Top Trademark Attorneys
If you are searching for top trademark attorneys, we can assist. The trademark attorneys at Mandour & Associates have handled over a thousand trademark applications worldwide and over 500 litigation matters. No matter your trademark issue, we can help.
Trademarks and service marks are valuable business assets and, like any asset, a trademark must be legally protected. Full legal protection is accomplished through the process of registering a trademark and, then, maintaining the registration and defending the trademark from trademark infringement and other dangers. To accomplish these tasks, you need top trademark attorneys like those at Mandour & Associates, APC.
In the United States, trademarks that are used in interstate commerce are protected under the federal Lanham Act. See 15 U.S.C. § 1051 et seq. Registration is provided by the US Patent & Trademark Office (“USPTO”).
Top Trademark Lawyers
As discussed in more detail below, the expertise of top trademark attorneys is necessary at every step in the application process and for every aspect of maintaining and defending a trademark. Applying for registration may sound simple, but it is very easy to make mistakes which can cost thousands of dollars to remedy. Here is a quick rundown of the legal services provided by our top trademark lawyers.
Creating a Trademark
Care should be taken in choosing your trademark so you should be familiar with the different types of trademarks. The reason for this is that the Lanham Act has strict rules for what constitutes a trademark. If a trademark does not satisfy the legal requirements, the USPTO will reject the application. In other words, registration will be denied and the time and filing fees will be wasted. As an example, a trademark must be distinctive and cannot be a commonly used word, phrase, logo or symbol like YELLOW CHEESE for a brand of cheese products. That proposed trademark is not distinctive enough.
Conducting a Search of Existing Trademarks
At the outset, it is advisable to conduct a trademark search of existing trademarks. One of the requirements for registration under the Lanham Act is that your proposed trademark be unique and not already in use by another business. For this reason, as you are working up a new trademark, a trademark search is essential. A search will reveal trademarks that are an exact match and also trademarks that are similar to the proposed trademark.
The USPTO maintains an searchable online database of trademarks called the Trademark Electronic Search System (“TESS”). There are about 2.5 million trademarks registered with the USPTO and more than 650 thousand applications for registration are filed annually. While anyone can conduct a TESS search, it is better to retain top trademark attorneys for the search.
Preparing and Filing Applications for Trademark Registration
To obtain registration, a trademark application must be filed and the application fees must be paid. Filing is done electronically through an online portal maintained by the USPTO. The application itself must be properly completed and supporting materials must be converted to electronic format and uploaded. An example of supporting materials are specimens of use of the trademark in commerce.
The application requires various information be listed such as the name of the owner or owners, a precise description of the trademark, identification of the class of goods and services with which the trademark will be used, whether the application is based on current use in commerce or is an intent-to-use application, and more.
Monitoring the Trademark Application
On average, a registration is issued by the USPTO in about 9-12 months from the date of application assuming that there are no substantial concerns or legal deficiencies with the application.
Here is a brief overview of the process: after an application is received, it is reviewed by a Trademark Office examining attorney. According to USPTO’s Annual Report, the Trademark Office employs over 600 examining attorneys. Each year there are over 600,000 trademark applications filed. By simple math, it can be seen that each examining attorney reviews in excess of 700 trademark applications each year. Thus, it is no surprise that the process takes time. Indeed, there is often a four month lag time between the filing of an application and the first action taken by an examining attorney.
If an application has problems or if the examining attorney has questions, then correspondence is sent to the applicant. Often, these can be handled quickly and do not delay the processing. Sometimes the problem is more substantial and the proposed trademark will need to be modified or withdrawn.
If the application is satisfactory, then the proposed trademark is published in the USPTO’s Official Gazette for thirty days. During this time, objections can be filed by third parties for various reasons. For example, if an owner of an existing trademark believes your newly proposed trademark is too similar to their trademark, the third party can file a trademark opposition. About 6,000 oppositions are filed each year.
