Trademarks Lawyers in Arlington & New York

Providing trademark protection for our clients is vital to our clients’ success in that trademarks create their brand and goodwill for businesses, and can be the backbone of a business’s success. Ensuring that your goods and services are recognized and acquire goodwill over time by being associated with a reputable mark and/or logo is how you grow a business.  For example, Coca Cola® and Nike® would never have gained their success without their marks and logos being protected. Arlington & New York trademark attorneys at Stanzione & Associates, PLLC advise clients in all areas of trademark law, including filing trademark applications, conducting dispute resolutions at the United States Trademark Trial and Appeal Board (TTAB), and other appropriate and necessary actions related to trademark law. Some of the services in the trademark area in which we provide our expertise include:

  • Conducting Trademark, Service Mark and Logo Searches through the United States Patent and Trademark Office database.
  • Drafting and enforcing Trademark and Service Mark Registrations.
  • Drafting trademark licensing agreements.
  • Drafting trademark and service mark opinions.
  • Prosecuting and defending claims of trademark infringement in the United States District Courts, the United States International Trade Commission and Arbitration Hearings.
  • Representing clients in inter-party trademark proceedings before the United States Patent and Trademark Office, including trademark oppositions and cancellations.
  • Providing trademark infringement and licensing opinions.

Process of Trademark Applications

A United States trademark application goes through s series of steps from the filing of the application through the issuance of the application before obtaining a “registration.”  This means that your mark and/or logo becomes federally registered, as opposed to a common law trademark, which is established locally once the mark and/or logo is used in commerce.  The form of a trademark application is determined both by the nature of the mark to be registered and the basis for the application. There are standard requirements as to the elements in the trademark application including: identification of the mark, the goods or services in connection with which the mark is or will be used; and the identity of the applicant.  Once the trademark application is submitted to the United States Patent and Trademark Office, the application is sent through a pre-examination review to determine if the application has satisfied the minimum necessary requirements to obtain a filing date. Therefore, it is of the utmost importance that an applicant retain the services of a highly qualified trademark attorney to ensure all of the necessary information is provided on the application, and that the mark and/or logo is eligible for registration.  Also a search should be conducted to ensure that the mark is not already used by another, or to ensure that the mark is not too close to another’s mark in a similar class to cause a likelihood of confusion as to who is providing the goods or services.

Trademark Lawyer New York, NY

The form of a trademark application is determined both by the nature of the mark and/or logo to be registered and the basis for the application.  The types of marks that can be registered are: trademarks; service marks; collective marks and certification marks. Depending on the  distinctiveness of the mark, the application may be issued for registration on the Principal Register or on the Supplemental Register.

Once the application for the filed mark and/or logo  is approved for publication, the application will then be published in the Official Gazette for a period of 30 days.  This 30 day publication allows time for anyone to oppose the registration of the mark.

Application for Registration of a Trademark

The bases of an application for registration of a mark include actual use in commerce and intent to use in commerce.  If the actual use of the mark in commerce has not yet occurred at the time of filing an application for a trademark or service mark, the application can be filed base on intent to use.  However, before an application filed under the bases of intent to use is issued as a trademark registration, proof of actual use must be submitted to the United States Patent and Trademark Office.  Thus, although a trademark application filed under the bases of intent to use can receive a Notice of Allowance, a registration of the mark will not be issued until an amendment or statement of use has been filed and accepted by the United States Patent and Trademark Office.

Call Arlington & New York Trademark Attorney Now

An experienced Arlington & New York Trademark Attorney will guide an applicant toward the best way to file an application for the mark such that the mark: will build a brand for the business; establish goodwill for the business; and will not be limited in its use if possible.  Therefore it is important that a trademark application be filed in the broadest possible form so that the owner of the mark does not find themselves limited in the way the mark can be used in commerce.  It is also important that a trademark applicant does not later find that another application obtained registration on the same or similar mark because their use of the mark appears in some way different.  Thus, there is a strategy required by an Arlington & New York Trademark Attorney to successfully represent their client in view of future use of a mark or logo as the business grows over time and develops a strong brand, which translates to goodwill of the mark and/or logo. Think, for example, Nike, where the mark and logo (checkmark) can be used in any color and format.  Therefore, if the mark is going to be placed on a black baseball cap, the mark “NIKE” and/or checkmark logo can be used in any color that contrasts enough with a black cap so that it can be easily recognized.