Connecticut Trademark Lawyer Blog

U.S. Trademark Law Basics

Tue, 24 Apr 2012 09:11:09 -0500

If you are a company seeking a U.S. trademark registration for its business name, there are strict rules that must be followed. These rules are made available to the public at the United States Patent and Trademark Office website.

U.S.Trademark Statutes
The federal statute that governs U.S. Trademark registrations is commonly known as the Lanham Act, 15 U.S.C. Section 1051 and subsequent provisions. The Lanham Act is the CT trademark attorneys basis for seeking and maintaining trademark registrations, as well as bringing trademark infringement and unfair competition claims.

Trademark Rules of Practice
In addition to the Lanham Act, there are Rules of Practice that govern U.S. Trademark application review and approval procedure. These federal rules may be found in Title 37 of the Code of Federal Regulations. The Rules are broken down into the following sections:

-- Trademark Rules: Part 2
-- Trademark Assignments: Part 3
-- Classification of Trademark Goods and Services: Part 6
-- Madrid Protocol Trademark Filings: Part 7
-- Representation of parties before the USPTO: Parts 10 and 11

The primary purpose of the Trademark Rules of Practice is to advise U.S. trademark attorneys and trademark owners of the regulations and rules that have been established to supplement U.S. Trademark statutes, making all parties who have interests before the Trademark Office aware of their rights and obligations.

If you are the seeking a business name trademark, it is advisable to speak with an experienced U.S. trademark attorney to assess your trademark rights and options. For further information on U.S. Trademark Law, please contact James Hastings at (203) 244-4264.

What is Trademark Infringement?

Sat, 21 Apr 2012 10:03:28 -0500

Trademark law provide companies with important exclusive ownership rights to use their trademark on goods and services to the exclusion of other parties. If a competitor begins to use an identical or similar trademark for the same or related products, a claim of trademark infringement may be the result.

Being accused of trademark infringement by another party is a serious claim. In order to assess the merits of such allegations, it is helpful to have a working knowledge of the definition of trademark infringement and the legal standards for prevailing in such an action.

Trademark Infringement Basics

Generally speaking, trademark infringement is when one party is using a trademark that is confusingly similar to an existing owner's trademark such that there exists a "likelihood of confusion" between the goods and services offered by the junior owner and the senior owner. Like most areas of law, whether a party can prevail in a trademark infringement claim is dependent on the law and facts of the case. Certain factors the courts look at in comparing the trademarks of plaintiffs and defendants include the following:

-- similarity in sight, sound, and meaning
-- relatedness of the goods and services being offered for sale under the marks
-- the fame of the senior user's trademark
-- the number and nature of similar trademarks on similar goods and services

Know Your Trademark Infringement Rights

If you or your company is involved in a trademark infringement dispute, you have rights. There are many good resources to find out more about trademark law, including the United States Patent and Trademark Office and my related blog, the Trademark Law and Litigation Guide. Since trademark law is complex, it is always advisable to speak with an experienced CT trademark infringement attorney prior to undertaking any action or responding to a trademark cease and desist letter.

Trademark Application Basics

Mon, 26 Mar 2012 11:05:48 -0500

For Connecticut companies, filing a trademark application with the United States Patent and Trademark Office is the first step in protecting a company's valuable Connecticut trademarks and brand names.

In the United States, the trademark application is usually filed on one of two bases: (1) use in commerce or (2) intent-to use (ITU). For companies that have not yet used the trademark, an ITU application allows marketing and creative departments to file for a trademark registration during the product development process. This important feature of United States trademark law permits companies to obtain an important priority filing date and preserve whatever rights they may later obtain through use.

Regardless of the filing basis, every trademark application is first assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements. Upon review, the Examiner has the right to initially refuse the application on various legal and factual grounds. If the trademark examiner finds inadequacies in the application, she will issue an office action that details the reasons for the initial refusal of registration or request for additional, corrective information. Such grounds for refusal may include the following:

- a likelihood of confusion with a previously registered trademark
- the applied for mark is merely descriptive of the products;
- the applied for mark is primarily, merely a surname;

and/or several other factual and legal grounds as to why registration should not issue

If your trademark application has been initially refused registration, it is recommended that you hire an experienced Connecticut trademark attorney to prepare a response to the Office Action. Please call me for a free consultation at (203) 244-4264.

Hire a Connecticut Trademark Attorney!

Thu, 22 Mar 2012 10:06:08 -0500

Think registering a trademark is a fast and simple? Think again!

According to the United States Patent and Trademark Office, the trademark registration process consists of 17 distinct steps prior to a trademark application being approved for registration and a certificate of trademark registration issuing. Despite this fact, many "trademark companies" (non-lawyers) and trademark lawyers alike would have potential clients believe that it is relatively easy to obtain a United States trademark registration.

Here are some of the trademark registration steps as described by the USPTO:

- identify your trademark format
- identify the goods and/or services for which you seek protection
- search the USPTO database for identical trademarks
- identify the proper basis for filing
- prepare and file the trademark application
- await results of review of the application by the U.S. Trademark Office

Once the U.S. Trademark Office examines the application, it is possible that it will initially refuse the registration based on one of several procedural or substantive grounds. Knowing U.S. trademark law could be the difference between successfully overcoming the refusal to register and having your trademark registration refused.

The complexity of the trademark registration process is one of several reasons why It is important to speak with a qualified Connecticut trademark attorney prior to adopting a trademark for use with your products and services. By doing so, a Connecticut business can save time and money, and avoid risks to its business due to ignorance of trademark laws.

Trademark Clearance: 2 Common Mistakes

Wed, 07 Mar 2012 16:40:03 -0500

To the casual business owner, it would seem that registering a trademark in Connecticut for a new product or service is simple. Nothing could be further than the truth.

Many companies do not know how to properly clear a trademark for use and registration in association with their products. The failure to do so can result in major risks to the business, including claims of trademark infringement and resulting monetary damages. Here are two important rules to remember:

Rule #1: A Business Name Search is Not a Trademark Search

A Connecticut business name search is not the same as a trademark availability search. If I have a business that I want to call "Pepsee, Inc." for beverages, chances are that the name would be available for a business name registration if there is not an identical "hit" on the search results. If I think that this pleasant fact now entitles me to operate a beverage company called "Pepsee," perhaps I should think again. Therefore, secretary of state business name searches, while a good place to start, are of very little value.

Rule #2. Always Rely on the Opinion of a Qualified Connecticut Trademark Attorney

The failure to have a Connecticut trademark attorney conduct a full trademark search of the United States Patent and Trademark Office records, state trademark office records, and common law listings prior to filing a trademark application is one of the most common mistakes that Connecticut business owners make. While understandable, it is important to learn this valuable lesson to avoid unpleasant legal consequences.

Remember, trademark law is a specialized area that requires skill and knowledge. If your brand name is important to you, then make a small investment in a trademark lawyer to make sure that you get it right the first time.