Assistance Defending an Opposition
If an Opposition is filed, there are basically four options:
- Abandon the trademark
- Modify the proposed trademark
- Seek an agreement like a concurrent use or licensing agreement or
- Defend your trademark
If you choose to fight the Opposition, a trial proceeding must be held before the Trademark Trial and Appeal Board (“TTAB”). The TTAB is an administrative review agency within the USPTO. Hearings before the TTAB are similar to more well-known trials that occur in a traditional courtroom before a federal judge. We can aggressively defend your application against any Opposition before the TTAB. After successful registration, the expertise of a top trademark attorney is useful to maintain the registration and ensure that it remains in good standing.
Registration Renewals and Maintenance
Trademark registrations must be renewed between the fifth and sixth year after registration. At that time, the USPTO requires that various affidavits and declarations be filed attesting to continuing use of the trademark (or excusable non-use). Failure to make the appropriate filings will cause the trademark registration to abandon. Similar filings are needed near the 10-year anniversary of registration and every 10 years thereafter. These are self-executing deadlines and trademark owners are responsible for meeting these deadlines.
There are other dangers to your registration that must be defended. For example, the Trademark Office conducts random audits of proof of use declarations. See 37 C.F.R. §§ 2.161(h) and 7.37(h). The goal of the program is to combat trademark fraud and to eliminate trademarks that are unsubstantiated and not in use. In theory, this frees up those trademarks for use by others in the marketplace. According to USPTO’s Annual Report (page 15), more than 5,000 random audits are conducted by examining attorneys resulting in the full or partial cancellation of 62% of the audited registrations. A failure to respond or an inadequate response is likely to be fatal to the viability of your trademark registration.
Market Monitoring, Cease and Desist Letters and Other Pre-Litigation Defense
Failure to defend a trademark can result in the loss of the trademark. The basic tasks are:
- Monitor the marketplace for infringing and unauthorized uses of the trademark
- Send trademark cease and desist letters to infringers
- Prepare for and initiate trademark litigation when needed
Failure to defend a trademark has several dangers. For example, a trademark can be lost through the process of genericide. This happens when use of a trademarked word or phrase becomes so common among consumers and the public that the word stops being associated with a unique provider of the goods. ZIPPER is a good example. The word was originally trademarked by B.F. Goodrich. But consumers began using the word for that type of fastening mechanism regardless of manufacturer. Over time, the word stopped being associated with B.F. Goodrich, and consequently, the trademark was eventually lost. This is one reason that a trademark owner must monitor the marketplace and send demand letters.
The other danger is, of course, trademark counterfeiting and piracy where a competitor or other third party steals business by using your trademark. The International Trademark Association estimates that, by 2022, the value of counterfeit and pirated merchandise will exceed $1.9 trillion globally and will cost the US 5.4 million jobs. Aside from these types of economic and financial losses, failure to defend against trademark infringement can allow an infringer to argue that your trademark has been abandoned.
For these and other reasons, it is essential for trademark owners to monitor all markets and to police infringing and unauthorized use of their trademark. A regime of preparing and sending trademark cease and desist letters must be established and be in constant use.
Prosecuting Trademark Litigation
The final step in defending a trademark is to file a trademark lawsuit for infringement cases. Here, again, the assistance of a top trademark attorneys is needed. In general, trademark infringement cases are filed in US federal courts. Litigation has these four broad phases:
- Preparation and filing of the complaint and responsive papers from the targets of the lawsuit
- Discovery, exchange of information and evidence collection — after the initial pleadings and motions have been completed, the parties will exchange information during the “discovery” phase. This is the main phase where evidence is collected by both sides which will support the accusations or whatever legal defenses have been raised
- Summary judgment phase — with summary judgment, the judge is asked to make a ruling on aspects of the case without a trial. The ruling is made based on undisputed evidence presented by the parties on paper. Sometimes the whole case can be decided at this phase and sometimes there is a partial resolution.
- Trial phase — this phase is traditionally seen on television or in the movies but actually rarely occurs. The court will hear evidence from witnesses and eventually render a verdict.
The goal of most infringement cases is to obtain injunctive relief from the court that puts an end to the infringing behavior, and also whenever possible to recover money damages for the infringement.
If you are seeking top trademark attorneys, please contact today.