The law firm specializes in all aspects of intellectual property, including trademarks. Trademarks protect your valuable good will, by preventing others from benefiting from your good name. A trademark bars others from using your name after you have spent time and resources establishing your reputation of your services or the quality of your product.
Domain names can now be trademarked. Our law firm has considerable experience in protecting domain names.
An all too common problem is when another uses a domain name close to yours, or even a common misspelling of your domain name. Sometimes all they do is redirect internet traffic to your valid domain. This can cost you money, or even lose valuable customers. The law firm is ready to help you with these problems.
BASIS FOR FILING TRADEMARKS OR SERVICE MARKS
Two types of trademark or service mark applications are possible in the United States Federal Trademark system. First, there are “intent to use” marks, for those just starting up a new business or establishing a new product line. Second, there are marks for “use in commerce”, those marks that have actually been used in interstate commerce. A mark filed under “intent to use” can later be changed to “use in commerce” as your mark enters interstate commerce. The law firm is experienced in both types of marks.
Intent to Use Marks- § 1 (b) of the Lanham Act
These applications are perfect for the new business. You can file for your mark well before you have even decided your complete line of services or products. Because your mark has not entered commerce, you can later change the exact classification of the mark. It is very important to understand the criticality of correct classification. Recent cases at the Trademark Trial and Appeals Board have found fraud for even slightly incorrect classifications of trademarks.
Use in Commerce- § 1(a) of the Lanham Act
Once your mark has entered the marketplace, i.e. bona fide use of the mark within the ordinary course of trade which can be lawfully regulated by Congress, as set forth in § 45 of the Lanham Act, 15 U.S.C. § 1127, you can establish use in commerce. It is of the utmost importance, particularly in light of recent decisions by the Trademark Trial and Appeals Board, that the use be coextensive with the classification, to avoid issues of fraud. The law firm is experienced in establishing the exact classification for your mark.
Corresponding Foreign Registration
Under § 44 of the Lanham Act, 15 U.S.C. § 1126, applicants are permitted to register a mark in the United States when the applicant owns the mark in a foreign country. The rules for filing based on a foreign registration are very intensive and based on international treaties and multilateral treaties. The law firm is knowledgeable in these areas and well equipped to help the foreign applicant. Many rules differ greatly between the United States and foreign countries, and an applicant is advised to seek practitioners in the United States to best protect their foreign mark.
The United States is now a signatory to the Madrid Protocol, governed by § 66 (a) of the Lanham Act. International applications filed under the Madrid Protocol can be prosecuted in any country that is a signatory to the Madrid Protocol. An applicant engaged in international commerce can file a single application, and prosecute the application in any country that belongs to the Madrid Protocol.
Applicants cannot be too cautious when applying for protection in the United States, based on an international application. Requirements vary greatly from country to country. The United States has much stricter standards, particularly in classification. Classification that is perfectly acceptable in European countries, would be fraudulent in the United States, in many instances. The applicant is advised to seek practitioners in the United States when prosecuting an international application in the United States. The law firm is very knowledgeable in properly formatting an international application to United States standards.
TYPES OF TRADEMARKS AND SERVICE MARKS
Trademarks versus Service Marks
Trademarks are for products, for instance Coca Cola ®. They are intended to protect a manufactured product that is sold in interstate commerce.
Service marks are for business such as medical practices, accounting firms, plumbing companies, etc. They protect you from unscrupulous persons that open businesses under your good name, piggy-backing on your hard work after you have established a good reputation with your clients.
The form of the mark can be simple words, as in a domain name, or Coca Cola ®. Or the mark can be established for a pictorial logo, as the familiar running deer associated with John Deer ®. Often a word mark is embedded in a pictorial mark; and both the word mark and the picture are separately trademarked for greater protection.
Collective marks include both trademarks and service marks. They are applied for by organizations or associations which owns the mark. Individual members of the organization must use the mark under the control of the organization. An example would be Blue Shield ®.
Collective Membership Marks
This type of mark is not associated with goods or services. Rather, a collective membership mark is used by members of the association to indicate membership in the association.
A certification mark, as it name implies, is used to establish a certain quality, geographical source of a product or service, certain manufacturing standards, etc. The mark belongs to an organization, but individuals or businesses that do not belong to the organization can use the mark if they meet the standards required by the organization. Familiar examples would be Cognac ®, for brandy from a certain region of France, or U.S. Grade A ® associated with a minimum level of quality for food.
TRADEMARK AND SERVICE MARK SERVICES
The law firm offers all trademark and service mark services.
Marks need to be searched, to establish their availability. The firm is well able to not only search a mark, but also to give an opinion as to the register ability of the mark.
Filing Trademark and Service Mark Applications
The law firm is ready to file and prosecute your applications in the United States, as well as file your international application.
Prosecuting International Marks in the United States
We are always here to conform your international application, filed in a foreign country, to proper United States standards. In view of the recent decisions by the Trademark Trial and Appeals Board, it is critical that a practitioner familiar with United States standards prosecute your international application before the United States Patent & Trademark Office.
Post Publication Actions
We are experienced in handling your mark renewals, and any amendments that are necessary. In view of recent decisions by the Trademark Trial and Appeals Board, many marks in use need to have their classifications updated through various amendment processes. We are ready to help. Foreign owners of marks in the United States should be particularly aware of the need to evaluate and update their marks in light of changes in United States case decisions.
Petitions and Appeals
The firm is equipped to handle any petitions or appeals before the United States Patent & Trademark Office.
Inter Partes Proceedings
When two parties apply for the same mark, very complex inter partes proceedings are undertaken within the United States Patent & Trademark Office. The individual or practitioner not familiar with United States practice is in no position to handle these matters. We at the law firm are knowledgeable in these complex issues and ready to help.
Our principal attorney, Thomas J. Wallen, P.E., is the 2008 Chair of the Inter Partes Committee for the American Bar Association.
Many times a mark is assigned, or even sold to another. State contract law, and federal law can both often be involved. The firm is always available to assist the owner of a mark in these complex negotiations and contract areas.
Marks can be contested within the United States Patent & Trademark Office, through a process known as cancellation. This is an area that is very specialized and rule intensive. This is an area of the law where retention of a specialist is most advisable. The law firm is there if you need us, and well equipped to help you with these complex and specialized undertakings.
The law firm is ready, willing and able to help you should the last resort become unavoidable, through court litigation. We will help you through the concurrent state and federal options for litigation.