Trademark law is a complex yet vital part of starting a new business or defending your intellectual property rights.  A trademark is a brand name, which includes “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of another, and to indicate the source of the goods/services.”

Marks must meet specific criteria in order to be registered.  For example, marks that are too generic for the product, such as using the name “Apple” for an apple orchard, are likely to be denied, as the mark does not meet the guideline for distinguishing the company’s goods from another’s.  However, applying the name “Apple” to a computer and technology company is distinctive enough to qualify for trademark protection.

The first step to register a trademark is to file an application with the US Patent and Trademark Office, which must include a sample of the mark.  The examining attorney approves or rejects the application based on whether the mark is too similar to a preexisting mark, will cause a likelihood of confusion in consumers, or is too generic.

If denied, the Office issues an Office Action detailing why, and the Applicant has a chance to explain.  If approved, the mark is published for opposition, which permits other business owners to determine if the mark is too similar to their own marks. In the end, if approved, the mark is registered, and the owner has the sole right to use the mark and keep others from using it.

Our Attorneys can help

The trademark application and process can be arduous.  Our attorneys are experienced with each stage of the process.  This area of our practice is headed by co-owner Kevin Dunleavy, who has years of trademark experience, and includes attorney Sandra J. Lex.  Trademark services we provide include:

  • Trademark prosecution
  • Opinions on the availability of trademark protection
  • Validity/invalidity opinions
  • Infringement/non-infringement opinions

Our services span the entire timeline of the trademark application process, including screening prospective marks you have been considering, advising you on your best options to secure U.S. and international trademark protection, and managing the trademark life cycle.

After the application has been submitted, we will help with potential opposition proceedings, cancellation proceedings, policing of trademarks, and trademark enforcement. Contact us to begin the process.