Frequently Asked Questions
The attorneys at The Law Offices of Nikki Siesel PLLC want to be your resource for inquiries regarding intellectual property. We do our best to answer every question promptly and thoroughly. Some of our most frequently asked questions appear below with our responses. We hope you find the information useful.
- What Do I Have to Do to Maintain My Federal Trademark Registration?
- After Acquiring a Federal Trademark Registration, if I Discover a Competitor Using a Similar Mark, What Can Be Done?
- Under What Circumstances Would I File a Domain Name Dispute?
- Once You Acquire a Federal Registration, is it Possible to Lose Your Trademark Rights?
- Should I Conduct a Trademark Search Before I File My Application?
- Should I Include the Words Alone in My Trademark Application or Also Include the Design or Logo?
- Should I as an Individual Own a Trademark or Should My Company Be the Named Owner?
- What are the Fees Associated With Filing a Trademark Application at the United States Patent & Trademark Office?
- Who Should Be the Owner of a Trademark?
To maintain your federal trademark registration you must continue using your trademark in commerce for the goods and services identified in the registration and file the appropriate documents with the USPTO and the corresponding fees. Legal rights in a federal registration can last in perpetuity, if the trademark owner continues to use the trademark and complies with the requisite post registration maintenance requirements of the USPTO. In the United States, the term of a registered Mark is ten years. This is calculated from the date of registration. Registrations and renewal certificates issued prior to November 16, 1989 are for a term of twenty years. Although, during the first ten-year term, the USPTO mandates that you file an Affidavit of (continued) Use between the fifth and sixth year, measured from the registration date. You may engage our firm’s services to conduct the post registration filings on your behalf.
If a trademark owner of a federal trademark registration discovers a competitor using a similar mark, the first step is to notify your trademark counsel. We would evaluate the use of the potentially infringing trademark. If we determine that there is a likelihood of confusion on the part of the consumer, we will write a Cease and Desist letter to the infringing party. We would also write a Cease and Desist letter, if we believe there is a counterfeit situation, a case of dilution, unfair competition, or other infringement of your rights. We would strive to resolve the case through settlement negotiations, our objective is to utilize the most cost-efficient means available for resolution. If the negotiations break down and the infringement continues, we will then counsel you in regards to your litigation alternatives, such as an injunction to bar future infringement or the availability of treble damages and reasonable attorney fees.
You would file a domain name dispute if you find your identical trademark or a confusingly similar mark incorporated in a third party's domain name and the domain is creating a likelihood of confusion with your mark as to the source, sponsorship or affiliation. You would file a complaint with ICANN (Internet Corporation for Assigned Names and Numbers) if you have rights in a trademark and a third party (in bad faith) uses your trademark as described above. To be successful and obtain relief a complainant must prove all of the following factors: (1) the domain name is registered by the respondent and it is identical or confusingly similar to your trademark; and (2) the respondent has no legitimate interest in the domain name; and (3) and the domain name was registered and used in bad faith. The costs for filing for arbitration in a domain name dispute are substantially less than the costs of taking a case to court. An ICANN arbitration allows you to receive a decision in a short period of time (sometimes as few as 60 days).
Once you acquire a federal registration, it is possible to lose your trademark rights under the law. Trademark rights can be lost through abandonment. Once a Mark is abandoned, a third party may adopt it. One may lose their trademark rights if they do not continue to use their trademark in interstate commerce with the goods and/or services identified in their trademark registration. There are other ways, to lose one’s trademark rights. There can be an improper assignment, a non- compliant licensee and a lack of control over the quality of goods sold under the Mark, or a material change to the Mark when used in commerce. Lastly, if a trademark becomes generic, you may lose your legal rights to the trademark. If the Mark becomes the common name for the product, it will no longer function as a trademark and the registration can be cancelled. We have seen this occur with the Marks ZIPPER AND ESCALATOR. However, if the Mark becomes generic for only some of the goods or services, then the registration can only be cancelled for those goods and services impacted by the “genericide”.
