U.S. Trademark Lawyer for Foreign Businesses

The USPTO implemented a new rule in 2019 requiring foreign domiciled business to retain a licensed U.S. Trademark Attorney for the filing of trademark applications and other trademark matters before the USPTO.

The purpose of the new rule is to increase compliance with U.S. federal trademark laws, improve the accuracy of trademark submissions to the USPTO, and ultimately to safeguard the integrity of the U.S. trademark register.

The USPTO initiated the new rule in response to an uptick in inaccurate and suspicious trademark applications coming from abroad. There have also been issues with foreign individuals and entities engaging in the unauthorized practice of law by representing trademark applicants before the USPTO without the proper legal credentials. The new requirement is aimed at encouraging foreign-domiciled applicants to seek the advice of a trademark attorney licensed to practice in the U.S., and therefore the applicants are more likely to obtain registrations that comply with U.S. legal requirements.

If you are a foreign applicant or foreign business that needs a U.S. Trademark Attorney feel free to send us an email to schedule a free phone consultation.

Trademark My Business Logo

Applying for a stylized trademark (aka logo, composite, design mark, or special form mark) allows the trademark applicant to claim specific fonts, styles, sizes and colors as actual features of the trademark. Images and graphic elements can also be included. Most people just call these ‘logos’ and they registerable with the USPTO.

The process for trademarking a logo is similar to trademarking a business name (see previous article). It starts with a trademark clearance search, however, the process for searching logos is slightly more complex. The USPTO has a design code system that assigns numeric values to different categories of pictures such as people, animals, plants, stars, and other common items. Each trademark application is coded by the USPTO and takes into consideration the graphic elements of the trademark. These codes are searchable by future applicants, therefore if you wanted to search for all logos containing a bear image it’s easy to do so. Combining multiple design codes at the same time is also possible and allows us to quickly narrow down search results to those that are relevant for the client.

If the search results look good and we don’t see any issues with potential trademark infringement, lack of registerability, etc. then we can go ahead and start drafting the application. Nuances to logo applications start with the color claim. Do we want to claim color or not? The answer to this depends on the client and their trademark. We look at the past and proposed trademark usage because there are benefits and drawbacks to each option. Next, the trademark description needs to be carefully crafted taking into consideration the results of the trademark search. We want this thing to be approved, don’t we? (Yes.) Lastly, which filing basis and classes shall we apply for? These questions are all very important and impact the likelihood that the application will be successful. There’s an art form to these applications so be smart and hire a good attorney.

Trademark My Business Name

Trademarking your business name in the United States is achieved by obtaining a federal trademark registration from the Unites States Patent and Trademark Office. A federal trademark registration gives the trademark owner exclusive rights to use their trademark in relation to their goods or services. Federal trademark registrations are an incredibly valuable asset for protecting your business name, thus it’s a no-brainer to pursue for those who are serious about their business.

HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK?

The USPTO takes about 1 year to process a trademark application from start to finish, assuming no issues arise. If your application is granted, your business name will remain trademarked for 5 years, at which point a renewal and affidavits will become due attesting to your continuous usage of the trademark. Part of our service involves docketing renewal and maintenance notifications for our clients so their trademarks remain registered without defaulting (a common occurrence for those without a trademark attorney).

WHAT DOES THE TRADEMARK APPLICATION PROCESS LOOK LIKE?

Our process starts with conducting a professional clearance search. The search results indicate trademark availability and trademark filing strategy based on potential conflicts. Once the issues are located (and there are usually a few), the application is drafted and filed with the USPTO in way that will give it the best chance for success. After about 4 months of waiting, the fun part begins when the USPTO does their initial substantive review. Here, we must respond to legal office actions, amend the application, provide additional information, and anything else the USPTO requests in order to get the application to the remaining stages of the application process and ultimately published for opposition.

HOW MUCH DOES IT COST TO REGISTER A TRADEMARK?

