what question should i ask my trademark attorney

Seven Questions to Ask a Trademark Attorney

• Understands all of the factors that go into making a trademark “high risk.”
• Understands the specific requirements involved in global marketplace registrations.
• Understands how to appropriately handle oppositions, revocations, and invalidations.

Full Answer

What are the grounds for refusal of trademark?

A Mark shall not be registered as a Trade Mark if it causes: Hurts religious susceptibilities of class/ section of citizens of India; or. Comprises/contains scandalous/obscene matter which is against the morality of the public; or. Is prohibited under the Emblems and Names Act, 1950.

How do you prepare for a trademark?

Step by step procedure to register a trademarkStep 1: To search for a trademark. ... Step 2: To file the trademark application. ... Step 3: Examination of the trademark application by the government authority. ... Step 4: Post- examination. ... Step 5: Advertisement of the trademark. ... Step 6: Opposition from the general public.More items...

How do I defend my trademark?

Consider how to protect your trademark with these 6 strategies.Choose a Strong Mark from the Start. ... Complete a Comprehensive Trademark Search. ... Register Your Trademark with the USPTO. ... Police Your Mark. ... Consider Registering Internationally. ... Maintain Your Trademark.

How do I know if my trademark is opposed?

All marks are published in the Official Gazette (https://www.uspto.gov/learning-and-resources/official-gazette), which is updated weekly by the USPTO with all the marks published for opposition. As noted, anyone with a similar mark can oppose your trademark.

How long does it take to get a trademark approved?

Ans: Trademark Registration is a lengthy process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, the trademark application number is usually issued within one or 2 days after filing.

What must a plaintiff prove in a successful trademark infringement case?

What must a plaintiff prove in a successful trademark infringement case? Defendant infringed plaintiff's mark. Defendant used the mark in an unauthorized manner. The use of the mark is likely to cause confusion or deception of the public as to the origin of the services or goods.

What are the 3 requirements in securing trademark?

There are three ways to secure your rights in your trademark : (1) use the mark in commerce in connection with a good or service; (2) register the trademark with your state; or (3) register the trademark with the United States Patent and Trademark Office ("USPTO").

What are the most common defenses to trademark infringement?

The most common defenses in trademark infringement, unfair competition and trademark dilution suits include descriptive fair use, nominative fair use, laches, unclean hands and trademark misuse, fraud in obtaining the registration, and application of the First Amendment.

Can you lose a trademark if you don't defend it?

If you do not enforce your rights, your mark may weaken, lose its distinctiveness and, ultimately, you may lose the right to use or defend it.

What happens if you lose a trademark opposition?

If the applicant loses the opposition, its application will be deemed abandoned. Once the mark is registered, the owner of the registration must file documents with the USPTO to maintain the registration; otherwise the registration will expire or be cancelled.

How often are trademarks opposed?

How Often Are Trademarks Opposed? It's not often that trademarks are opposed, but opposition and cancellation proceedings can be a real threat once they have been instituted. In a recent USPTO study, only 2.8 percent of 4 million applications published went through an opposition proceeding.

What happens if someone contests your trademark?

Generally, the TTAB will issue a favorable ruling for the opposing side. In some cases, you may be able to file a motion to lift the default judgment and continue on with the trial. If a default judgment is issued against you, the judgment is binding against any future applications you try to file for the same mark.

Background

Let’s start with some very general questions and issues that you may want to raise when hiring a potential trademark attorney. First, you want to try and find out if trademark law (or intellectual property more generally) is the attorney’s primary or sole area of practice.

Facts and Figures

In addition to learning about the attorney’s background in trademark law, there are also some more objective questions that you can ask. For starters, you might ask how many trademark applications they have filed before.

Do I need a Registered trademark?

In the United States, using a name to refer to the offered goods or services automatically creates a trademark for that name. Think “Coca-Cola” or “Google.” When you order a “coke” to go with your meal, you’re not expecting just any carbonated beverage, like a Pepsi or a Dr. Pepper. You want a drink from the Coca-Cola Company.

How long does a trademark last?

The good news is that unlike copyrights and patents, trademarks can technically last forever. All one needs to do to maintain their trademark rights is to keep using it with regards to the goods and/or services they offer.

Can I just use the TESS search on the USPTO website to conduct a trademark search before filing my application?

TESS stands for Trademark Electronic Search System, which is essentially the USPTO’s official trademark database and search engine. Ideally, you can use TESS to find registered or applied trademarks that are:

Is it true that companies are obliged to sue every single potential infringement if they want to present a strong case during an actual infringement lawsuit?

This may be the case for larger corporations with bigger names, but bear in mind that lawsuits can be expensive and time-consuming. What’s more, we’ve already mentioned how “confusingly similar” is subjective, which runs the risk of differing opinions in certain situations.

What can a trademark attorney do for me?

If said trademark attorney is licensed to practice law in the U.S.? Quite a bit, actually.

How to Find the Best Trademark Attorney: Seven Questions to Ask

While there may not be as many trademark attorneys as there are dentists, there are enough to make you wonder: Am I working with the best? What is their experience? How would I even know? When evaluating potential candidates, many factors must be considered. After all, this person is being entrusted with a high level of responsibility.

Final Thoughts

The trademark search, clearance, and registration processes involve highly specialized, time-consuming tasks. That’s why you need to outsource the work to experienced, qualified, IP professionals, who can advise you appropriately and save you time and money during your search for a new brand name.

Question 1: How many trademark registrations have you obtained for clients?

With the influx of new trademark registration services available, a lot of general practice attorneys, patent attorneys, and others are now offering to help you register your trademark. While many of these individuals are talented attorneys, they are not necessarily trademark attorneys.

Question 2: How involved will an attorney at your firm be in registering my trademark?

When services say “hire a trademark attorney” you may be surprised by how much time an actual attorney spends on your matter. Some registration services allow non-attorneys to draft language and make decisions that could drastically affect the outcome of your trademark registration.

Question 3: How will I know if my trademark is available for registration?

A comprehensive search is the only way to determine how “risky” registering and using your trademark is. Many trademark registration services claim to offer a “search”, or, even an on-line search tool. Unfortunately, most of these searches are extremely limited and incomplete.

Final Thoughts

In today’s marketplace, there is wide range of trademark service providers. The key is finding a service provider that offers a high-quality service at a competitive price.