A trademark clearance search should be conducted before using the trademark in commerce and prior to filing a trademark application. It is imperative to determine if you have the legal right to use the trademark with your goods and/or services before investing in the brand and filing an application with the United States Patent & Trademark Office or with the State trademark office. Furthermore, should you neglect to conduct a search you may infringe on the trademark rights of another party and expose yourself or your business to litigation and liability. In the United States, trademark rights are acquired through use in commerce and registration. Therefore, a search of both registered rights and unregistered rights (common law rights) should be performed before use or registration of the mark. Trademark searching is also important because it can reveal critical information that assists your counsel in preparing the trademark application. In other words, the search findings may allow your attorney to tailor the application in such a manner that will avoid a potential refusal by the Examining Attorney. Lastly, the search results may also reveal an infringing party that you otherwise may not have known about.
As the trademark applicant you decide how to represent your mark in the application. However, there are strategic business reasons for either filing for words alone (commonly referred to as a "standard character format" or word mark) or for words plus a design. The USPTO has a designated standard character set, click this link to review the standard characters: https://www.uspto.gov/trademark/standard-character-set.
If you wish to use terms or characters not listed in the designated set of characters, then you must file the "stylized format". When you file for a standard character format or word mark you have the right to use the trademark or term in any manner of presentation, including any font style, any size letters, or any color. Registration of a trademark in standard character provides for the broadest type of protection. The stylized format is more restrictive. It protects a specific stylized appearance and/or design. In reality, your budget may influence this decision. If you have a considerable budget, then often two separate applications will be filed, one for words alone, the second for design alone or design plus words, depending on how the trademark is used with the goods or services.
If a business entity has been created under the laws of the state and the mark is used in connection with the business, typically the entity would be named as the trademark owner. However, if no business entity is formed then the individual is commonly named as the trademark owner, if he or she is controlling the quality of the goods or services. In the future, should an entity be formed and registered with the state or county where you are conducting business, then an assignment should be filed with the United States Patent & Trademark Office, Assignment Division. See our blog post entitled, Determining Who Should Legally Own A Trademark for the advantages and disadvantages of individual verses business entity ownership.
The fees depend on the type of application you file and the number of international classifications you include in the trademark application. The lowest fee currently available is $225.00 per classification for the TEAS PLUS application. This application has the strictest requirements. The most significant of which is the applicant must utilize an identification of goods or services from the Manual of Acceptable IDs. Sometimes, this will not be possible because the accepted identifications may not include unusual descriptions or cutting edge or new technology. The next lowest fee is $275.00 per international class for the TEAS REDUCED FEE (TEAS RF). This application does not require an applicant to select a description of the goods or services from the Trademark ID Manual. Instead, an applicant can create his or her own description. However, an email address must be provided and you must authorize the Trademark Office to send communications via email. You must also agree to file certain documents online. Lastly, if an applicant chooses to forego the electronic filing and mails in the trademark application, the filing fee is $375 per international class. Finally, if you have an attorney represent you at the Trademark Office there will also be a professional fee.
The owner of a trademark is the party who controls the quality of the goods and services named in the trademark application. A trademark application must be filed by the party who is the owner of the mark as of the filing date, see Trademark Rule of Examining Procedure 1201.02(b. Naming the correct legal trademark owner is incredibly important to the process. If in fact, the wrong party is named as the trademark owner, the trademark application will be vulnerable to attack and could be legally invalidated. The Trademark Trial and Appeal Board ("TTAB") will determine if the proper party was named as the trademark owner as of the filing date of the application. The TTAB could cancel the trademark registration if it finds that it was void ab initio (having no legal force from the beginning). For example, if a LLC is the legal owner of a trademark, and instead of the LLC being named in the trademark application, a single member of the LLC is named as an individual, the trademark application could be challenged and refused registration under the legal principle of void as initio. If a trademark application is filed in the name of the wrong party, the defect cannot be cured. However, if the correct owner filed the application, but there was a mistake in the manner in which the name was set forth in the application, this can be corrected.
If you have any questions not answered on this page or on our website or blog, please contact our office and we would be happy to speak with you.Contact the Law Offices of Nikki Siesel PLLC
To set up a free consultation, contact the Law Offices of Nikki Siesel PLLC or call us at 914-949-9550. We offer experienced trademark assistance to clients in Stamford, Connecticut, Westchester County, New York, the surrounding communities including all the boroughs of New York City, and nationwide.