what should you bring to your trademark attorney

by Boyd Ortiz 7 min read

The application for a trademark will need to include the following: Name of the applicant A correspondence address for USPTO

United States Patent and Trademark Office

The United States Patent and Trademark Office is an agency in the U.S. Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.

to mail you the documents

Full Answer

Do I need a lawyer to submit a trademark application?

Jun 28, 2021 · Preparing and filing a trademark application with the USPTO that is complete and accurately identifies your goods and services. Selecting an appropriate specimen that shows how your trademark is used in commerce. Responding to questions and refusals to register your trademark from a USPTO trademark examining attorney.

What services does a trademark attorney provide?

May 02, 2022 · For one, you must actually use the name in your business, and the name must be distinctive— names like New York Pizza for a pizza shop or Good Coffee for a coffee shop are generally too descriptive to qualify. The name also must not be confusingly similar to an existing registered trademark. The same criteria apply to logos and other marks ...

What happens if I take advice from someone unauthorized to practice trademark?

Apr 12, 2019 · A trademark attorney should be hired when you have an idea for the name of your company. This is because a trademark attorney should conduct a search on your name and provide an opinion to you on whether or not the name is safe to use. Far too many business owners fall in love with a name and fail to properly search and clear the name before ...

What are the obstacles to getting a federal trademark?

Apr 22, 2021 · Pick an Educated and Licensed Attorney. During your search for an attorney, you may run into non-legal professionals offering their services. Do yourself a favor and avoid those. Hiring a non-legal service may appear more affordable, but …

image

How do you prepare for a trademark?

Prepare The Trademark Application
  1. The Principal Register. It's typically wise to apply for registration on the USPTO's Principal Register. ...
  2. The Bases For Filing. ...
  3. The Contents of the Application. ...
  4. Online Filing. ...
  5. Confirm Filing & Monitor Status. ...
  6. Respond To Office Actions. ...
  7. The Mark Is Published. ...
  8. Submit A Statement Of Use.
Nov 19, 2018

What questions should I ask a copyright lawyer?

10 Questions for Your Intellectual Property Lawyer
  • DO I REALLY NEED AN IP LAWYER? ...
  • PATENTS, COPYRIGHTS, TRADEMARKS, TRADE SECRETS—WHAT DO I NEED AND WHEN? ...
  • WHAT IS YOUR BACKGROUND? ...
  • ARE YOUR REGISTERED WITH THE USPTO? ...
  • HAVE YOU LITIGATED IN PATENT-HEAVY DISTRICTS? ...
  • I BELIEVE MY INTELLECTUAL PROPERTY HAS BEEN STOLEN.
Aug 1, 2011

What do you have to prove for trademark infringement?

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the defendant's), and that the defendant's mark is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or ...Jun 8, 2018

What are the requirements that a trademark applicant must meet?

What Are Trademark Requirements?
  • Provide your name and address as owner of the trademark.
  • State the entity type (individual or corporation) and your national citizenship.
  • Demonstrate actual use or a real intent to use the trademark in commerce.
  • Give a detailed description of the product being trademarked.
Jul 8, 2020

Is there such thing as a copyright lawyer?

Copyright lawyers ensure that your intellectual property rights are protected under fair use guidelines, patent law, and trademark laws. All of these protections relate back to the same idea – making sure that no one else can steal your creation or profit from it without permission.

What rights are protected by intellectual property laws?

It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function.Jun 6, 1997

What makes a trademark invalid?

Trademark Invalidation

If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially. The likelihood of confusion and descriptiveness is the most common grounds asserted to invalidate trademark rights.
Apr 30, 2022

What are the four major Lanham Act violations?

To prevail on a false-advertising claim under the Lanham Act, a plaintiff must satisfy the following elements: (1) a false or misleading statement of fact; that is (2) used in a commercial advertisement or promotion; that (3) deceives or is likely to deceive in a material way; (4) in interstate commerce; and (5) has ...

Is it better to trademark or copyright a name?

A trademark can protect your name and logo in case someone else wants to use them for their own purposes. Also, you cannot really copyright a name, since copyright protects artistic works. This is exactly why you need to have a trademark that protects your company's intellectual property, such as your logo.Jan 19, 2022

What is trademark secret?

