Florida Patent Attorneys & IP Lawyers : Florida Intellectual Property Law Blog

Many business owners believe that filing for a business license, submitting articles of incorporation, or submitting a fictitious business name statement gives them exclusive rights to use their name as a trademark and prevents competitors from using similar identifying marks nationwide. As any qualified intellectual property attorney familiar with the United States Trademark and Patent Office regulations can tell you, this is simply NOT TRUE. Business licenses, fictitious name statements, and articles of incorporation are not substitutes for Federal trademark registration. Mistaken assumptions about trademark rights can be very costly to a business. Trademark issues should be addressed at the early stages of business development to avoid such problems. If you have a specific matter involving a trademark,it is advis

Trademark law provides the exclusive right to use a trademark that serves to distinguish the goods of one person from another. A trademark typically is a word, phrase, logo, design, symbol, or a combination thereof. Trademarks serve to identify the source of a particular good, while Service marks identify the source of a particular service. Brand Names – Words used by a company to identify their name or the name of a product or service. Well known examples include Coca Cola, McDonalds, and Microsoft. Slogans – Catch phrases used to identify a product or service. Some well-known examples: We Bring Good Things to Life (General Electric); Soup is Good Food (Campbell); and Don’t Leave Home Without It (American Express). Logos – Designs or graphical images associated with a product or service. Well

An Affidavit of Use must be filed for a trademark registration to remain valid. This affidavit must be filed with the United States Patent & Trademark Office between the fifth and sixth year following registration, and within the year before the end of every ten year period after the date of registration. With payment of an additional fee, the registrant may file the affidavit within a grace period of six months after the end of the sixth or tenth year. A section 9 renewal application must also be filed by the registrant within the year before the expiration date of a registration, or within a grace period of six months after the expiration date, as long as the additional fees are paid. Registrations granted prior to November 16, 1989 have a 20-year term, as long as an affidavit of use is timely

I cannot really give you an exact time when registration will issue after a trademark application has been filed. However, I can give you a reasonable time frame of what to expect. Usually, an applicant will receive a filing receipt approximately six months after filing the application. The filing receipt includes the serial number of the application, which must be included in all future correspondence with the United States Patent & Trademark Office. After about six or seven months from the date the application was filed, you should receive a response from the United States Patent & Trademark Office. However, a total of one year to several years may elapse while the application is being processed, depending on the filing basis and the legal issues which may arise during exam

The United States Patent & Trademark Office reserves the right to refuse registrations of trademarks it feels do not comply with its guidelines. I’ve outlined these for you here, to give you a better idea of what they are. It should be noted that not all words, names, symbols, or devices function as trademarks. A great example of this are marks that are merely the generic name of the goods. I am also listing other grounds for refusal discussed in the Trademark Act, such as the following. The proposed trademark contains immoral, deceptive, or scandalous matter. The proposed trademark may cast a negative light on a person (living or dead), institutions, beliefs, or national symbols, or refer to them contemptuously. The proposed trademark utilized the flag or coat of arms, or other insignia of the United

There are several basis for foreign applicants filing registrations with the United States Patent & Trademark Office. This process is acceptable if there is use in interstate commerce or commerce between the United States and a foreign country. Another situation is when there is a bona fide or good faith intention to sue the mark in interstate commerce or commerce between the United States and a foreign country Still another example of where this would come into play is when there is ownership of an application filed in a foreign country (as long as it takes place within six months of the date to file a foreign application). When there is ownership of a foreign registration (with a copy) then this practice is acceptable as well. A final basis would be the extension of protection of an inte

The page which shows the trademark that the applicant is seeking to register is known as the “drawing.” According to the United States Code, the drawing must depict the trademark as it is actually utilized. If the application is based on a bona fide intent to use, this drawing has to show the trademark exactly as the applicant intends to use it. If the application is based on a foreign application or registration, the drawing must show the trademark as it appears or will appear when registered in a foreign entity. The drawing has to depict only one trademark, as the applicant cannot register more than one trademark per application. A drawing is required in all applications, and is used by the United States Patent & Trademark Office for a few reasons, including printing of the trademark

