First, periodic filings are required to retain your trademark.  These filings are due 5 and 10 years after you get your trademark and then every 10 years thereafter.  You must prove in these filings that you are using the mark in commerce exactly as the trademark was filed.  The deadlines for the trademark filings are firm and missing a deadline can be extremely costly, often leading to loss of your trademark.

Second, protecting your new trademark is an essential part of retaining your trademark.  As the trademark owner it is your legal responsibility to adequately police your trademark and make sure no one is infringing upon it, failure to do so can result in the loss of your trademark rights.  This can be a difficult task as adequate protection of your mark requires constant monitoring of new trademark applications with the USPTO and also watching for infringing use of your trademark in commerce.

To assist with these duties and responsibilities, I offer a “Trademark Monitoring” service.  This services works to ensure that 1) No one infringes on your trademark; 2) You continue proper use of your trademark; and 3) You never miss a trademark renewal.  If you are interesting in this service please contact me at 1-877-350-6275.

Word mark applications, or applications without any logo specifications, are generally preferable because they provide the word(s) you are attempting to protect with broader legal rights.  This is because the registration of a word by itself protects the word itself, whereas the registration of a word and logo together only protects the word in the context of the logo.

Moreover, registering your trademark as just words provides you with more flexibility in the future.  If you register a trademark as words and a logo today, you are married to that logo for life.  This is because there is a legal requirement to “use” a trademark exactly as it is registered.  If you register a trademark as a logo, you must always use that exact logo in commerce.  If you update the logo and stop using the logo you originally registered as a trademark you will run afoul of this requirement and potentially lose all rights in your trademark.   On the other hand, if you register a trademark as just the words, you can use those words in any logo you have now or develop in the future and be in compliance with the “use” requirement.

Granted, there are always situations when filing a trademark as a logo is beneficial (and sometimes it makes sense to make two filings: one for the words and one for the logo).  If you have any questions on this issue please give trademark attorney Josh Gerben a call at 1-877-350-6275.

When filing a trademark, the US Government asks the trademark applicant whether the trademark has been “used in commerce” or if the trademark applicant “intends to use” the trademark in commerce in the future.   Many trademark applicants make the assumption that claiming use is “better” and therefore make up reasons they believe constitute “use.”  This is extremely risky behavior.   All trademark applicants should be aware that if the trademark application does not meet the statutory definition of trademark “use”, yet “use” of the trademark is claimed in the trademark application, then the trademark will be subject to cancellation at almost any time for the making of a fraudulent statement to the USPTO.

Because of the consequences associated with making an inaccurate statement in a trademark application, the question of what constitutes “use” of a trademark under federal law is one that frequently arises.  One of the overriding guidelines for the use in commerce is that the trademark cannot be “used” just to obtain or reserve the trademark registration without intention of continued future use.  This general rule exists primarily to prevent people from speculating about which trademark names could be desired in the future and registering them purely in the hopes of eventually selling them for profit.

The issue I run into all the times is that clients always want to believe they are “using” their trademarks.  For example, many client claim that they are using their trademarks because they have shipments of product in from the manufacturer, they have intracompany use of the trademark, or they have sold a product or service to personal friends and relatives.  These are all examples of unacceptable “uses in commerce.”

The good news is that applying for a trademark as “intent to use” is not necessarily a bad thing.  Provided your trademark is strong enough, you can obtain priority on your trademark as of the date of your trademark filing.  This is because the USPTO wants you to be protected while you are in the process of starting your business or bringing a new product or service to market.  If you file as intent to use you have approximately one year from the date you file your application to prove to the USPTO.

The bottom line is that the issue of “use” in trademark law can be relatively difficult to navigate — and can have severe consequences if not handled properly.  If you retain my firm to assist with your trademark registration, as your trademark attorney I will assist you with this any many of the other tricky issues associated with registering a trademark.

1.  Federal trademark registrations are used by major companies to police trademark rights.  For example, Google, Facebook, Yahoo, etc. all have trademark policies.  The policies heavily favor the owner of a federal trademark.  If you have a federally registered trademark and there is some infringement of your mark going on in their system (think how big Google is),  you can write a letter to their trademark enforcement department and most of the time the infringing use is stopped within a week or two.  Compare this with going to court and spending tens of thousands in legal fees to enforce a trademark.

2.  Trademarks are like property – they appreciate in value.  A trademark can be bought, sold or licensed.  Therefore, if you were ever attempting to sell your business one day, ownership of the federal trademark could significantly increase the purchase price.

3.  Federal trademark registration ensures protection of your intellectual property.  I’ve seen it happen where someone does not register a trademark and then someone else files something similar that then prevents that individual from using their trademark.  I then get the “how do we fix this” call.  Unfortunately, there are not good fixes to this problem.  With 7 billion people on the planet, your idea will occur to someone else.  Obtaining a trademark ensures you will not have to worry about someone else being able to limit the use of your trademark.

