In the business world, a strong trademark is a valuable asset. Brand names, slogans, logos, sounds, and even scents can all help to build a connection with potential customers. Unfortunately, the process of selecting trademarks – and, most importantly, protecting them – is typically far more challenging than it first appears.
Our Atlanta-based firm is particularly adept with matters of trademark law. We understand that clients aren’t simply looking for legal expertise – they’re looking for an efficient path to their trademark goal. Once Lilenfeld PC gains a firm understanding of your objective, we strive to move in a straight line toward your desired result.
Here are some of the ways we assist clients with trademarks:
Not all trademarks qualify for legal protection. For example, if your trademark is not considered “distinctive” enough, the United States Patent and Trademark Office (USPTO) will refuse to register it. Even successful registration might not stop copycats if your trademark is weak. Needless to say, all this can result in a significant waste of resources.
The Lilenfeld PC team of trademark attorneys has vast experience helping clients with trademark selection. We’ll clarify your specific goals and use our insight to provide an honest recommendation. If we feel a trademark registration application will be refused, we’ll tell you that beforehand and work with you to find an alternative. Once your trademark selection has been finalized, our trademark attorneys can help you with the rest of the process.
Even if the Trademark Office’s requirements for registration have been met, the trademark (or a confusingly similar one) might already be taken by someone else. To check whether your mark is available, Lilenfeld PC can perform two different types of search:
This is a quick search of existing trademarks. We’ll look for obvious conflicts with your proposed mark.
If the preliminary search doesn’t reveal a conflict, our trademark attorneys can dig even deeper. At your request, we’ll engage our vendor to run an exhaustive search that covers thousands of public and private databases.
After your search is completed, we’ll provide you with a straightforward assessment of the results. If we think the Trademark Office will deem your mark too similar to another – and therefore refuse registration – we’ll explain this to you. Our team of trademark attorneys knows that plain language and transparency is always in your best interest.
Assuming you decide to pursue registration, our team can help you every step of the way. First, we’ll draft your application and file it with the Trademark Office. We’ll then monitor your application for updates. This is crucial because there are often strict deadlines in play. Nonetheless, it can take months for the Trademark Office’s examining attorney to make his or her decision.
Ideally, your trademark application will be met with little resistance. There are sometimes roadblocks, however.
If the examining attorney refuses your registration, you’ll have the option of appealing that refusal. This is done through the Trademark Trial and Appeal Board.
The appeals process is complex. Luckily, our firm has managed many of these appeals over the years. We’ll give you a high-level explanation of what’s going on and then work efficiently toward your goal.
Even if the examining attorney doesn’t refuse your registration, there is an additional hurdle to clear. The Trademark Office will publish your mark in the Official Gazette, its weekly online publication. This serves to notify the world of your intent to register this trademark.
There is then a 30-day period in which members of the public may object to your registration. This usually happens when someone feels your trademark is too similar to their mark and would cause consumer confusion. In this scenario, an opposition proceeding would take place in front of the Board to decide your trademark’s fate.
Assuming the 30-day period passes with no objection, your trademark will register. However, a third party can still attack your registration by initiating a cancellation proceeding. This proceeding is similar to an opposition, and both are complicated. If you do find yourself facing either of these scenarios, Lilenfeld PC can fight on your behalf.
After your trademark is registered, you’re still required to file specific documents with the Trademark Office every few years. This ensures that your registration stays “live.” There is also an opportunity to make your registration “incontestable,” which gives it additional strength. Of course, our team of trademark attorneys can handle all this maintenance for you. That means you won’t need to worry about deadlines or losing your trademark protection.
For those interested in a full review of their company’s marks, a Lilenfeld PC trademark audit is an excellent option. Our trademark audits offer many benefits, including:
Comprehensive inventory of your marks. Our team will take stock of your company’s house marks, word marks, slogans/taglines, logos, and non-traditional marks.
Protection analysis. We’ll check for marks that need to be registered (or need their registrations renewed). In addition, if we find you are maintaining registration for marks that aren’t being used, we’ll let you know. This can save you from paying unnecessary renewal fees and might create an opportunity for you to license a mark.
Examination of usage. Even if your marks are adequately protected, it’s still important to use the proper trademark symbols on your company’s materials (TM, SM, ®). Trademark symbols can potentially deter third parties from using your marks. In some situations, they can also prevent marks from becoming legally generic. Lilenfeld PC’s attorneys will fully review your company’s symbol usage as part of your audit.
Search for new revenue streams. There may even be opportunities to increase revenue by licensing your company’s trademarks to third parties. Our team can search for these opportunities, and we can also guide you through the licensing process if necessary.
Want to learn more about any of our trademark protection services? Just contact our team at (404) 201-2520. We would be happy to speak with you.