FEDERAL TRADEMARK LAW

Before adopting or seeking to register a trademark it is imperative to check to see if the mark, or a similar mark has been adopted and is in use by another party.  Many people do not conduct a search prior to filing an application.  This often results in their receiving a refusal to register the mark, or being sued for infringement.  

Also, many people believe that by simply adding or changing a couple of letters that their mark is different.  Although it is true that the marks are different, problems may still arise if the mark for which registration is sought is similar to an already existing registration.  (See:  In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973)).  The question of what is considered similar can often be difficult to determine.  Here is where an experienced trademark counsel can add benefit.   

Exposure to difficulties can be avoided or reduced by conducting a search of trademark records.  Although it is never possible to say with 100% certainty whether anyone will object to your adoption and use of a mark, we can assist in identifying potential risks.

In order to obtain a registration of a mark with the United States Patent and Trademark Office, the mark must be in use in commerce that Congress can regulate, for example, in interstate commerce or in commerce between the United States and a foreign country.  

A federal trademark registration allows the owner to prevent use and registration of a similar mark on related goods and services throughout the United States, even if the mark is not used throughout the United States.  For example, if a company is using the mark OLD COLONIAL FRAMING (this does not refer to any particular company) on custom framing services in the northeast, the owner of the mark could register the mark with the Patent and Trademark Office.  Generally, the owner could then use that registration to prevent others from using that mark in other areas of the country.  As is the case with many rules, there are exceptions to this rule and actual rights may be determined by other factors. 

Although a mark must be in use in commerce before it can be registered (unless the registration is being based on a foreign registration.  More on that below.), it is possible to file an application for registration even though the mark is in use.  This is called the "intent-to-use" application.  

The intent-to-use application allows the person who wants to use a mark in commerce to "reserve" the mark with the Patent and Trademark Office.  However, the mark will not register until such time as the owner submits proof to the Patent and Trademark Office that the mark is in use in commerce. Note: There are extra costs associated with this type of application and there are deadlines for submitting extensions and the proof of use.  

With over 30 years of trademark practice, we know the Patent and Trademark Office rules and can provide experienced support and guidance in obtaining a trademark registration.  

Our fees are reasonable and a good value in relation to the experience that we bring. 

Once a mark has been registered with the Patent and Trademark Office, the owner of a federal trademark registration can prevent others from registering and using a similar mark used on a related goods.  The question is always, what is considered "similar" and what is considered "related".  

Often, when the Patent and Trademark Office makes a determination that a mark is capable of being registered, the owner of another mark may disagree with that determination.  In that case, the owner of the first registered mark has the option to oppose or seek cancellation of a mark. 

We provide support and guidance, not only in determining what is similar and related, but also in enforcing your rights before the Patent and Trademark Office Trial and Appeal Board and before federal district courts. 

It is important to remember:  There is no "trademark police force." You are responsible for protecting your trademark rights!