United States Trademark Registrations
Brand names, slogans, and logos are a vital part of every business on earth. The goods or services that businesses offer in association with their brands only achieve acclaim as a result of savvy marketing, investment in online advertising and years or even decades of building a reputation. Too often brand owners are shaken by the realization that they may not own the brand they have worked so hard to build. Our files are rife with new clients who have come to us in the middle of a brand dispute that had never anticipated.
For these reasons, and many others, protecting trademarks is a vital step to safeguard the value of a business. The United States federal trademark registration process provides additional benefits to deter trademark fraud, mimicry, and unauthorized use by third parties. Equally important is the fact that the United States is a “first to file” country when it comes to trademark rights and often failing to get your trademark on the register before another user can result in the loss of significant rights.
The first step in registering a trademark involves searching existing marks and common law users, which provides vital business intelligence on competition that may be using the same or similar marks. While searching seems simple and we encourage clients to do a basic investigation on their brand, an actual attorney-reviewed profession search will turn up phonetic equivalents, foreign language marks and a host of other issues that non-lawyers are not typically able to discover.
What does a trademark protect?
Trademark registration ensures you hold the exclusive legal rights and benefits in the United States offered under federal trademark law. It is one of the last legally protective monopolies in the United States. Being the first to register a mark provides numerous benefits, including nationwide notice of your claim to the mark, litigation advantages if your trademark is challenged, and it will prevent the registration of confusingly similar marks by third parties. Likewise, under the Madrid Treaty, United States trademark registrations entitle the holder to file in any or all of more than 90 countries internationally relying on the United States trademark as a basis for the foreign trademark registration (sometimes called the Madrid Protocol). See our International Trademark page for more information on our international trademark practice.
Dunlap Bennett & Ludwig successfully obtains more than 1,000 trademarks every year. With a number of former employees serving as US trademark examiners, and decades of trademark experience with the USPTO (United States Patent and Trademark Office) and foreign trademark offices, our team is intimately familiar with the intricate laws, regulations, and caselaw pertaining to federal registration, increasing the likelihood of success for your application. Our initial rejection rate for new applications is far lower than average rejection rates for law firms in general, which is close to 70 percent, and far lower than non-law firm initial rejections, which is close to 80 percent. Likewise, we are licensed to file trademarks under the Madrid Protocol in over 90 countries, and we even have an office in Canada where we are licensed to file Canadian trademarks (which is not a signatory to the Madrid Treaty).
Trademark Rejections and Trademark Office Actions
Office actions are a type of response you may receive from the U.S. Patent and Trademark Office (USPTO) regarding your trademark application. They outline issues with the application that need to be addressed before registration can be granted. The issues cited in an Office Action can range from simple disclaimers to very complex likelihood of confusion refusals citing multiple marks. Further the response to an Office Action can affect the scope of the trademark’s final registration. It is important to respond to an Office Action with a complete understanding of the issues and response options. With experienced attorneys who understand the host of potential direct response options, and even some indirect legal options (such as attempting to cancel an opposing mark or seeking concurrent use), Dunlap Bennett & Ludwig trademark lawyers are the best choice for business who seek success at the USPTO.
Trademark Trial and Appeals Board Cases
The Trademark Trial and Appeal Board (TTAB) acts as a court of law for trademark registration matters within the USPTO. The trademark judges may determine your right to register a trademark, yet cannot rule on issues of infringement, damages, unfair competition or whether or not you have the right to use a trademark. Dunlap Bennett & Ludwig can advise, manage, and defend or prosecute TTAB cases in an efficient and intelligent manner that many firms cannot match. With offices just minutes from the USPTO where the TTAB holds hearings, selecting a firm local to the trademark office saves money while ensuring you have the most experienced attorneys on your side. Likewise, Dunlap Bennett & Ludwig can help you succeed in state or federal court in matters of infringement of damages. See our litigation page for more information about our trademark litigation practice.