Trademark Attorneys at Lewis & Hand, LLP – a New York Law Firm

You’ve gone through meetings and focus groups to come up with a new brand name, or had a sudden flash of inspiration.  You’ve picked the perfect mark for your business.  Can you start using it?  Do you need a trademark registration?  What is the difference between ^TM and ®?  What if another company is already using the same mark?  What if it’s not exactly the same? What is the difference between a trademark registration and a logo registration? Do you need to register both?

Brooklyn, New York trademark lawyer Brett Lewis and his team provide cost-effective legal services, to help clients choose an effective trademark, verify that the mark is clear to use (strategize how to deal with any potential conflicts) and register it. For your initial trademark consultation, contact Lewis & Hand, LLP.

Lewis & Hand, LLP Trademark Attorneys have experience advising U.S. trademark holders on adopting and implementing global trademark registration and protection plans, as well as coordinating trademark opposition proceedings in the U.S. and internationally. Our attorneys also serve as local counsel for foreign trademark holders seeking to protect their marks in the United States.

Whether it is your service mark or product name, company logo or slogan, Lewis & Hand, LLP Trademark Lawyers and Intellectual Property Litigation team can help you protect the valuable intellectual property and goodwill of your business.

Different Levels of Trademark Distinctiveness

The more distinctive your trademark, the easier it is to register and protect. The US Patent and Trademark Office (PTO) recognizes five different levels of distinctiveness among trademarks:

• Fanciful – a word that is purely invented and has nothing to do with the product it describes. “Fanciful” trademarks are the strongest type of marks. Examples include “Yahoo!” and “Kodak”.
• Arbitrary – using a common, dictionary word in a way that has nothing, whatsoever, to do with the product, such as “Apple” for a company that sells computers.
• Suggestive – it is not immediately apparent from a suggestive trademark what type of goods or services it describes, but there is some connection with the product that becomes apparent in context.  For example, Sugar does not describe a dating service, but is suggestive of some aspect of dating.
• Descriptive – these marks describe some quality of what is being sold.  Because they are considered non-distinct, they are more difficult to register and harder to protect against infringement. However, descriptive trademarks can gain distinctiveness through the advertising efforts, success and popularity of a business.
• Generic – these terms generally cannot be registered as trademarks.  An example of a “generic” use of a mark would be the word mark Real Estate Broker for a licensed seller of Real Estate.

After You’ve Chosen Your Trademark: The Registration Process

What does it cost to clear and register a trademark?

The cost of registering a trademark or logo varies depending on several factors – whether the use of the mark falls into one or more than one class of goods and services (this determines the Patent and Trademark Office filing fees), whether the mark consists of words only, or includes a design element, and the degree of clearance that your business interests – and budget – require. We offer flat fee rates for trademark and design mark (i.e., logo) clearance and registration on a case by case basis. Where Full Mark searches are not ordered and/or where clearance letters are not provided, we are able to offer trademark knockout and application services at a reduced rate.

What is a knockout search?

The first step in clearing your trademark for registration and use is to conduct a search on the United States Patent and Trademark Office (PTO) database, to see if the name is already taken for the type of goods and services you plan on offering. A proper knockout search looks for exact matches, close variations, phonetic equivalents and any other similar marks for related goods and services that could be potential obstacles to your own mark’s registration.

What is a Full Mark search and why do I need one?

Cosmo Castorini said it best in Moonstruck:  “There are three kinds of pipe. There’s aluminum, which is garbage. There’s bronze, which is pretty good, unless something goes wrong. And something always goes wrong. Then, there’s copper, which is the only pipe I use. It costs money. It costs money because it saves money.”

A Full Mark search is like copper pipe.  It is a comprehensive search of federal, state and common law (i.e., unregistered) trademark use, as well as Internet domain name and business name use, performed by a reputable third party search service.  A Full Mark search costs money, but by identifying potential issues before you spend even more money on marketing and branding a new mark, it can save you a fortune in future legal headaches.  It also greatly reduces the likelihood that you will be sued for trademark infringement or have your mark application opposed.

Do I need to have a Full Mark search?

Ordering a Full Mark search is considered to be a best practice among trademark practitioners, but is not legally required.  Ultimately, whether or not to order a Full Mark search is a client’s decision, considering budgetary constraints and other factors, such as distinctiveness of a mark and a client’s pre-existing long term common law use of a mark.  We offer trademark clearance and application services at a reduced rate where Full Mark searches are not ordered, and where clearance letters are not provided.

What is a clearance letter?

A clearance letter is a formal summary and analysis of the results of a clearance search.  It discusses potentially problematic common law or registered marks, and addresses differences between the marks.  In it, we provide the basis for our opinion that a mark is clear for registration and use in “good faith.”  A clearance letter provides protection in certain jurisdictions against a finding of willful infringement, and an award of treble damages and attorneys’ fees.

How does the application process work?

The application process entails preparing and submitting a trademark application, with specimens of use (if applicable, as some marks can be filed as “Intent to Use” before interstate use in commerce has been made), a description of your goods or services that complies with PTO standards, and an application fee to the PTO. After all of this is submitted, it takes roughly 3 months to receive an initial response from the PTO, to see if there are any issues that must be addressed. Lewis & Hand, LLP can help prepare your application to give your trademark a better chance of proceeding towards registration without unnecessary delays.

How long does it take to get a registration?

Assuming your mark application is acceptable and the PTO has no objections, it is possible to get a registration in 6 – 7 months – inclusive of PTO examination wait-time and the 30 day publication period. Sometimes, the PTO will issue a minor Office Action, for example, to require a disclaimer of common words – in which case the registration process delay is generally minimal.  In other cases, the PTO will issue an Office Action based on a substantive issue, such as likelihood of confusion with another mark, or descriptiveness.  Depending on the circumstances of the refusal, a substantive Office Action can cause significant delays to registration – ranging from 2 – 3 months to several years.  Once a mark application makes it through the PTO examination process, it is published for a period of 30 days, during which third party mark owners and other interested parties have the opportunity to oppose registration of the mark in a Trademark Trial and Appeals Board (TTAB) proceeding.

If the PTO raises substantive issues against your trademark application in an “Office Action” refusal, or your application is opposed in a TTAB proceeding during the publication period, Lewis & Hand, LLP trademark attorneys are experienced at helping clients respond and address these matters.

Are those $500 trademark services for real?

If someone offers to register a mark for $500, they are either not clearing it for use, not including the cost of a single-class filing fee ($325) in the price, or both.  You are not getting a Full Mark search for that price, and there will be no formal clearance letter.   Filing an application without first clearing a mark makes it more likely that there will be substantive problems with your application and that a PTO Examining Attorney will issue a substantive Office Action, preliminarily rejecting your application.  Many substantive Office Actions can be avoided with proper clearance and counseling.  You should ask what you are getting for the money, and if the price does not include clearing your mark, you should ask why.

To discuss registering your trademark, contact a Brooklyn trademark lawyer at Lewis & Hand, LLP today.

Lewis & Hand
Attorneys at Law, LLP
45 Main Street, Suite 608
Brooklyn, NY 11201-8200

Phone: (718) 243-9323
Fax: (718) 243-9326

Trademark registration services are available for clients nationwide and throughout the New York metropolitan area, including Queens, Manhattan, Staten Island, New York City, the Bronx, and Brooklyn, New York.

Westchester County, Nassau County, Kings County, New York County, Rockland County