The particular way the mark is actually used in the offer of services or on the goods is what is known as a specimen in the intellectual property realm. Acceptable specimens of use for a trademark include labels, tags, or containers. Specimens composed of magazine advertising or brochures are typically used for service marks. It should be noted that unless the specimens are bulky or larger than 81/2″ by 11″ (in which case facsimiles are acceptable), one actual specimen for each class of goods is required for filing with the United States Patent & Trademark Office. According to the rules enumerated in the United States Code , if the application is based on actual use in commerce, specimens are required, and must be filed with the Amendment to Allege Use, or the Statement of Use if the application is

Even though federal registration is not valid outside of this country, qualified owners of trademark applications either pending before the United States Trademark & Patent Office or of an issued registration, may seek registration in any country recognizing the Madrid Protocol by filing a single application. This single application is referred to as an “international application” with the International Bureau of the World Property Intellectual Organization, through the United States Patent & Trademark Office. It should also be noted that select countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treatise. It is important, however, to consult the laws of each

Although obtaining counsel is not a required for Federal Trademark Registration with the United States Patent & Trademark Office, I recommend employing an attorney who is familiar with intellectual property matters, as there are numerous substantive and procedural requirements of the Trademark Act and Trademark Rules of Practice that must be complied with, regardless of who is filing the application. These requirements are usually too complex for the average person who does not possess a background in intellectual property law to response to appropriately, which could lead to delays or abandonment of the mark. One can find the names of qualified trademark attorneys in their area by contacting the local bar association for their city (i.e. in the South Florida area, there is th

There are no federal regulations governing the use of the designations “TM” or “SM” (Trademark or Service Mark) by the United States Patent & Trademark Office. Local, state, or foreign laws may govern use of these designations, and a trademark attorney should be consulted. Once the mark is actually registered in the United States Patent & Trademark Office, the federal registration symbol may be utilized. It is important to note that the registration symbol may not be utilized before the mark has actually become registered, even though there may be a pending application. Only goods or services that are the subject of the federal trademark registration should use the federal registration symbol. You would be wise to consult with a Florida trademark lawyer first, before underta

Though not required, there are advantages of registering trademarks with the United States Patent & Trademark Office which offer several benefits to the registrant. There is notice given to the public of the claim of ownership of the mark made by the registrant, as well as national legal presumption of ownership granting exclusive rights to use the mark on or in connection with the goods or services that are detailed during registration. The benefits of registration entitle registrant to invoke jurisdiction of federal courts, and can also provide the basis for registering the mark in foreign countries, as well as the U.S. Customs Service to prevent entry of infringing foreign goods into this country. You would be wise to consult with a Florida trademark attorney first, befo

Many people will recognize the symbol of the encircled but do not realize its significance. This symbol denotes that a trademark has been registered and should only be used if indeed a registration has issued. When one claims common law rights to a trademark or service mark, they can use the Ѣ or (sm) symbols, respectively. The Ѣ symbol also can be used if awaiting the issuance of federal registration from the United States Patent & Trademark Office. It should be noted that merely placing a Ѣ or (sm) symbol in close proximity to the mark does not guarantee that the trademark is acceptable and entitled to protection by the United States Patent & Trademark Office. Another issue to keep in mind is that the United States Patent & Trademark Office frowns upon the use of any of these trademark symbols on the specimens themselves when the applica

When a trademark has been registered with the United States Patent & Trademark Office in the Principal Register, its benefits are maximized, as it is given constructive notice, which gives notice of the registration. After five years the trademark becomes incontestable as well, and it is able to withstand challenges by others, due to a presumption of validity. On the other hand, these same advantages are not provided in the Supplemental Register of the United States Patent & Trademark Office. However, the owner of a trademark registered in the Supplemental Register can display it with the official registration symbol and prevent federal registration of the trademark by other parties. Trademarks in the Supplemental Register can be found in federal trademark searches, and can later be amended to the Principal Re