U.S. Federal Trademarks | Intellectual Property Litigation


Intellectual Property & Trademark Litigation

Our intellectual property team of litigators are prepared to prosecute or defend you and your company in an infringement claim. We draw on our years of experience in handling these complicated matters and will work to resolve your case quickly and effectively.

Trademarks - FederalRegistered Trademark

A trademark is any word, slogan, or symbol which is used in trade with goods and services to indicate their source of origin and to distinguish them from the goods and services of others. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from offering the same goods and services under a non-confusing mark.

In the United States, trademark rights are created when use of a trademark begins. However, these rights are often limited. Greater rights are available by registering the trademark with the state or federal government. Trademarks used in interstate or foreign commerce may be registered in the U.S. Patent and Trademark Office ("USPTO").

A trademark application can be submitted to the USPTO based upon actual use in commerce or a bona fide intent to use the mark in commerce. It is important to prepare and file the application with the assistance of an experienced trademark lawyer. Once the application is on file, a USPTO Examining Attorney will be assigned to review the application for registration. Throughout the application process, there are many issues that may arise that must be handled quickly and effecitively to ensure your mark is approved.

WHY FILE FOR A TRADEMARK?

A federal trademark registration carries several benefits and protections under the law. Most importantly, a federal registration constitutes prima facie evidence of the validity of the registration, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the mark in commerce on the goods and services specified in the registration certificate. Also important is the fact that a federal registration constitutes constructive notice of the registrant's claim of ownership. The owner of a federal registration may file an infringement lawsuit in federal court and seek injunctive relief, triple damages and attorneys fees, as well as other remedies. Additionally, a registrant has the right to request U.S. Customs Officials to seize imported goods bearing an infringing trademark.

Trademarks may also be registered in individual States, which may yield additional benefits even though limited to the particular State. For example, applications in Florida are examined within a matter of weeks and a Florida registration may be a powerful tool in enforcement litigation because attorney fees are recoverable under a more liberal standard.

International trademark protection is also available by registering a trademark in individual countries or multi-nationally through various treaties and conventions.

How does your trademark registration service work?

Complete our Intial Questionnaire - 

First complete our questionnaire (do your best we are here to help) and email it to matt@flalawgroup.com. We will review your responses and check for client conflicts. If we find no conflicts and can provide services, we will email you a written Contract for Legal Services and direction on making payment.

Discuss Your Case - 

Once we receive your signed Contract and payment for servicesour office will schedule a conference call with you. Payment can be made by credit card through our secure online payment portal. (Please understand that we are unable to perform any services until payment is received, deposited and cleared the bank).

Prior to the conference call, our attorney will conduct a basic search** of your trademark. During the call the attorney will discuss the results of the USPTO search, gather additional information including your specimen, and answer any additional questions you may have.

File Application with USPTO - 

After the conference call, you will then be asked to submit a cost deposit (typically $300.00) to cover the USPTO government filing fees and related costs. This money will be held in our firm's Trust Account until your application is completed by our attorney and filed with the USPTO.

Respond to Office Actions | Publication | Registration - 

Typically, applications are assigned to a USPTO Examining Attorney within three (3) months of the date of filing. At that time, the Examining Attorney will review your application and specimen, conduct their own search, and either approve your trademark for publication or issue an Office Action (see below). During the publication period a third party may oppose your mark, but in most cases this does not happen and the trademark will proceed to registration.

What is an Office Action?

An Office Action is a document issued by the USPTO Examining Attorney detailing problems with your application and/or actions that need to be taken before your trademark can be approved for publication. More common "Office Action" issues include disclaiming words in your trademark, inadequate specimen showing use of your mark in commerce, insufficient description of the goods or services your trademark is intended to cover, and likelihood of confusion with an existing trademark.

If an Office Action is issued on your application, we will discuss your options with you over the phone and decide how best to proceed. Our attorney can respond to the Office Action on your behalf for an additional fee. The exact fee varies depending on the complexity of the Office Action, but the fees for these responses range from $100.00 for minor administrative issues (e.g. disclaim words) to $1500.00 for substantive issues (e.g. likelihood of confusion with an existing mark). If you choose not to respond to an Office Action your trademark application will be abandoned and filing fee lost.  

What is a "Specimen"?

A specimen is a sample of how you actually use your mark with the goods and/or services identified in your application in the commercial marketplace (e.g., on your product packaging or website). It is generally what consumers actually see when they are trying to purchase your goods or services.

specimen for goods (products) usually shows the mark on the actual goods, on labels/tags affixed to the goods, on packaging, or in a product display for the goods (like a window display). Advertising materials are generally not acceptable as a specimen for goods, nor are materials used to carry out your daily business (e.g., invoices, packing slips, etc.).

The USPTO typically accepts the following specimens for goods:

  • A picture of the product showing the mark directly on the product (e.g., the bottom of a bottle);

  • Product labels and tags showing the mark (e.g., the label on a t-shirt);

  • Product packaging showing the mark (e.g., potate chip packaging);

  • Signage used in a product display at a store (e.g., a picture of the display)

  • A webpage showing or describing the product near the mark and with purchasing information (e.g., a webpage showing a picture of a beverage, the mark for the beverage appearing above the picture, the price appearing below the picture, and a shopping cart button/link appearing on the page).

specimen for services generally shows the mark used in the sale, rendering, or advertising of the services. A consumer should be able to directly associate your mark with the services you identified in the application on the specimen.

The USPTO typically accepts the following specimens for services:

  • Print or Internet advertising;

  • Brochures and leaflets;

  • Menus for restaurants;

  • Business cards and letterhead with a reference to the services;

  • Marketing materials;

  • A picture of business signage and billboards.


Get Started

Still not sure?

You can also Contact our office to schedule a consultation with our attorney to discuss your needs. We charge a low phone consultation fee. During this 15-20 minute consultation you will discuss your legal matter with our attorney directly - no paralegal or assistant.

* This fee does not include costs or Government/USPTO Fees. Typical costs for filing a trademark application range from $225 to $325 per class. USPTO does charge additional fees for intent-to-use applications.

** The search we perform is through the USPTO Trademark Database and is used to evaluate the likelihood of success of your application with the USPTO only. It is not a comprehensive search and does not include state databases or search engines. All clients are encouraged to do their own preliminary searches and if necessary, purchase a comprehensive search through a reputable search service (we can help with that). Our firm makes no guarantees regarding your trademark application and no search can predict the ultimate outcome of an application.

Copyright © 2016 Law Office of Matthew J. Ryan, P.A. All Rights Reserved.