Friday, August 13, 2010

Protecting Your Trademark

A trademark's viability depends on continued use and vigilance. When it comes to trademarks, the law has a "use it or lose it" philosophy, which makes sense in light of a trademark's role as an identifier of the source of goods and services. If there are no goods and services that are being promoted through use of the trademark, it no longer functions as one. A subsequent user can file to cancel a dormant federally registered mark, or can defend an infringement action based on abandonment.

The length of time it takes for an unused trademark to be considered abandoned varies, but the owner of a trademark it wished to keep is advised to use it. There are, of course, United States Patent and Trademark Office requirements for periodic filings, the failure to comply with can result in abandonment.

In addition to lapse by nonuse, there is the possibility that failure to protect a trademark can result in its loss. Aspirin was originally a trademark, but was allowed to enter the public domain. Kleenex (r) and Xerox (r) are regularly policed and defended by their owners to prevent this. We send out letters to users of clients' trademarks to advise of their rights and to demand cessation.

Periodic searches on the Internet of your own trademark are prudent. There are companies that provide this service for a fee, and can access databases not always readily available.

Additional information about trademarks can be found at the Trademark Section of our website at

Thursday, August 5, 2010

How we can help you secure a trademark

If you are thinking of securing a federally registered trademark for an existing product or service, or one you intend to offer, we can help. The first thing we do is to check for conflicting registered and common law trademarks. It is not enough to simply do a search at the USPTO for the exact trademark you wish to use. You need to consider variations, both in word and sound, as well as similar trademarks for closely related products. Next, we expand the search to consider other sources, including various Internet based searches, company name directories and other data.

Assuming no conflicts are found, we can file the application for you and shepherd it through the process, which can take 12-18 months (sometimes longer). Applications for existing products or services require samples of use of the trademark in commerce (advertisements, web pages, invoices - depends on the nature of the goods or service). Where the application is based on intent to use (for that new product in development), final registration will depend on proving actual use.

Fees and costs for a single class application tend to be in the $700-800 range, which includes the $325 fee to the USPTO. More involved applications result in higher costs as do the need to respond to the Trademark Office.

I am always happy to answer questions and can be reached via email at or phone 203-744-1929. Further information about me can be found at