mark
4) Marketing channels used
5) Degree of care likely to be exercised by the consumer when purchasing the goods or services
6) The "second comers" intent when selecting the trademark
7) Evidence of actual confusion
8) Likelihood of expansion in product lines
Contact the Lawyers at Trademark Law Esq.
If you have a trademark or intellectual property concern in Westchester County, Stamford or the surrounding communities in New York and Connecticut, contact our office by e-mail or call us at 914-381-2728 to set up an appointment.