Trade secrets are intellectual property (IP) rights on confidential information which may be sold or licensed. In general, to qualify as a trade secret, the information must be: commercially valuable because it is secret, be known only to a limited group of persons, and.

Can you trademark a name?

Registering a trademark helps protect a name or brand from intellectual property theft or misuse as a business grows. You can start the trademarking process on the U.S. Patent and Trademark Office's website. The application can be completed fairly quickly, but the entire process may take several months.Mar 25, 2022

How do I trademark a logo for free?

Can you trademark your logo for free? You can not register a trademark for free. However, what you can do is establish something known as a "common law trademark" for free. You can do this by simply opening for business.May 3, 2022

What can an attorney do for me?

An attorney who is licensed to practice law in the U.S. and experienced in trademark law can advise you about many important legal issues. These include:

Why must my attorney be licensed to practice law in the United States?

Our regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO.

How do I find a U.S.-licensed trademark attorney?

To find an attorney who can represent you before the USPTO in trademark matters, you can consult U.S. telephone listings or the internet, or contact the attorney referral service of a U.S. state or local bar association (see the American Bar Association's Consumers' Guide to Legal Help#N#(link is external)#N#).

How do I know if the attorney or filing firm I hired is legitimate?

Many private companies offer legal services, such as assistance with filings or responding to an office action, or other services. Such services may be legitimate if provided under the supervision of a licensed U.S. attorney. But many of these companies are not affiliated with licensed U.S. attorneys, and cannot lawfully provide such services.

What are trademarks?

What Is a Trademark? 1 Patents usually protect inventions, such as machinery, pharmaceuticals, products, and more. 2 Copyrights protect original creative works such as novels, artwork, and songs. 3 Trademarks protect the brands used to identify your business, such as your business name, logo, or tagline. A lawyer can help you identify your business's trademarks.

How long is a trademark good for?

Once your trademark is registered, it's good for 10 years and can be renewed for additional 10-year periods. To keep your trademark in good standing, you must file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every 10 years after that.

What is the difference between a patent and a trademark?

Copyrights protect original creative works such as novels, artwork, and songs. Trademarks protect the brands used to identify your business, such as your business name, logo, or tagline. A lawyer can help you identify your business's trademarks.

What is the difference between trademarks and copyrights?

Copyrights protect original creative works such as novels, artwork, and songs. Trademarks protect the brands used to identify your business, such as your business name, logo, or tagline. A lawyer can help you identify your business's trademarks.

What is the USPTO?

By registering your trademark with the U.S. Patent and Trademark Office (USPTO), you get nationwide rights to your trademark, along with other benefits. A lawyer can more fully explain the pros and cons of your particular business.

How many trademarks does Gerben Law Firm have?

Gerben Law Firm has registered over 4,500 trademarks since opening our doors in 2008. We work with clients from all 50 states, and, from 30+ countries around the world. Contact us today for a free consultation with a trademark attorney.

Who is Josh Gerben?

Josh Gerben, Esq. is the founder and principal of Gerben Law Firm. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 5,500 trademarks.The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Is it bad to contact a trademark attorney?

This is why contacting trademark attorneys through referrals or advertising services is sometimes a bad idea. Such lawyers are likely to end up swamped with trademark requests, which they then delegate out. If you are going to use such services, take some time to vet the attorney.

Is it expensive to hire a trademark attorney?

Some people believe that hiring a trademark attorney is costly. However, in most cases, it is ultimately more costly not to hire one. When it comes to choosing an attorney, make sure you select someone who is willing to work for you. The job of a trademark attorney is not simply to get a trademark for you, but to evaluate the different options you have and give you the recommendations that make the most sense for your business.

Can a trademark lawyer help you?

Apart from getting your trademark registered, your trademark lawyer can also help in enforcing your trademark. On the other hand, your lawyer can also assist if you get a cease and desist letter.

How does trademarking help a business?

Having a trademark increases the chances of greater sales volumes and improves the profit margins of your business. A registered trademark would increase your business’ visibility not only in the marketplace but also in the online world. Today, the majority of the businesses use trademarks for setting their brand apart to customers online and offline. A trademark attorney can help getting the trademark registered while you channel your energy in your business and save you hassles and valuable time. Your attorney can also protect you from making expensive mistakes.

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.

image