Trademark Law
The Law Office of Jason Rosenblum, PLLC focuses on the individual needs of their clients and on creating lasting attorney-client relationships. Extensive knowledge of Intellectual Property law and the desire to work along with you, our clients, makes our office uniquely qualified to protect your Intellectual Property.
Trademark Law covers your brand names, products names, logos, slogans, and trade dress. Trademark Law, specifically the protection of Trademarks, is not something you want to put in the hands of an inexperienced attorney. My background and experience allow me to assist you in making critical decisions regarding your case that will save you both time and money. I can interpret the unavoidable complexities of a case and communicate them to you in a way that is easy to understand, thereby keeping you informed and part of the crucial decision-making process.
As an attorney, I view my responsibly as an advisor and counselor very seriously and strive to offer high quality legal services at an affordable price so that allow even small business owners to achieve their goals. I draw on my in-depth study of Trademark Law and address issues in a timely and efficient manner, which cuts down on pendency time and costs.
Trademarks are all about source identification, identify the source or a product or service. Trademarks ultimately protect consumers. A trademark can be anything that denotes the source of a product or a service. When you see the Nike Swoosh, you know where that product is coming from. Whether it is on a shirt or a hat, you know that it is coming from Nike, and you know the quality to expect. Generally speaking, any symbol, word, logo, or color can be a trademark.
Trademark registration means that someone else cannot use that registered word, color, or symbol if there is a likelihood of confusion between the represented goods or services. Likelihood of confusion is the base standard used by the USPTO in examining a trademark application before most any other requirements for registration are even considered. The controlling standard for determining the likelihood of confusion is whether the purchasing public would mistakenly assume that the product or service offered by one specific entity, instead originates with, is sponsored by, or is in some way associated with the goods or services offered by another entity under another mark, or vice-versa.
The likelihood of confusion pitfall is one of the most important reasons why the first step with our trademark clients is a search, and why we say it can never be too early to speak with an attorney, but it can be too late. Before using a desired brand name or logo, we want our clients to know what already exists in the market and avoid confusion or potential infringement. The way to gain the best insight is with a thorough search looking at a similar name or logo registered or used in the marketplace that might create confusion.
The two most important factors that the USPTO uses to determine whether likelihood of confusion exists when an application is examined are the overall appearance and commercial impression of the mark and the goods or services that the mark is used in connection with. In other words, will the newcomer’s mark likely confuse relevant purchasers and prospective purchasers? As such, minor changes like differences in spellings don’t necessarily matter because it’s more about the overall commercial impression.
Benefits and Limitations of Trademark Protection
The benefit of a trademark is that if you own the trademark for a specific brand for a certain type of good or service, you can (and it is in fact your duty to) keep others from using a similar name or brand that might cause consumer confusion. Trademarks are ultimately about protecting the consumer, so that the consumer is not confused as to the source of goods or services associated with a brand. As such, if someone infringes on your registered trademark, you may forbid them from selling or using that brand and can be awarded damages.
In the US, the only way to obtain a trademark registration is to submit proof of actual use of the applied for mark in the US in conjunction with the specified goods or services. These goods and services are listed in a manual and defined by International Classes (ICs)1 which are largely organized by categories, subject matter, products, services, etc. that keep related items within the same IC. Once a trademark is obtained, registration covers and protects only the relevant goods and services.
What Can Be Protected by a Registered Trademark?
A trademark is any word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Some terms might make for weaker trademarks but can still be potentially trademarked. Terms that are the generic name of a product or service, such as “computer” for a computer, “lawyer” for lawyers’ services, etc., are not protectable.
Services That Our Law Firm Provides to Clients Looking to Obtain a Trademark
The Law Office of Jason H. Rosenblum, PLLC represents businesses and individuals before the United States Patent & Trademark Office (USPTO. The Law Office of Jason H. Rosenblum can assist you with the following Trademark services.
- Trademark Clearance Searches for use (U.S. and worldwide)
- Trademark Searches for Registration (U.S. and worldwide)
- Trademark Application Preparation (US and worldwide)
- Trademark U.S. Application Prosecution
- Trademark Opposition/Cancellation/ Appeals of Final Refusals
- Trademark Maintenance – Renewals
- Trademark Watching – Protect against potential infringers or similar marks with our watching services US, Worldwide, Competitor’s Trademark Watch
We always hope that a client will come to us before they adopt a name or brand. Whether they do this or not, before filing a trademark application for a client we conduct a comprehensive search to assess whether we think the client might infringe on another’s trademark if they adopt this trademark, whether we see other potential issues with using the trademark, if we believe we can obtain registration, and how strong that protection under the registration will be. With this information we can assist a client to make an informed decision of whether or not they should move forward with the desired name or brand.
Our firm’s general policy is to conduct a search before filing a trademark application. Before we even do this, however, we strongly suggest that clients do some due diligence on their own to increase the likelihood that by the time they come to us for a search they have weeded out some potential conflicts.
Once we do conduct a search and the results are reviewed and discussed with the client and the decision is made to proceed, we go ahead with preparing a trademark application. We counsel the client on the best course of action regarding the wording and description of goods and services since, if done incorrectly, this can jeopardize a trademark application. We then prepare and file the application. Once it’s filed, we monitor the application, handle correspondence with the Patent and Trademark Office, monitor and docket actions through to and after hopeful registration, and counsel our clients on how to use it.
After registration, we also offer and strongly encourage use of a watch service to clients that helps police intellectual property and provides information about potential infringements. Since it is an owner’s responsibility to be aware of infringers, this makes it much easier. While the USPTO will usually reject a new application if found to be too similar to existing trademarks, they will not actively stop anyone from using and infringing on any trademark. Stopping the infringement is up to the owner. We help our clients come up with plans on how to protect and monitor their intellectual property and specifically, their trademarks.
More Information
Are you concerned about misuse of your Trademark? Do you have questions about protecting what you’ve worked hard to create? Contact my office. I am capable of navigating the intricacies of Trademark Law to protect your rights and your business. The Law Office of Jason H. Rosenblum, PLLC addresses each case with singular attention and aims to deliver the results you’re looking for every time.
