Legal Blog

Overview of Trademark Law

Veronika Balbuzanova, Esq. of Johnson | Dalal was recently interviewed and published by regarding trademark law.  Below is a link and a copy of the article:

A Trademark is a distinctive term, expression, slogan, name, graphic symbol, image, emblem, device, design, logo, or any combination thereof that is used for commercial purposes to identify and differentiate the products or services of a company from those of another company and to indicate the source of the goods or services.

Trademark law controls how you use a registered trademark. Trademarks are a type of property of an intellectual nature. The legislation grants the proprietor(s) the right to use the trademark solely concerning the licensed goods and services. In most countries, the legislation also requires the proprietor of a registered mark to avoid the unlawful use of the trademark, which is identical or similar to the goods or services registered, known as an infringement of the trademark.

Registering a Trademark

First, you need to decide if there are any grounds for possible trademark refusal. The US Patent and Trademark Office (USPTO) often hold off on granting a trademark depending on several conditions.

Any trademark application must include a clear representation of the trademark to be registered. Your depiction may be registered in one of three formats: traditional character format, stylized/design format, or sound format.

When registering words, letters, numbers, or any combination of the three, the basic character format should be used regardless of any particular font style, size, color, or any design elements. Registering your mark in the normal format of a character gives you a broad right to use the mark in whatever way you choose.

Before filing your submission, you should want to review the USPTO database. It is possible to find the database online or have your lawyer do it for you. In particular, if it is used in conjunction with the same or similar goods or services you offer, you can search for markings that may be considered confusingly similar to yours. Note that, to be protected from use by others, a mark does not have to be registered with the USPTO; thus, not all protected marks can be included in the USPTO database.

Finally, decide the basis on which you will file your application. You have three options: the current use of the mark, the intention to use the mark in the future, or international registration. You must have already used it for trade-in connection with all the products and/or services specified on your application to use the basis for the mark’s actual use. You will be required to use the mark in connection with the products or services specified on your application until the registration based on the plan to use the mark in the future is complete. Then file an additional form and fee not required when filing based on the mark’s actual current use. You can file based on a foreign application, foreign registration, or international registration, but there are several regulations and standards for this basis, and you should check with an attorney before choosing it.

Losing a Trademark Right

Trademark ownership rights can be lost when a trademark becomes genericized, infringed upon, or abandoned. If, without sufficient quality control or oversight by the trademark holders and if the use of a trademark is allowed, the trademark might get canceled. And if the trademark rights are grossly assigned to another party without the subsequent sale of any properties, the trademark will be canceled. Genericity is when, over time, a trademark loses its distinctiveness and becomes generic and thereby loses its trademark rights. Trademark rights shall be held by the actual legal usage of the mark for a period of time that varies, or the mark’s rights shall cease. Also, suppose the licensed owner(s) of a trademark fails to enforce the registration in the event of an infringement. In that case, the registration can also be held responsible for a ‘non-use’ application to be withdrawn from the registry after a certain period of time.

Role of a Trademark Lawyer

A professional lawyer can manage the entire trademark registration process for you. A trademark attorney may look for similar trademarks that may be confusingly similar to your mark and may preclude your mark from being registered. Examples of registered trademarks are USPTO-registered trademarks, state trademarks, and common law trademarks that have been registered. They will help you determine whether your trademark is likely to be considered legitimate and whether it can be used in commerce without infringing on any other trademarks already licensed. They will also show you how to find a strong trademark and decide whether your old mark is still strong.

Call Us Right Away!

At Johnson Dalal, we specialize in intellectual property law and litigation. Our attorneys specialize in intellectual property law including the laws involving copyright, trademark, patents, and trade secrets We are here to help you and all creators to get the justice you need and control over your works. If you need a trademark or need help with trademark infringement, then call the firm at (954) 507-4500 to get your rights and the protection you need!

Leave a Reply