4.  If franchising your business is a consideration, you should always (and I mean always) ensure your trademarks are properly protected.

For more information on trademark registration please call trademark attorney Josh Gerben at 1-877-350-6275

To the surprise of many, the name of Apple’s newest product was already registered by Fujitsu, a Japanese company with a touch-screen Windows Mobile device named iPAD.  This posed a large trademark infringement issue for Apply since the Fujitsu product is the most similar to the new Apple tablet and also is sold in the same market.

Fujitsu had their product name registered as a trademark from 2002 until 2009, but didn’t start attempting to renew the legal protection for their product name until mid-2009 (presumably after finding out about Apple’s new product).  Apple filed challenges to the Fujitsu ownership of the trademark registration in September of last year.  However, Fujitsu appeared to have substantial common law and legal claims to the ‘iPad’ name, as they had been producing and selling an ‘iPAD’ touch screen tablet since 2002.

Therefore, Apple determined the best way to avoid an issue was to spend some cold hard cash.  The issue was settled when Apple purchased the ‘iPad’ trademark registration from Fujitsu for an undisclosed price.

Fujitsu’s windfall in this case provide an example of benefits that come with the legal ownership of a name.  If Fujitsu didn’t have a legal claim to the ‘iPAD’ name in the form of a trademark, Apple may have preferred a lawsuit to purchasing the rights, and Fujitsu probably would not have been in a strong enough negotiating position to extract a hefty settlement.

To register a trademark today call Gerben Law Firm at 1-877-350-6275

One of the most critical aspects of a USPTO Office Action is ensuring a response is filed with the USPTO within the deadline stated on the Office Action.   If you receive an Office Action for something as simple as a clarification of information on your application and do not respond by the deadline your application, your trademark application will be considered to be abandoned and you will lose all priority on your trademark.   Therefore, it is extremely important to treat any Office Action seriously and respond in the proper time frame.

Another critical aspect of responding to an Office Action is ensuring that you are properly responding to the USPTO’s requests.  Failure to properly respond to the requests can also lead to denial of your application.  Therefore, if you have been issued an Office Action it is highly recommended that you contact a trademark attorney so that the response filed is technically correct.

My law firm helps clients respond to all types of Office Actions.  Even if your trademark has been initially denied by the USPTO we can e draft a legal argument to attempt to overturn the negative decision.  The cost to respond to an Office Action will vary depending on the particular Office Action.  I offer a free trademark consultation to clients who are looking to respond to an Office Action.  I can be reached directly at (202) 294-2287 for this free consultation.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

While this USA trademark application can be completed by anyone, I highly recommend to potential clients that they retain my firm to complete their trademark application.  The reason I recommend retaining a USA trademark attorney to draft and file a trademark application is because there are many technical and legal elements hidden in the USA trademark application.  If certain information is not entered correctly, it could lead to rejection of the USA trademark application and loss of any priority established on the trademark.

Moreover, to register a trademark in the USA it is imperative to first conduct a USA trademark search.  If a trademark search is not conducted prior to an attempt to register a trademark in the USA a client may not be aware of a pre-existing federal, state or common law trademark that could result either in the rejection of a USA trademark application or in a limitation of the client’s rights in their trademark.  Therefore, to register a trademark in the USA I recommend to potential clients that they retain my law firm to assist them in conducting a proper USA trademark search and then for the drafting and filing of the USA trademark application.

Once a USA trademark application is filed, a client must then wait for the U.S. Government to review and approve their application.  It generally takes about 8-10 months to register a USA trademark from the date the application is filed.  However, so long as the USA trademark application is ultimately approved, the trademark rights start on the date the USA trademark application was filed.  Therefore, when a client wants to register a USA trademark to protect their rights, they can be assured that no one will be able to attempt to register a USA trademark that is similar to theirs after the date of their USA trademark application filing.

To get started with the process to register a USA trademark please follow the link below.

A comprehensive trademark search and filing package includes not only a search of federal trademark filings to ensure no one else has filed for a federal trademark, but also includes a search of each state’s trademark database and a search of all unregistered use of the proposed trademark.  The reason this comprehensive trademark search and filing package is so important is that if anyone else had made a state trademark filing or simply had used my client’s proposed trademark in commerce (i.e. common law use of the trademark) prior to the filing date of my client’s trademark with the United States Patent and Trademark Office, this individual or company would have the right to keep my client from using the trademark in the geographic region in which the trademark was being used prior to my client’s federal trademark filing.  This could severely limit my client’s ability to use their trademark as they desire.

Therefore, it is only a comprehensive trademark search and filing package that can give full legal clearance for use of a trademark.  If a client elects only to conduct a federal trademark search on their trademark they may not know about a state registration or common law use of their proposed trademark which could limit their trademark rights.

For more information on Gerben Law Firm’s comprehensive trademark search and filing package please contact Attorney Josh Gerben at (202) 294-2287.

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.

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.