Benefit: Common Law Rights Are Free
I often get queries asking if there is any way to establish trademark rights for free. The answer is a simple yes. Technically you have some level of trademark protection when you first use a mark in commerce, because you become the prior user, as weve mentioned previously . There is no comprehensive guide on how to establish a common law trademark rights it is one simple step open for business.
Yet as you can see, there are many more issues involved. Common law trademark rights are not on the same level as federal trademark rights obtained through registration. Granted, common law rights can, in some cases, nullify another competitors incontestable registration. Although it is a common misconception that an incontestable registration is immune to claims of infringement from third-parties, the fact is that a senior prior user with superior common law rights can still enjoin a party who owns an incontestable registration from using the mark in the senior users territory.
Issued Registration Certificate For Applications Based On Use
For marks based on use in a foreign registration, commerce, or a protection extension of an international registration to the U.S. under Section 66, and no parties file oppositions or request for time extensions, the USPTO will register the mark. Then, they will send the mark owner a certificate of registration. From then on, the mark owner must file the necessary maintenance documents to ensure the registration remains live.
Why Trademark Registration Matters For New York City Businesses
New York Citys business sector is growing at an accelerated pace. Thats because entrepreneurs are eager to set up shops in this charming city thats home to warm and friendly residents. However, one thing those pursuing new ventures need to keep in mind is to always register their trademarks with the USPTO.
Imagine the following: Jerry and Dana are college friends who love New York City-style barbecue. They spend a few months creating what they think is the perfect barbecue sauce and are eager to get it onto store shelves. They keep the name simple: JDs Barbecue Sauce. They create a logo, a label for the bottles, and a website. What they forget to do, however, is register their trademark.
Within a few short months, Jerry and Dana are seeing some success. They have their sauce on the shelves of several local grocery stores, on the tables of local restaurants, and they are making sales across the country via their website.
Unfortunately, a barbecue sauce manufacturer out of Memphis, J& D Barbecue, finds out about Jerry and Danas sauce and sends a cease-and-desist letter to the two friends. J& D Barbecue registered their name more than 10 years ago and is well within their rights to ask Jerry and Dana to pull their product from store shelves and shut down their website. Now, the two friends must spend time and money creating a new brand.
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Trademark In New York
Although New York is a part of the United States, the trademark system here is somewhat different.
For instance, A federally registered trademark is entitled to use the ® symbol while a state trademark registration does not confer the right to use the ® symbol, only the symbol.
Not just in New York but every other state in the USA, the trademark system is different. Nonetheless, the applicant can choose to file their trademark to their states trademark authority or with the United States Patent & Trademark Office.
Each has its own benefits and disadvantages so the right answer is depended on each applicant.
Common Law Trademark Rights Explained
If you run a business but havent gotten around to filing a federal trademark application to protect your intellectual property, you may not have to worry about someone stealing your mark. Even if you never file that application, you may still have trademark rights. A cross-town competitor likely cant just start using your mark without consequence.
Had the trademark system been based on registrations alone, wed have chaos. Trademarks would have been rendered meaningless long ago. Legitimate businesses would have crumbled. Instead, the trademark system is based on usage of marks in the marketplace. Once you sell a product or service using a name and logo, you acquire certain trademark rights. These are termed common law trademark rights.
How do you establish a trademark? By using the mark in commerce. This also answers the common question of how to trademark a name for free. Just use it to identify products and services in the marketplace.
If you can establish trademark rights for free, then why would you pay for a federal registration? There are many benefits of trademark registration unavailable to common law trademark holders. Federal registration provides the greatest level of protection for your brand and your business.
If you choose to establish a common law trademark, rather than register the mark with the United States Patent & Trademark Office, your rights will be limited.
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Likelihood Of Confusion Factors
As mentioned above, the factors used by courts to determine likelihood of confusion among consumers are not limited to the list shown. While it is true they are the most commonly weighed factors, the federal court system evaluates a multitude of other factors to determine if the unauthorized use created actual confusion for consumers.
The factors used by courts are so widespread and unique to each case that it is difficult to say from a legal standpoint how an infringement case will progress. The circumstances surrounding each case have a direct influence on the judges decision, and every claim is different. While the use of an identical mark with a similar product is a cut and dry infringement, using a similar term with a completely different product would not hold up as a valid infringement claim. The majority of cases fall somewhere in between the ends of the spectrum, with plenty of gray area and complexities. Your best chance at winning an infringement claim is to assemble a reputable, experienced legal team that can argue your case strategically and confidently.
Downside: No Notice Of Ownership
Imagine you are a small brewery that distributes on a nationwide basis. You call one of your beers EUPHORIA. For whatever reason, you dont file a federal trademark application for the beer. You brew a dozen at a time, and sometimes you cease brewing some of them. Trademarking each one could prove costly for your small business.
