At the Law Offices of Joseph C. Messina, our attorneys offer years of experience to individuals and businesses internationally and across the U.S., while also servicing clients in Westchester County, Fairfield County, and the surrounding communities in New York and Connecticut. We handle a broad range of intellectual property matters, from trademark registrations both domestic and international to licensing matters, domain name disputes and copyrights.
The hallmark of our practice is our commitment to personal service and attention. We treat every client as if they were our only client, dedicating our full attention to every detail of your case. We also provide prompt, thoughtful, and thorough responses to all your questions.
The information below is designed to help you use the trademark laws and process to more effectively protect the good will of your business. To set up a free consultation with our attorneys, contact our office by e-mail or call us at 914-381-2728.
- Register Your Mark
- Select a Mark With Your Budget in Mind
- Protect Your Business Against Litigation
- Avoid Commonly Used or Descriptive Terms
- Avoid Signs of Trademark Conflicts
- You Can File a Trademark Application Before You Use Your Mark in Commerce
- Trademark Applications Are Not As Simple As They Look
- Trademarks Should Be Used As Adjectives and Not Nouns or Verbs
- Thirteen Factors to Consider When Determining Infringement
There are multiple benefits to federally registering your Mark. You will:
- Receive nationwide priority to use your Mark in connection with your goods or services
- Have the right to sue in federal court
- Increase the value of your business by protecting a valuable business asset
- Put competitors on notice of your trademark rights
- Acquire the right to use the ® symbol in connection with your goods or services
- After five consecutive years of continued use of the Mark in commerce, have incontestable rights
- Have a registration that is a deterrent to cybersquatting
- Reserve your rights to expand your business
- Gain the option of using your U.S. registration as a basis for foreign registrations
- Be able to use your trademark registration to prevent the importation of infringing goods
To learn more, see our page on why you should register your trademark.
Your budget can affect the Mark you select. The strongest trademarks and the ones afforded the broadest protection are invented/coined Marks (examples are ROLEX® and KODAK®). However, sometimes you have to spend more advertising and marketing dollars to build brand recognition with your product or service with an invented Mark. The same theory applies to arbitrary Marks (common words applied in an unfamiliar way). These trademarks are considered to be strong and are afforded extensive protection as well. An example of an arbitrary Mark is APPLE® for computers. If you are limited in your advertising and marketing budget, you may want to consider selecting a suggestive Mark. This type of Mark creates a memorable impression or association with the product or service features by suggesting something about the characteristics, but you must use your imagination to make a determination as to the nature of the goods or services. A benefit to choosing this type of Mark is that you spend less on advertising and marketing because the Mark will provide hints to the purpose of the product or service. The drawback of course is that the Mark will not be afforded as much protection as a coined trademark or an arbitrary trademark. For more, see trademark basics.
Before adopting and investing (time and money) in a new Mark, we highly recommend conducting a preliminary and a full search to determine whether anyone else has prior rights in a similar or identical Mark. A trademark search is the primary means of assessing risk. The failure to adequately search before investing in a new Mark can result in extraordinary trouble and expense. Failing to do your due diligence exposes your business to unnecessary litigation. If a litigant can successfully demonstrate infringement, that litigant may be entitled to the infringer’s profits (lost profits), actual damages, attorney’s fees, and costs. However, it is a misconception that money damages are customarily awarded in trademark litigation. In fact, it is not common to receive money damages, but more common to receive equitable relief in the form of an injunction. In order to receive money damages, a plaintiff must prove actual confusion and unjust enrichment, sale of counterfeit goods, or willful infringement.Contact the Law Offices of Joseph C. Messina
Set up a free consultation by e-mail or call our office at 914-381-2728. We work with individuals and businesses in New York, Connecticut and across the nation.