An Overview on Trademark Law

The registration process and how to enforce your mark

Once you have created a new product or started a new business, you might want to consider filing for a trademark—which will help you establish your business or product and help consumers identify your product in a field of similar products. A trademark  can also prevent other people from using the same or similar marks to identify their products. And your case will be the strongest if you register your trademark with the U.S. Patent and Trademark Office (USPTO).

This overview will help you understand the basics of the registration process, as well as how to enforce your trademark against other people. If you are outside the U.S. and would like to register a trademark, you will be required to hire a lawyer licensed in the U.S.

Overview

A trademark is a recognizable word, phrase or symbol that is used to distinguish the source of a product. You will find trademarks on designer handbags, candy packaging, phones and restaurant merchandising. The goal of trademark law is to help consumers identify the source of things they purchase. They also protect a company’s reputation and encourage companies to create high quality products.

Federal and state laws both offer trademark protection. The main law is the federal Lanham Act, which both explains what can be trademarked and creates registration ruled. Trademarks are registered with the USPTO.

Registration

The first thing you need to do before you can register your trademark is make sure that it is the intellectual property protection you need. You can follow this link to learn more about the different types of protection.

You will next need to make sure your mark is in fact able to be protected by law. It will be important to make sure you select a mark that is recognizable and unique so that it is more likely to be enforceable. You will also need to identify the character, design or sound you would like to register, as well as identify the goods or services to which the mark will apply.

Once you file your application with the USPTO and pay the nonrefundable filing fee, and it is determined you meet the minimum requirements, the office will send your application to an examining attorney. This attorney reviews your application, conducts a search for conflicting marks and approves or denies your application. If your application is approved, your mark will be published, and you will receive notice.

Enforcement

The USPTO only registers trademarks, and it is thus your responsibility to enforce your trademark. You can file a suit for trademark infringement in either state or federal court, but these cases are most commonly filed in federal court.

To be successful, you will need to prove that you own a valid mark, your rights to the mark are senior to those of the person you’re suing, and that the other party’s mark is likely to cause consumers confusion. Registration will strengthen your case because it creates a legal presumption that your claim to the mark is valid and that you have exclusive rights to it. If you’re successful, the court can issue an injunction forcing the other party to stop using their mark. You might also be awarded monetary relief if you suffered damages.

Common Questions

Below are some common questions you might want to consider when meeting with an attorney for the first time.

  1. How do trademarks work?
  2. What qualifies as trademark infringement?
  3. How do I register my trademark?
  4. Do I have to register my trademark to enforce it?

Finding the Right Attorney for Your Needs

It is important to approach the right type of attorney—someone who can help you through your entire case. To do so, you can visit the Super Lawyers directory, and use the search box to find a lawyer based on your legal issue or location.

To help you get started, you may want to consider looking for an intellectual property lawyer who has experience with trademarks.

Why Should I Talk to a Lawyer?

If you are applying for a trademark and you reside outside of the United States, you are required to be represented by a lawyer licensed to practice in the U.S. If you reside in the U.S., you are not required to have an attorney represent you, but an attorney will still be helpful as you go through the trademark registration process. Your attorney can conduct research to make sure you are able to register your park, and they can represent you if you choose to appeal a USPTO decision or if you need to file a lawsuit for infringement.

A lawyer will further be able to anticipate potential problems with your case and advise you on how to approach them, as well as keep track of deadlines and file all the paperwork with the necessary courts and agencies—giving you one less thing to worry about.

Why Super Lawyers?

Super Lawyers is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The patented selection process includes independent research, peer nominations and peer evaluations. The objective is to create a credible, comprehensive and diverse listing of outstanding attorneys that can be used as a resource for attorneys and consumers searching for legal counsel. As Super Lawyers is intended to be used as an aid in selecting a lawyer, we limit the lawyer ratings to those who can be hired and retained by the public. You can learn more about the selection process here.

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