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Related to a prior question we filed for a federal standard word mark in the category of cosmetics with the USPTO. Now what?

Pittsburgh, PA |

Related to a prior question http://www.avvo.com/legal-answers/although-common-law-, we filed for a standard word mark utilizing the main word in our name that is descriptive to us. We are now seeking council to assist us with the next steps. As the application can take months and is not guaranteed approval. Is there any protection or steps an attorney can take to protect our brand in the interim since there is a pending registration? In this particular state, we can show we were the first to use the mark in commerce.

http://www.avvo.com/legal-answers/although-common-law-trademark-generally-only-prote-1512739.html

Attorney Answers 4


  1. If you had been using the mark in commerce, you may have common law trademark rights in the mark that grants you limited protections in the mark before your federal registration is issued. Yet, further information is needed to confirm. It is harder to enforce common law trademark rights against infringing ads and websites or confusingly similar domains as ISPs and ICANN often require evidence of an actual federal registration in the mark before taking action against alleged infringers.

    As I see it, you only have two enforcement options prior to obtaining federal registration: (1) send cease and desist letters, but as you would be doing so without a federal registration, it would likely only amount to a scare tactic; or (2) register a Pennsylvania state trademark, but this would also take time to register and you could only enforce it within Pennsylvania.

    Working with a qualified intellectual property attorney can further assist you with these issues. Good luck!


  2. The best protection you can have is to simply keep using the mark with the goods & placing the superscripted TM by the word you're claiming as a mark. Your USE of the mark is giving you your rights in it; not the registration. The registration will just expand & enhance those rights but you can't control the speed or outcome of the USPTO examination.

    The only other enforcement measures you could take are monitoring the market & sending notices to alleged infringers, as Mr. Michel stated. Demand letters do work better with a federal registration & when sent by a lawyer. Therefore, you are best advised to retain a trademark attorney who could also help ensure that your application registers as well & as fast as possible.

    Good luck.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C. IP boutique law firm. Alex is admitted to the bars of Washington, D.C., New York and New Jersey but, unless otherwise specified, the answer is intended to be general enough to apply to any U.S. state and based primarily upon his knowledge and experience with applicable federal laws. The opinions expressed are those of the author and do not necessarily reflect the views of his firm, Avvo or other attorneys. This answer is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship or obligations are established herein, although consulting an attorney to discuss your specific situation is strongly recommended. This is especially true of trademark law because TM law is so fact-specific and full of esoteric nuances and exceptions that could easily result in a critical legal error without proper advice from experienced trademark counsel.


  3. I'm going to repeat what I said in response to your first question -- you need to have a trademark attorney pass judgment on whether what you're using as a trademark can even properly serve as a trademark. Especially after your new information that "we filed for a standard word mark utilizing the main word in our name that is descriptive to us." A word that merely describes your business or your product or service CANNOT serve as a trademark [unless it acquires, through your long and exclusive use, secondary meaning]. You should not send any more cease and desist letters -- even to the person who adopted your name and slogan -- without first speaking with a trademark attorney. Good luck.

    The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.


  4. I am not sure about the extent of due diligence that was done here. Getting legal guidance is most important upfront, not after the application was made. If the mark is in fact descriptive, then you likely will receive an office action from the Examiner.

    Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a detailed explanation of the due diligence process.

    I suggest that you consult with a TM lawyer in private and discuss your objectives in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.

    Best regards,
    Frank
    Natoli-Lapin, LLC

    DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.