Archive for May, 2009

How long does the U.S. trademark registration process take?

Wednesday, May 27th, 2009

Many of my clients are surprised to learn that the U.S. trademark registration process can take from six to eighteen months to be completed.  In today’s fast paced economy many of my clients want to know if there is a way to expedite the US trademark registration process.

Unfortunately there are no expedited fees that can be paid to make the U.S. trademark registration process move any quicker.  The fact is that every U.S. trademark application must be reviewed by a trademark examining attorney with the United States Patent and Trademark Office (USPTO).  Because of the large volume of trademark applications received by the USPTO it generally takes four months just for the US trademark application to reach a US trademark examining attorney.  Once the examining attorney reviews the U.S. trademark application, if he/she does not have any problems with the proposed U.S. trademark registration, then the trademark application must go for a thirty day period of public comment.  It is only after this period of public comment closes can the U.S. trademark registration be issued.

Therefore, a successful U.S. trademark registration can be accomplished in as little as six months, however, many U.S. trademark applications require additional steps.  For example, the trademark examining attorney may require additional clarifications on the application.  Or, the attempted US trademark registration may be rejected on one of many grounds.  A trademark rejection may always be appealed, however, this adds multiple months to the process.

To ensure that a client’s US trademark registration attempt avoids these pitfalls, I generally encourage clients to complete a comprehensive trademark search to ensure that the trademark application will not be rejected based on a pre-existing similar trademark.  In addition, I highly recommend clients follow my advice on the completion of their U.S. trademark application to ensure the process goes as smoothly as possible.  At the end of the day, the US trademark registration process affords clients great protection on their trademarks, it just requires the patience of Job.

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Can a non-U.S. company obtain a U.S. Trademark?

Monday, May 18th, 2009

I get a lot of inquiries from international clients wondering if they can file a U.S. trademark even though they are not a U.S. based company.  The answer is yes.  The United States Patent and Trademark Office does not have any special requirements for a non-U.S. company to register a U.S. trademark.

This is especially welcome news to international clients who are attempting to register a US trademark.  It allows the protection of valuable US trademarks without any cumbersome requirements (except of course proving that you are using the US trademark in the United States to sell a product or service).

However, it should be noted that international clients who are attempting to register a United States trademark should consult a U.S. attorney before filing a U.S. trademark.  This is because conducting a US trademark search and properly completing a US trademark application are tasks that only an attorney based in the United States can properly complete.

I have represented many clients from overseas in protecting their U.S. trademarks.  It is extremely important to conduct a US trademark search and complete and file a US trademark application prior to commencing business in the United States.  Many international companies are surprised to learn that a similar U.S. trademark may already exist and bar the use of the trademark they use in their home country here in the United States.  However, with proper planning expensive lawsuits can be avoided and clients can properly protect their trademarks in the United States.

If you are an international business looking to register a U.S. trademark please feel free to call Gerben Law Firm to find out how we can assist you in properly protecting your U.S. trademark.

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Should I Trademark My Name?

Thursday, May 14th, 2009

Many clients call me with a simple question: “Should I trademark my name?”  The answer is, almost all of the time, “yes.”  Obtaining a trademark on your name not only protects your name from potential trademark infringers, but also helps you ensure that no one else has been using your trademark prior to your use of the name.

When you undertake the process to trademark your name, a good trademark attorney will recommend that your first conduct a trademark search on your name.  This is because if someone else has filed a trademark for the same or similar name prior to your now imminent trademark application, the United States Patent and Trademark Office can deny your trademark for your name.  Therefore, the process of obtaining a trademark on your name is a good way to slow down and ensure the name you have selected can be used without infringing on another company’s trademark rights.

The second reason that the answer is almost always “yes” to the question of “should I trademark my name” is that when you obtain a trademark on your name you obtain the presumption of national ownership on the name. This is extremely important to a company that plans to expand in the future.  For example, even if your company’s operations today are only in New York and Pennsylvania, a trademark can help you expand to California in the future without any problems.  Let’s say that you expand to California in five years only to discover someone else has been using your name as their trademark.  If you had obtained a trademark on your name you can force this other company to stop using the name as their trademark (so long as their use began after the date you filed for your trademark).   If you had not obtained a trademark on your name, the California company could continue to legally used your name in California and force you not to use the name as your trademark in the California market.  Therefore, obtaining a trademark on a name is extremely important if you plan to expand outside of your current market.

As you can see, when you trademark a name it gives you a national right to use the name (and prevent others from using the name) as of the date your trademark application is filed.  After the filing date (presuming the trademark is ultimately approved) no other company can claim a trademark right superior to yours in the name.  In today’s competitive marketplace a trademark of a name can be an extremely valuable asset to any company.

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How to Get a Trademark

Friday, May 8th, 2009

I get a lot of calls from potential clients that start with the simple question, “how do I get a trademark.”  The short answer is that you must file an application with the United States Patent and Trademark Office (the “USPTO”).  The USPTO is the U.S. Government office which is responsible for issuing federal trademarks.

