Trademark Basics

Educating Clients on the Trademark Basics

When exploring the prospect of registering a trademark, it is essential that you have a knowledgeable lawyer on your side. At the Law Offices of Joseph C. Messina, our lawyers have years of experience handling a wide range of trademark law issues. We are committed to providing each of our clients tailored representation in order to ensure that their needs, and the needs of their businesses, are fully met.

To learn more about trademark basics, please see the information below. To schedule a free consultation, send us an e-mail or call us at 914-381-2728.

Why should I file for a federal trademark registration?

If you obtain the registration:

  1. If competitors adopt confusingly similar Marks, they can be stopped from infringing on your intellectual property rights. Federal trademark registration acts as a deterrent to competitors. It is common practice for trademark applicants to conduct searches in the USPTO database. Any USPTO application or registration will appear in the public database and this will inform your competition of your trademark rights.
  2. You gain the right to use ® or "Registered Trademark" wording in conjunction with your Mark.
  3. You obtain an exclusive nationwide right to utilize your trademark in interstate commerce in connection with your products or services. A registered trademark increases the value of your business and expands your intellectual property portfolio.
  4. You can bring an action in federal court. Trademark rights are not meaningful legal rights unless you can enforce those rights. If there is infringement and the matter cannot be resolved amicably through negotiation, you will need court intervention. You may seek an injunction and the third party infringer will be ordered to cease and desist such illegal conduct. You may also be entitled to money damages.
  5. If you continue to use the registered Mark for five consecutive years, you can file an Affidavit of Incontestability. Essentially, your trademark rights become incontestable. If you have to litigate a dispute in court, nearly every defense to trademark infringement would be eliminated.
  6. You can use your U.S. registration as a basis to obtain registration in foreign countries.
  7. You can file the U.S. registration with the U.S. Customs Service to avert importation of infringing foreign products.
  8. You can use your registration as evidence of your trademark rights in an ICANN (Internet Corporation for Assigned Names and Numbers) proceeding to challenge the use of your trademark in a third party’s domain name.
How long will it take to acquire a trademark registration?

Once a trademark application is filed with the U.S. Patent and Trademark Office (USPTO), the amount of time it takes to receive a registration will vary on a case-by-case basis. This can range from nine months to a year or more depending on circumstances. We can provide you with a more specific estimate upon consultation.

Should I conduct a clearance search before filing a trademark application?

Yes, we highly recommend conducting a full trademark clearance search prior to filing an application. We will conduct a courtesy preliminary search in order to determine if a full search is appropriate. A search can save you significant time and expense. It will also advise you as to whether someone else has obtained rights to a similar Mark. We will use our expertise to evaluate the full search report and provide you with a written opinion letter or verbal opinion as to the clearance of your proposed Mark.

Contact the Law Offices of Joseph C. Messina

To set up a free consultation, send us an e-mail or call us at 914-381-2728. We offer a free preliminary trademark search before you are required to engage our firm for a more comprehensive search. Our lawyers work with clients throughout Westchester County, New York, and Stamford, Connecticut, and the surrounding communities including all the boroughs of New York City.