Legal fees for trademark applications vary depending on the experience of the attorney and the service they provide. Our service includes the filing fees that are paid to the USPTO as well as our legal fee for conducting the trademark search, responding to office actions, and our full representation throughout the application process. Junk services such as Legalzoom typically assist pro se applicants file applications on their own, but do not provide legal advice nor representation throughout the process. This is obviously a problem for non-lawyer with no experience filing trademark applications with the federal government.

If you’re interested in a free phone consultation for more information about trademarking your business name contact us!

New York State Trademark Registration

Trademark registration in the United States can be achieved on either the state or federal level. While federal registrations with the USPTO are by far the most popular choice, trademarks can also be registered in New York State with the Department of State in Albany, New York.

What is the difference between State and Federal Trademark Registration?

Federal registration applies to all 50 states and is governed by U.S. federal law. In contrast, NYS trademarks only apply to the State of New York. Practically speaking, this means that the protection one gains is much greater if the trademark is federally registered. The registration is broader and restricts the entire country from using your trademark, rather than just one state. The USPTO also maintains the best publicly searchable trademark database in the world, thus the deterrent effects of federal registration extend beyond the U.S. border as well.

However, NYS trademark registrations have benefits too. The localized protection can be a benefit if an intrastate conflict occurs, which is not an uncommon occurrence in New York. NYS TMs can also be a great tool to utilize if federal registration is unavailable. Trademark applications are frequently refused at the federal level, thus in some cases we’ll use NYS trademarks as a back up plan since most of our clients are located in New York City. Lastly, the New York State trademark application process is quicker, cheaper and easier than registering federally.

If you have questions about applying for a trademark send us an email and we’ll schedule a free phone consultation.

How To Trademark a Cosmetics Company

Here at Total Trademarks in New York City we’ve worked with many cosmetics companies to trademark their company name, logo, and slogans. Whether you’re a boutique label or a major New York brand, trademarking can help establish and protect your company name, product names, logos and other aspects of your branding.

HOW CAN A TRADEMARK PROTECT COSMETIC PRODUCTS?

Trademarking gives you the exclusive rights to use your trademark in the U.S. in relation to your goods. If a trademark registration is secured, the USPTO will refuse subsequent applications for similar or identical trademarks if it relates to similar products. Trademarking also creates a public listing of your trademark in the USPTO’s online TESS database. A trademark search will show that you own the trademark, which deters many competitors from attempting to register or use your trademark. The value of this benefit alone makes the filing fees worth it in our opinion.

TRADEMARK REGISTRATION BENEFITS:

·       Trademark registration gives you the right to use the ® symbol.

·       Registrants may participate in the Amazon Brand Registry and similar programs

·       Social media websites will generally take down pages infringing on your trademark

·       The USPTO will reject subsequent applicants who apply for your trademark

·       Public listing of your trademark in the USPTO Trademark Database

·       You will have the right to enforce your trademark in federal court, if necessary

·       You may be able to recover money damages for trademark infringement

FILE YOUR TRADEMARK APPLICATION ASAP!

Trademarks are available on a first come, first served basis, so filing an application as soon as possible will give you the best chance of success. Contact us today for a Free Phone Consultation if you would like to apply for trademark!

International Trademark Applications

The Madrid Protocol Application is generally what U.S. based applicants are referring to when they call me and say “I want to file an international trademark application.” There are different ways to file abroad, but the Madrid Protocol system is popular because it can streamline the process for those who qualify.

To be clear, trademarks are registered based on jurisdiction and there is no one application that you can file to be trademark protected throughout the entire world. (wouldn’t that be nice?) That being said, U.S. based applicants have the luxury of being able to file in international jurisdictions based on a U.S. registration or pending application. If the USPTO certifies the initial application, it is then sent to the International Bureau of the World Intellectual Property Organization (WIPO), which administers the international trademark registration program. Each foreign country designated in your international trademark application will review your application for extension of trademark protection in their jurisdiction, and if your trademark passes examination, your international trademark registration may be granted. The process usually takes about 2 years.

Send us an email to schedule a free phone consultation if you have a trademark that you would like to protect abroad.

Trademark Refusal Attorney – Do I Need One?