Not long after you release your EUPHORIA line, another small brewery releases a beer called EUFORIA. A trademark attorney advises them to file an application, which they do. But they dont only file a trademark application for EUFORIA. The attorney advises them to also file an application for EUPHORIA, the correct spelling. Within a few months, the second brewery has obtained federal trademark rights for EUFORIA and EUPHORIA.
Their first order of business: send you a cease-and-desist letter. They own federal trademark rights to EUPHORIA for beer, after all. Wont they be surprised to learn that since you were first to market, your trademark rights actually trump theirs. It will be a costly surprise for both of you, of course, and it could have been avoided at the outset.
The fees for filing a federal trademark application might seem high, and the registration process might seem daunting, until you consider the potential cost of litigation over trademark infringement. In a way its like insurance: you dont realize how valuable it is until you actually need it.
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How To Register A Business Name In New York
Registering a business name in New York is done when you form your business entity with the state. You must first choose your business structure, then do a business name search to ensure name availability. Afterward, you must form your entity with your business name with the state. Some businesses may also prefer to just register a DBA. Follow our step-by-step instructions and read our FAQs to get started.
How to Register a Business Name in New York
Frequently Asked Questions About The Trademark Registration Process
1. How do I federally register a trademark?
To federally register a trademark, you must submit a trademark registration to the United States Patent and Trademark Office, or USPTO. There, your application will be reviewed by an examining attorney. This US government attorney will compare your mark to existing trademarks to be sure there is no conflict. If the examining attorney approves your application, it will go for a 30 day period of publication where any third party can file an opposition to your application. If no oppositions are received then your trademark application will be cleared for final registration.
2. How long does it take to obtain a federal trademark registration?
The process to register a federal trademark generally takes 8 to 10 months from start to finish. With that said, many trademark applications will receive an Office Action during the application process. This is typically a request for some modification of the language in the application by the USPTO. The issuance of an Office Action can slow the process down by several months.
3. Is it possible to expedite a federal trademark registration?
4. Do I need a trademark registration to sell products or services?
5. How much does it cost to obtain a trademark registration?
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+ Should I Register My Trademark With The Us Trademark Office
Federal trademark registration is the strongest form of notice that you can provide to others regarding ownership of your trademark.
Trademark registration can also be helpful if you discover someone using a brand, logo, or slogan that is the same, or substantially similar to yours. Use of a trademark in this manner may cause a likelihood of confusion among consumers and, therefore, may constitute trademark infringement.
Trademark law considers federal trademark registration as prima facie evidence of the ownership of a trademark. This can be an invaluable benefit and potentially stop infringement without having to resort to litigation. This can often deter trademark infringement from occurring in the first place.
What Is A Trademark
According to the United States Patent and Trademark Office, trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. . . .
Some examples include: brand names, slogans, and logos. The term trademark is often used in a general sense to refer to both trademarks and service marks. Though it is not legally required to register your trademark, it is highly recommended so that your brand has utmost protection from infringement or other trademark offenses.
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Choosing More Than One Trademark Class
Before filing your trademark application, youll need to choose the class or classes of goods and services to which your trademark belongs. Trademarks provide legal protection against infringement only for the category or categories of goods or services that you identify in your application. For example, the skincare company Dove holds a trademark in the toiletries class of goods, but the chocolate brand Dove holds a trademark in the confections and chocolate class of goods.
For each additional trademark class that you choose, the application fees noted above will double. At the moment, the USPTO recognizes 45 different trademark classes.
Register With New York Experienced Trademark Attorneys
Once you complete the registration application, you can expect a notification of acceptance or denial within six months or less.
However, do not be fooled though filing the application is easy enough, the complexities associated with gaining trademark protection is where the difficulty rears its head. For expert assistance and legal guidance filing your trademark application with the US Patent and Trademark Office, contact a trademark lawyer at Denton Peterson, P.C. today.
