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Avoiding Trademark Disputes: Register Your Trademarks (2/5)

In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought.  State and federal trademark registrations is a service provided by Lilenfeld PC.

Federally registering a trademark gives you national rights to it.  Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark.  Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.

A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission.  Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.

A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours.  A trademark registration shows that you are aware of and active in protected your trademark rights.  And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.

Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid.  Your registration also entitles you to additional damages in the event it is found that your mark was infringed.  And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.

As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes.  We’ll post Part 3 of this 5 part series next week.  Please check back!

David M. Lilenfeld

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Avoiding Trademark Disputes: Only Adopt a New Trademark After it is Cleared (1/5)

Before you adopt a new trademark you should devote resources to making sure, to the greatest extent you can, that using that trademark will not infringe on some other party’s rights. This sounds obvious, but we see many trademark disputes occur because not enough effort was made before a new trademark was adopted.

Once you’ve identified the trademark you would like to use, we generally suggest that you look for the same and similar trademarks in your industry and related industry on the Internet. If you do not find anything that looks problematic, step two is to forward your results to a trademark lawyer and retain that lawyer to conduct a formal search. Most trademark lawyers, including us at Lilenfeld PC, will engage a vendor to conduct what is often called a “trademark availability search.”

The results from the trademark availability search are listed in a report, which consists of trademarks which are the same or similar to the trademark you are considering. The report itself does not offer any opinions about whether it is safe to adopt the trademark or not.  Instead, your trademark lawyer will review the report and provide a legal opinion about the risks, if any, associated with adopting the trademark. Following this process will not guarantee that no one claims that your new trademark creates an issue, but it should greatly lower the risk and give your trademark the best start.

Clearing your trademark is step one in avoiding trademark disputes. We’ll post Part 2 of 5 next week.  Take care.
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Tips to Avoid Trademark Disputes – Five Part Series

Every year my law firm realizes considerably more revenue from trademark disputes than from work that will help clients avoid disputes. It’s good for business, but bad for clients, so we want that trend to change. Starting this Wednesday, we’ll be posting a five-part series on steps to take to minimize the risk of being in a trademark dispute.  Part 1 is about what to do before you adopt a new trademark.
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Why Big Companies are Hiring Small Law Firms – David M. Lilenfeld, Lilenfeld PC

More and more, legal departments are moving their work from large, big-name law firms to small, boutique firms like Lilenfeld PC.  While the recession prompted much of this movement, I am now observing that this is a lasting practice for efficiency-minded in-house counsel.

Boutique law firms such as ours are flourishing because clients are turning to different law firms for different tasks.  This practice allows legal departments to match specific tasks to the right lawyers. For example, a new client came to us recently specifically because most of the litigation we handle involves trademark infringement claims.

Legal departments are recognizing the benefits of splitting work between firms with different focuses and using small, boutique firms that offer the right fit for each individual matter.  In-house attorneys also acknowledge that the work produced by small firms is as good as (or better than) what they receive from large, big-name law firms.  Small firms like ours also have far fewer conflicts, can make decisions regarding representation in hours instead of days and are equipped to provide personalized service.

Technology has also made small firms more competitive with large ones.  Software, for example, speeds up document production and review, while, cloud computing makes sharing documents, invoices and case developments fast and efficient.

Lilenfeld PC focuses entirely on intellectual property, and its highest hourly billing rate is $325, a rate 40 to 50 percent lower than that of large-firm counterparts.  Our clients receive the same level of expertise as clients of large firms but at a lower price.  Since we have less overhead, we have lower rates, which helps our clients manage budgets and increases the volume of business we receive.

Consider talking with us about your intellectual property needs.

David M. Lilenfeld

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