In-house counsel and business owners rely on the trademark clearance search and most importantly, trademark clearance opinion to let them know whether the proposed mark will encounter problems with third parties or be costly to prosecute before the USPTO.
Anatomy of an Opinion Letter Opinion letters should include: Other legal theories such as analysis of potential trademark infringements and analysis of potential dilution. Registrability of the mark. Identify potential refusals that may be raised by an Examining Attorney and how those issues can be solved.
1) potential trademarks/brand names are furnished to counsel by internal stakeholders; 2) counsel requests additional information regarding how the proposed mark will be used (word and/or stylized form), meaning, goods and services, marketing channels, known potential third-party conflicts, etc.;
“Theunauthorized useof a trademark or service markon or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.” - USPTO 6 Q: Why are opinions of counsel so important?
If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Trademark Infringement: Structuring Opinions of Counsel
Summary. This form is an opinion letter that includes legal analysis, advice, and recommendations on whether a proposed trademark is available to use and/or register in the United States based on the results of a clearance search.
Trademark clearance searching assesses whether the trademark you wish to use is identical or confusingly similar to, and thereby potentially conflicts with, earlier existing registered, pending, or unregistered trademarks.
It's your legal responsibility to monitor and protect your trademark from infringement by other parties. An attorney can help you understand the legal scope of your trademark rights and advise you on the best way to monitor and enforce those rights.
Trademark Searches: How to Conduct a Proper Trademark Clearance SearchGet an Attorney. ... Search for Similar Marks. ... Search Federal and State Databases. ... Search Registered, Pending, Cancelled, and Abandoned Marks. ... Double-Check with the USPTO. ... Search Under Similar Goods or Services.More items...•
There is a wide range of places to search when it comes to trademark clearance. You can start with the United States Patent and Trademark Office. The USPTO has a searchable database that allows users to search for trademarked words, brands and even images.
What is trademark infringement? Trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.
Protecting the Basic Rights of Traders One of the major objectives of trademark law is to protect the registered trademarks from being misrepresented or used by unauthorised users for any commercial benefits. Registering a trademark in India allows its exclusive use to the owner of the trademark.
Patent attorneys are qualified and trained in laws relating to patents, trade marks and designs, and understand laws relating to copyright, trade practices, circuit layouts, plant breeders' rights and confidential information.
In principle, a trademark registration will confer an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment.
1. Can You File for a Trademark That Exists? Updated November 12, 2020: If you're wondering, "can you trademark something that already exists," the simple answer is "no." Generally speaking, if somebody has used a trademark before you, you can't register the trademark for yourself.
Can Two Companies Have the Same Name? Yes, however, certain requirements must be met in order for it to not constitutes trademark infringement and to determine which party is the rightful owner of the name.
You can search all applied-for and registered trademarks free of charge by using the U.S. Patent and Trademark Office (USPTO)'s Trademark Electronic Search System (TESS). If your mark includes a design element, you will have to search it by using a design code.
A Chartered Trade Mark Attorney is a lawyer who is specifically qualified to advise on trade mark law and acts as an agent for the purposes of applying for and obtaining trade mark registrations.
No, you do not “need” to hire a trademark agent to represent you before CIPO – you can act for yourself. But, bear in mind that you do not “need” to hire a dentist to help with your toothache either. Trademarks are complex, and the costs of making a mistake can be serious.
Registering a Trademark Yourself The United States Patent and Trademark Office (USPTO) provides a trademark application and instructions to walk applicants through the process on its website. In some cases, registering a trademark is straightforward and doing it by yourself probably wouldn't raise any issues.
Key takeaway: To register and trademark your brand name, search the TESS database for similar brand names, fill out the trademark application and submit it to the USPTO for review.
This form is an opinion letter that includes legal analysis, advice, and recommendations on whether a proposed trademark is available to use and/or register in the United States based on the results of a clearance search. This template includes practical guidance, drafting notes, alternate clauses, and optional clauses. Trademark opinion letters vary in length and detail depending on the ...
Best Practices Clearance Opinions •Should opinion be oral or written? oOral if requested by client; common reasons: −If unfavorable opinion, does client want it disclosed orally
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A trademark clearance is a full review of common law (unregistered) trademarks, pending and abandoned trademark applications, and existing and expired trademarks to determine if there are any potential roadblocks to successfully registering your trademark with the United States Patent and Trademark Office (USPTO).
An attorney analyzes your proposed name. Next, an attorney analyzes your proposed name to determine the strength of its use as a trademark. Remember, I explained, that strong trademarks are fanciful or arbitrary? Suggestive trademarks, suggest to the public what service you offer or product you sell. Descriptive trademarks are a no-no.
An attorney drafts an opinion letter. An opinion letter is worth its weight in gold – it’s the attorneys professional opinion on the strength of your proposed trademark based on the their analysis of the search report, and any additional review. It lets you know whether it’s wise to move forward with registration.
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Opinion letters should include: Other legal theories such as analysis of potential trademark infringements and analysis of potential dilution.
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Relevant results of the search, usually in chart form, should also be included to help the client in decision-making.
that damages will be awarded automatically. Many districts courts have differing interpretations as to whether willful infringement will result in an award of damages under the Lanham Act.
A trademark clearance opinion letter sample is a template written by an attorney to confirm that a trademark for a new product or service has been cleared, meaning that no similar trademarks are currently in use. Having a trademark clearance search done prior to your product loss prevents:
A trademark opinion letter should include: The introduction of the letter should identify the mark in question and the services and/or products it covers, along with the name of the client, the area covered by the search, and other key information. You should state that you are providing the information in the letter on behalf ...
The attorney will analyze the results of the trademark search and provide an opinion letter on the availability of the mark. This allows the client to rely on solid legal recommendations and this can be used as evidence if the mark is ever challenged in court.
Elements of a Trademark Clearance Opinion Letter. A clearance opinion can be provided either orally or in a written letter. Clients may prefer an oral opinion to avoid drafting fees and prevent a negative opinion from being recorded in writing. A negative opinion in writing could be used in litigation if the client adopts a mark against attorney ...
In addition to whether the opinion is negative, contributing factors may include the field of use of the mark and the client's risk tolerance. The lower the risk tolerance, the more references and detail a letter should provide . An example of the role of field of use is the increased detail needed for trademarks in the pharmaceutical industry because of concerns for public health and safety.
The need to discontinue use of the mark because it infringes on a similar mark
Similarity of marks: This should include meaning, phonetics, and appearance.