International and United States Trademark Registrations
Brand names, slogans, and logos are a vital part of every business. The goods or services that companies offer in association with their brands only achieve acclaim due to savvy marketing, investment in online advertising, and years or even decades of building a reputation. Too often, brand owners are shaken by realizing 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.
The Trademark Act of 1946, also known as the ‘Lanham Act’, is the U.S. federal law governing trademarks defining a trademarks (or service mark) as “…any word, name, symbol, or device, or any combination thereof…” When filing a trademark with U.S. Patent and Trademark Office (USPTO), two separate kinds of marks are recognized: ‘standard character’ marks and ‘special form’ marks. Standard character marks do not have a design and protect the wording of the mark regardless of how it may appear, and regardless of font, capitalization, stylization, layout, and the like. Special form marks are any design mark, usually logos, including ‘composite marks’ (a wordmark with a design element like a logo); trade dress (a particular color scheme, packaging or shape); product or packaging configurations; and other non-traditional marks. In short, ‘standard character’ marks protect the words themselves, while ‘special form’ marks protect aesthetic elements (which can include words being written in a certain way).
Why Register a Trademark?
Business register trademarks for a variety of reasons including:
- protection against an infringement lawsuit; and
- adding real monetary value to a business; and
- to put competitors and the public on notice of brand rights and ownership; and
- to strengthen the legal protection of the brand (enhancing the rights of the owner of the trademark to send cease & desist letters or bring claims against others); and
- the ability to file international trademarks in other countries based on the United States trademark under the Madrid Treaty.
The first step in registering a trademark involves searching existing marks and common-law users, which provides vital business intelligence on competition using the same or similar trademarks. While trademark searching seems simple, we encourage clients to do a basic investigation of their brand before conducting an attorney-reviewed search. Some issues will not be spotted in either a simple Google trademark search or a search of the USPTO website. An attorney-reviewed, professional search will turn up phonetic equivalents, foreign language marks, and a host of other relevant similarities that non-lawyers are not typically able to discover.
To get started – click the button below and submit your trademark or brand name. If the first search comes back with a conflict after our attorneys review the report, we will run a second search and attorney review at no cost.
For these reasons and many others, protecting trademarks in the United States by filing a trademark application is a vital step to safeguard a business’s value. The United States federal trademark registration process provides additional benefits to deter trademark fraud, mimicry, and unauthorized use by third parties. Failing to get your trademark on the register before another user can result in the loss of significant rights or a considerable expense to regain one’s prior rights. See our video and information on why searching a trademark before you file is vitally important.
To start the trademark registration process click our online trademark submission button below. All submissions will be reviewed by a trademark lawyer who will discuss your application with you before it is filed.
Trademark registrations can protect many things. Usually, trademarks protect names, symbols, devices, and logos, but they can also protect sounds and even smells. 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 trademark, litigation advantages if your mark 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.
See our International Trademark page for more information on our international trademark practice.
Dunlap Bennett & Ludwig successfully obtains hundreds of trademarks every year. We have several former employees serving as U.S. trademark examiners. With decades of trademark experience at the United States Patent and Trademark Office and foreign trademark offices, our team is intimately familiar with the intricate laws, regulations, and case law involved in a 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, close to 70 percent, and far lower than non-law firm initial rejections, which is close to 80 percent. Dunlap Bennett & Ludwig maintains an extensive network of foreign associates to file trademarks in any trademark office worldwide and is experienced with Madrid Protocol applications that streamline the trademark registration process for its 100 + member countries.
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 must be addressed before registration. The issues cited in an Office Action can range from simple disclaimers to the 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 vital 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 response options, and indirect legal options (such as canceling an opposing mark or seeking concurrent use), Dunlap Bennett & Ludwig trademark lawyers are the best choice for business who seek success at the USPTO.
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 efficiently and intelligently 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 a state or federal court in matters of infringement of damages.
US E-Seller Trademark Management Program
The US E-Seller Program lets owners of trademarks who have had their company brand stolen and used by others on websites and e-sellers others like Amazon.com and Wish.com recover money at little or no cost, provided there is a high level of infringement of a registered trademark. Please review the brochure below for more information.