To get a trademark you must submit a trademark application for your business name, logo or slogan to the USPTO.  However, to get a trademark you will first want to conduct a trademark search of the USPTO trademark database.  This is because if someone already has registered a trademark that is the same or similar to your proposed trademark, the USPTO may deny your trademark application.  In addition, you may want to do more than just a trademark search of the USPTO database.   A comprehensive trademark search would include a search of not only the USPTO database but also a trademark search of each state’s trademark database for trademarks registered in individual states and for common law trademarks (i.e. trademarks that have not been registered).   This is because even if you get a trademark registration from the USPTO, if another company has used your trademark prior to your trademark application filing date, this company would be able to prevent you from using your federal trademark in the geographic area in which they used the trademark prior to your trademark application filing date.

Therefore, the answer to “how to get a trademark” is best answered in two parts.  First, to get a trademark you should conduct a comprehensive trademark search to make sure that your trademark application will not be denied or that there is not another prior user of your trademark that would prevent your use of the trademark in a specific geographic location.  After the trademark search clears the trademark, you may then complete the second step to get a trademark, which is the filing of your trademark application.

For more information on how to get a trademark for your business click on the “Register Your Trademark” link below.

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Risks of the Trademark Registration Process

Monday, May 4th, 2009

The trademark registration process is longer than many of my clients initially realize. The filing of a trademark application is just the beginning of the trademark registration process which can last from 6-18 months or even longer. The trademark registration process takes so long because each application must be reviewed individually by a trademark attorney at the United States Patent and Trademark Office (“USPTO”). Due to the volume of trademark applications received by the USPTO it takes between 6-18 months to process an application.

Many of my clients find this troubling since they are unsure if they should make a large investment in marketing a trademark before the trademark registration process is completed and the trademark registration certificate is issued by the U.S. Government. However, even the largest companies must rely on their attorney’s advice as to whether their trademark will be approved by the United States Patent and Trademark Office during the trademark registration process. And sometimes that advice can lead to a trademark application being denied. For example, Google’s recent trademark application for “Android” for a cell phone browser was denied by the USPTO for being confusingly similar to an existing trademark. Since Google could not wait the 6-18 months for the trademark registration process to be completed, Google made a significant investment in marketing Android. The denial of the trademark application after such a significant investment was made no doubt causes difficulty for Google.

Due to the cold realities of the trademark registration process, I advise my clients that there is always risk involved with the trademark registration process. Much like any other legal proceeding, no trademark attorney can guarantee the success of a trademark application. However, I can provide my clients with very valuable advice as to whether a trademark application may be approved or denied. By conducting a thorough trademark search that only an experienced trademark attorney can conduct, I can help clients assess whether or not their trademark application is likely to be approved or denied.

The bottom line is that the trademark registration process is just another part of the risk of being in business. There is nothing any trademark attorney can do to take away all the risk in the trademark registration process, but a trademark attorney can certainly help minimize the risk businesses face in this daunting process.

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Register a Trademark, Why Should I Register a Trademark?

Friday, May 1st, 2009

One of the questions I get from clients on a daily basis is why should I pay to register my trademark with the United States Patent and Trademark Office?  This question is undoubtedly asked because of the expense necessary to register a trademark.  The obvious answer to this question is that when you register a trademark you become the presumptive national owner of the trademark and can prevent any junior user of your trademark (i.e. an individual who begins use of the same trademark after the filing date of your trademark) from using the trademark.  When you register a trademark with the United States Patent and Trademark Office you gain the right to sue any unauthorized junior user of your trademark in Federal Court.

However, one of the little known advantages to registering a trademark is the power that a federal trademark provides a business in dealing with other private companies.  For example, some clients have called me after finding that competitors are disparaging their good name in online pay-per click advertisements.  What surprises my clients is that a competitor can actually post an ad on GOOGLE or YAHOO that uses their un-registered trademark and criticizes their product or service right in the headline of the ad.  Moreover, without a federal trademark registration, GOOGLE will not help remove the advertisement.  After calling GOOGLE in an attempt to have the ad removed, I often find my soon-to-be client’s next call is my office (after being told by GOOGLE that there is nothing GOOGLE can do).  This is because GOOGLE advises my soon-to-be client to register their trademark with the United States Patent and Trademark Office since GOOGLE will only help a business remove an unauthorized use of it’s trademark if the trademark is registered with the United States Patent and Trademark Office.

I believe there will be an increased trend whereby private companies (such examples includes Facebook, Twitter, etc.) rely on a registered trademark to police the use of business and product names.  Those individuals who do not register a trademark with the United States Patent and Trademark Office will be left with no means to enjoin the use of their trademarks besides an expensive lawsuit against the private company.  This should make the cost of registering a trademark look much less expensive.

To get started on your trademark registration click here or call 1-877-350-6275.

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