A company’s name or logo is often found to be one of its most valuable assets. Accordingly, it should be protected to the fullest extent possible. Ghaneie Law helps companies evaluate, secure, and protect their trademark rights.
Whether it involves filing the initial application, monitoring for potential infringement, enforcing your trademark rights, or resolving trademark disputes, we provide our clients with a broad range of services and strategic guidance on all trademark related matters.
Trademarks help consumers recognize a given service or product as coming from a specific provider. By registering your trademark or service mark, you are helping to ensure that your brand is secure and available for your use on a long-term basis.
After registering your trademark you gain many additional rights that assist with preventing others from copying what you’ve worked hard to create. In the U.S., all federal trademark applications are submitted to and examined by the U.S. Patent and Trademark Office (USPTO).
Filing a trademark application requires a comprehensive understanding of trademark law. The first step of the application process requires a thorough search to determine if, and to what extent, a mark may be protected. One of the most important considerations when seeking trademark protection is identifying the mark’s “first use in commerce”. The date when the trademark was first used in the stream of commerce is not only required to obtain trademark protection, it can heavily impact.
Often, trademark protection for a good or service may be sought prior to using the mark in the stream of commerce. Such applications are filed as an “Intent-to-Use” application and require a subsequent form, referred to as a “Statement of Use”, to be filed once the mark has been used in the stream of commerce.
Another extremely important element of creating a brand is to avoid the likelihood of confusion with pre-existing trademarks. Likelihood of confusion can present itself when trademarks are really similar to one another such that consumers might mistake the product or service as coming from a single source rather than two different companies. A skilled trademark attorney helps to avoid the likelihood of confusion as it is fundamental when determining whether a mark is able to be registered, as well as whether a registered mark has been infringed.
If another party starts using your registered trademark, or a mark which is confusingly similar, without your express permission, there are many remedies under the law which you may be entitled to. Our team will examine the facts of the case to identify what options are available as it relates to enforcing your trademark rights. This may include seeking an injunctive order, monetary compensation for damages incurred, and other remedies which may be available depending on the facts of the case.
A trademark application gets published under the USPTO’s Official Gazette for 30 days. During this period, another party has a right to file what’s known as a Notice of Opposition when they believe the new registration would harm their own brand. Similarly, a Petition for Cancellation may be filed when a party believes their trademark is being harmed by an existing registered trademark.
Grounds for filing a Notice of Opposition or Petition for Cancellation can include:
Priority and likelihood of confusion.
Fraudulent filing with the USPTO.
No bonafide use of the mark in commerce.
Lack of inherent distinctiveness and failure to obtain secondary meaning.
Ghaneie Law can help you evaluate the facts of the case and, when appropriate, file a Notice of Opposition or Petition for Cancellation before the U.S. Trademark Trial and Appeal Board (TTAB), an adjudicative body of the USPTO.
One of the most important aspects of building a brand is having a strong trademark. A strong trademark is one that effectively differentiates your goods or services from others. This is important because a strong trademark provides broad protection. It is important to understand that the breadth of trademark protection is heavily influenced by a number of factors. Accordingly, a weak trademark can consequently be costly and difficult to defend.
At Ghaneie Law, we carefully consider and advise our clients on how various factors may affect the strength of their trademark.
The strongest trademarks are ones that are creative and distinct i.e. inherently distinctive. The USPTO has three different categories for inherently distinctive trademarks including fanciful, arbitrary, and suggestive.
Fanciful trademarks: these are words that are made up, or invented. The words only have relevance for their particular product or service. Xerox®, for example, was entirely invented by the company to cover their innovative paper copying process. This trademark is all-original and memorable just for their specific application and is found by the courts to be the strongest type of trademark available.
Arbitrary trademarks: these are for words that don’t have an actual connection to the goods or services being trademarked. A great example is Apple® computers. While the electronics Apple® produces have nothing to do with apples, Apple® has a registered trademark as they pertain to the electronics industry.
Suggestive trademarks: these are a kind of middle ground between fanciful and arbitrary. The words have some connection or implication towards utility but don’t state them outright. For example, Little Ceasar’s “Hot N’ Ready®” pizza provides an impression that the to-go pizza is fresh out of the oven.
While inherently distinctive marks provide solid protection, there are instances where trademarks that are not inherently distinctive can still prove to be extremely valuable. With the help of a skilled trademark attorney, a descriptive mark has the potential to gain distinctiveness, where it can then set apart a brand in a very unique way.
Two types of trademarks fall under category of not being inherently distinctive
Descriptive mark: descriptive trademarks are words or designs that simply describe the goods or services and are therefore without specific distinction. For example, using the term computer in the name of a computer repair shop isn’t inherently distinctive but has the potential to acquire distinctiveness. When this happens, the trademark owner then has rights to an already-recognized mark specifically for their intended application.
Trade Dress: a bottle design like the famous Coca Cola® bottle is a useful tool for brand recognition. Like descriptive marks, a trade dress by itself is not distinctive but can become so by utilizing available protection.
With our experience in creating the best course of action for a wide range of different trademarks, the team at Ghaneie Law is uniquely positioned to help get you the right type of trademark to provide the best possible protection under the law.
Generic marks are not registrable or enforceable. A generic mark is a common word for a good or service that all are free to use—for example using “butter” for a creamy spread. It is important to note, even a strong fanciful mark can become generic over time. Aspirin is a great example of a product that was once unique and is now commonplace. This is why trademark owners need to be diligent about keeping their trademark secure and enforcing their rights, when required.
Helping companies secure and enforce trademark rights for their brands and products is a primary focus of our practice at Ghaneie Law. Our team provides a customized roadmap to develop a strong trademark application, performs thorough trademark searches, and will guide you throughout the USPTO’s application process. Contact us today to schedule a trademark consultation.