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.

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.

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

Gerben Law Firm can guide you through the trademark renewal process quickly and easily to help you continue to protect the name you registered as a trademark.  To file your initial Section 8 Statement of Continued Use (between the fifth and sixth year of ownership), USPTO charges a fee of $100.  To file your ten year renewal, USPTO charges a fee of $400 plus $100 to file an additional Section 8 Statement of Continued Use (which is required with the renewal).  Additionally, you need to be sure you provide the required documentation to prove that you really are using the trademark in commerce.

If you miss the USPTO deadlines for filing for renewal, your trademark is no longer federally protected, which reduces your ability to defend your name from competitors. We know our clients who file for trademark registrations value that protection, and we want to do everything we can to help extend that legal protection as long as possible. So if you’re ready to get started on the trademark renewal process, contact attorney Josh Gerben at (202) 294-2287.

Both the trademark symbol (“TM”) and the service mark symbol (“SM”) can be used prior to obtaining trademark registration. However, the difference between the two symbols lies in what each represents. For instance, the trademark symbol should be used if your trademark is representing goods or a product. On the other hand, the service mark symbol should be used if your trademark is for services you intend to provide for your clients.

While the trademark symbol and the service mark can be used before a trademark is registered, the registered trademark symbol (“®”) should only be displayed once you have received a trademark registration certificate from the United States Patent and Trademark Office. The registration certificate is granted after you trademark application has been approved. Business owners use the symbol to acknowledge that their good or service is currently protected by a federally registered trademark.

For more information on how to achieve registration for your trademark contact Trademark Attorney Josh Gerben by visiting www.TrademarkArmor.com.

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

My law firm was built to provide trademark search and application help to anyone or any business who has a name or a logo that they want to protect.  While anyone can go online and attempt to fill out a trademark application themselves, the process contains many technical details that are not apparent on the face of the application.  Failure to properly complete a trademark application can lead to its denial by the federal government.  My law firm works to help ensure that your trademark application will be accepted by the federal government and avoid the common mistakes made in applications.

A federal trademark is the strongest protection that any business can have on its name or logo.  My firm helps hundreds of businesses every year register a trademark.  If you are unsure how to get started in the trademark search and registration process please give me a call today.  I am always available to help in the trademark search and registration process.

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

Once a trademark application is submitted to the U.S. Government for review and approval, it takes between 6-18 months to receive a trademark registration certificate.  There is no option to pay a rush or expedited fee to the USPTO to move the trademark registration process any faster.  To many of my clients, waiting to see if the USPTO will approve their trademark seems like an eternity.  A whole brand can be built in 6-18 months and to have the USPTO deny the trademark application at that time could be devastating.

The best solution to this problem is to hire a competent trademark attorney that can give you an opinion on the registerability of your proposed trademark.  A trademark attorney can conduct a trademark search and give you an opinion on whether or not a proposed trademark is capable of registration with the USPTO.

Another piece of good news is that the USPTO trademark application process is first come, first servce.  This means that your trademark carries all the weight of a registered trademark as of the date you file the trademark.  No one else can try to register a same or similar trademark after the date of your filing, so long as your trademark application is ultimately approved by the USPTO.

Therefore, having the combination of a trademark attorney’s opinion that your trademark will most likely be approved by the USPTO and the fact that you have priority on your trademark as of the filing date should provide some sense of ease to a trademark applicant.

For more information on conducting a trademark search or registering a trademark contact Attorney Josh Gerben at Trademark Armor.

While anyone can go on the USPTO Web site to conduct a trademark search, it is virtually impossible for an unskilled searcher to determine if a US trademark is capable of achieving registration.  This is because the USPTO search engine is not robust enough to do a thorough US trademark search without the skill of an experienced searcher.  In order to determine if a US trademark is capable of achieving registration, the US trademark searcher must break down the trademark into multiple parts and look for similar marks in categories containing related goods.  Therefore, it is highly recommended that a US trademark lawyer is hired to conduct a US trademark search.

Moreover, in addition to the federal trademark database, a US trademark search must include a US state trademark search and a US common law search in order to provide full legal clearance for use of the trademark.  This is because under US trademark law if someone has registered a trademark with a state or simply begun use of the trademark in commerce (i.e. a common law trademark), that person or company may have certain rights that could interfere with a federal trademark.  Therefore, a complete US trademark search also includes a search of state and common law databases.

Once the US trademark search is complete, only a US trademark lawyer can interpret the results to provide an opinion on whether or not a US trademark is capable of achieving registration.

For a complete US trademark search please visit www.trademarkarmor.com

The reason potential danger is afoot when you trademark a logo is that many individuals are under the impression that they can trademark a logo and trademark a name in the same trademark application.  For example, if your logo and name are one in the same, many individuals suspect they only have to make one trademark filing.  The problem with only making one filing is that if your logo were to ever change (i.e. you went through a re-branding in the future) you could actually lose the trademark rights in your name as well.

The reason for this is that trademarks have a use requirement.  If you do not use a trademark someone else can petition the trademark office to have your trademark canceled.  This means that if you “re-brand” and ever discontinue the exact use of the logo that you filed as a trademark, the entire trademark could be canceled.  Therefore, the name that was a part of the trademark filing would also be canceled, which would open the door for someone else to register the same or similar name as a trademark.

The best advise when it comes to obtaining a trademark on a logo is to file two trademark applications.  File one application to trademark your logo and a second application to trademark your name.  This will ensure that your trademark name is always protected even if your logo changes in the future.

For more information on how to trademark a logo, click on the link below.