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Tax Saving Lease Agreementstop Of Pagehome Office Leaseagreement Detailing The Leasing Of Office Space By A Homeowner Or Tenant With A Business For Use As The Business’s Principal Place Of Business The Typical Tax Savings Under This Agreement Can Exceed $1200 Per Year The Home Office Lease Is Only $150 When Ordering A Trademark Or Servicemark Registration And As An Added Bonus To Our Clients We Draft The Lease In Such A Manner That It Is Automatically Renewablemotor Vehicle Leaseif You Use Your Vehicle For Business Purposes It Is Usually Much More Advantageous To Keep The Vehicle In Your Name And Lease The Vehicle To The Business The Typical Tax Savings Under This Type Of Arrangement Ranges Between $1500 And $3000 Per Tax Year We Can Prepare The Lease For Only $150 When Ordering A Trademark Or Servicemark Registrationoffice Equipment Leasea Lease Which Details The Leasing Of Office Equipment By A Business Once Again By Leasing Equipment To The Business You Create A Legitimate Business Expense For The Business And A Tax Deduction Typically The Tax Savings Under This Type Of Arrangement Can Exceed $1000 Per Tax Year The Cost For An Office Equipment Lease Is Only $150 When Ordering A Trademark Or Servicemark Registrationemployees / Independent Contractorstop Of Pageemployment Agreementif You Are Using Employees In Your Business It Is Important To Have A Written Employment Agreement To Document The Conditions Of Employment An Employment Agreement Can Be Very Advantageous For A Business And Should Be Required For All Employees Whether New Or Existing It Creates A Clear Understanding Of The Arrangement Between The Employee And The Business And Provides Protection For The Business The Employment Agreement Also Contains Other Important Provisions:
- It spells out the terms of employment, such as the duties, responsibilities and compensation of the employee.
- It states that the employee will not compete against the Business for a specific period of time after leaving its employment.
- It prohibits the employee from disclosing any of the Business’s business records, computer data, trade secrets, methods of operation, et cetera.
- It prevents the employee from soliciting customers or clients of the Business.
- It prevents an employee, after leaving the Business’s employment, from soliciting the Business’s employees to work elsewhere.
Company Registration In New York New York
Tm-India is the fastest growing law firm in India, which provide company registrations services in India as well as in all over the world. For registering your company in New York, you require address proof, which is essential before registration. The registration process itself is the second most important thing which is to be done for your business. You can register your company by online, which is the cheapest and easiest way. But the registration process will be uncompleted if you do not fill the Memorandum of Association. We are the most reliable online company registration firm in the India, our formation options are designed to suit all needs and budgets. We also provide registration services through giving query resolution system.
If you want to Company Registration in other states of USA, please go through the below table:
Company Registration in USA States
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Testimonials From Our Clients In The New York City Region
Working with Josh was an absolute pleasure. He made the process of getting our trademark a breeze. Should we ever seek another trademark we would certainly retain Josh again in a heartbeat. I highly recommend him.
Verena FrydbergMakeover Your MS, Inc. New York City, New York
We are extremely satisfied with Gerben Law Firms service. We especially appreciate the extent of knowledge that Josh brings to our matters and the timeliness in which he responds to our requests.
Deepak NegpalJewelAmerica New York City, NY
Our business, The Couture Baby LLC, hired Josh to register our company name. From the outset, we found Josh to be very professional, knowledgeable, and willing to spend as much time as required to answer any questions and guide us in support of the registration application and overall approval process. I would strongly recommend Gerben Law Firm, PLLC for any legal work you would require.
Ken MontagnoThe Couture Baby LLC New York City, NY
Josh is a professional that gets the job done with the required and desired results. Murphdog & Company has used Joshs services more than once and will continue to call upon him in the future.
Jenna RobbinsMurphdog & Company New York City, NY
Charles B. EisensonPayUsLessRx.com Greater New York City Area
Brian RileyPetKaboodle, Inc. Greater New York City Area
Robin GilliesBreathing Room. New York City, NY
Lisa SmithChief Girl Gone DIY New York City, NY
Trademark Lawyer Serving New York & Beyond
SSMP advises clients throughout all phases of brand identification, trademark selection, registration, and enforcement. We have extensive experience conducting searches of the registry and preparing of registrations. Our team also represents clients in opposition and cancellation proceedings, and trademark litigation if necessary. We have a well-earned reputation for helping our clients protect their rights in the U.S. and worldwide.
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Qualification Requirements For Trademark Protection
In order to register a trademark and receive federal protection through the U.S. Patent and Trademark Office , a mark must be used in “interstate commerce.” In other words, the mark must be for a product or service that either does business in more than one state or affects commerce in more than one state. An example of a trademark affecting commerce in more than one state would be a gas station or motel that is located in one state only but services customers from other states. Offering services or products on the Internet also qualifies as affecting interstate commerce, as people in other states and countries can purchase the goods.
Affecting interstate commerce is the first requirement for federal registration. Trademark law’s primary objective is to prevent consumer confusion, so in addition to being used in commerce a trademark cannot be the same as, or too similar to, another trademark for a similar service or product. You should do a search for existing trademarks on the USPTO site as well as searching for the same or similar trademarks through other resources.
Additionally, your trademark cannot be prohibited , generic , or too descriptive
For information on distinctiveness vs. descriptiveness, see Qualifying for Trademark Protection FAQ.