If your trademark application has been refused a Trademark Refusal Attorney may be able to assist. We’re often called upon to fix trademark applications filed by Pro Se applicants and general practice attorneys. How do we do this? Well, it’s our job! We use our expertise and experience to the benefit of our clients and in many cases we are able to get their refusals overturned.

Contrary to popular belief, you cannot Google how file a trademark application. Well, you can I guess…but don’t expect the same results as a professional trademark attorney. In order to effectively prosecute a federal trademark application, one must have read the bible of trademarks a few times (the Trademark Manual of Examining Procedure). Would you try to fly a plane without reading the manual to figure out what the controls do? Probably not. Next, about 10 years of filing trademark applications will also come in handy.

Trademark applications can be refused for a variety of reasons. Some refusals are no-brainers that are easy for us to correct. Other refusals require substantial work. If your trademark has been refused please email us your trademark serial number and we’ll schedule a phone consultation to discuss your options.

Likelihood of Confusion

Trademark applications can be refused for a variety of reasons. One such reason is Section 2(d) – Likelihood of Confusion. Essentially, what this means is that the proposed trademark application conflicts with a trademark that’s either already registered, or a prior pending application that was filed before the application in question. 

The risk of receiving a likelihood of confusion refusal can be mitigated by a proper clearance search. I’m talking about a PROPER clearance search; not a basic index conducted by a non-trademark attorney. Contrary to popular belief, a trademark search is slightly more complicated than typing the trademark in the USPTO website. 

Likelihood of confusion refusals are not fun. They are generally the hardest refusal to overcome, however the application process allows for certain procedures that may convince the USPTO to reconsider the refusal and allow the trademark to continue on the registration process. Unfortunately, the options are often limited by the drafting of the initial application. We get a lot of inquires from Pro Se applicants that used a junk service such as Legalzoom and in this scenario sometimes we can “fix” the application and sometimes we cannot. The options depend on many factors including limitations from the initial drafting of the application, the nature and number of conflicts cited in the office action refusal, the goods or services in question, and the circumstances of the applicant.

If you’ve received a USPTO Office Action Refusal based on a 2(d) Likelihood of Confusion with another trademark email us your trademark serial number and we can schedule a phone consultation to discuss your options.

How Much Does a Trademark Cost?

This seems to be one of the most frequently asked questions here at Total Trademarks, so here’s a run down on the costs of a trademark application:

Our basic U.S. trademark application service fees and details are listed here for one trademark that’s currently being used in commerce. Our flat fee service includes the legal fees and filing fees that are paid to the USPTO and includes one class of goods or services.

Trademark applications may also include multiple classes, if the client wants to broaden the scope of protection to different types of products or services. In this scenario, there are additional legal fees and filing fees depending on the number and nature of classes.

A trademark application can also be filed in advance of using the trademark in commerce by filing an intent-to-use application – which is more or less a trademark reservation. Under this filing basis, the applicant may also need to file one or more Statements of Use (if the application is approved AND the client begins trading in commerce) and there can be legal and filing fees here too.

While it is important to consider the costs, the most important factor is the skill and experience of the Trademark Attorney who is representing you! Would you seek out the cheapest possible doctor to perform your surgery? Of course not, that would be a very bad idea. Same goes for your Attorney. The trademark application process is complicated and you’re going to want a professional on your team.

Amazon Brand Registry Trademark Program

Enrolling in the Amazon Brand Registry program helps Amazon Sellers protect their registered trademarks and reduce trademark infringement. Benefits of the program include proprietary text searches, image search capabilities, notice of suspected intellectual property rights violations, and increased authority over product listings using your brand name.

In order to qualify, your trademark will need to be registered with the United States Patent and Trademark Office. Your trademark registration must also meet certain criteria, namely, you must have a trademark registered on the Principal Register and a valid registration number.

We’ve helped dozens of Amazon Sellers secure their trademark for the Brand Registry Program. If you would like to apply for a trademark contact us for a free phone consultation or click the following link for the flat fees and details of our Trademark Application Services.