What is a trademark or service mark.A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.
A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. Throughout this booklet, the terms "trademark" and "mark" refer to both trademarks and service marks.
In these days trademarks and service marks can be an extremely valuable asset of a business. In extreme cases the failure to register your domain name as a mark may allow someone else to come along and take it from you, charging you with disgorgement of all profits you made from the use of that mark.
Do Trademarks, Copyrights and Patents protect the same things?
No. Trademarks, copyrights and patents all differ. A copyright protects an original artistic or literary work; a patent protects an invention.
What does the trademark application process consist of?
The number of steps required to secure a federal trademark registration can vary depending on the nature of the application, skill of the attorney, and the strength of the mark. The USPTO currently charges a fee of $350.00 per mark (per class) you seek to register. The attorney will then charge fees to clear the mark by doing a search to determine whether or not others may have used it first. The attorney will then complete and submit the application in a way that gives the mark the best chance of getting approved. The trademark examiner may accept it or raise issues with it. If accepted it goes on to publication. If the examining attorney finds problems then he will return whats called an "office action". The office action points out the deficiencies in the application and give the applicant an opportunity to correct them if possible.
Sometime the basis for the refusal to register is based upon prior use of a similar mark by others. In this case there may be a basis to have the previous mark canceled before yours could be approved. This is called a petition to cancel. Other times there may be a pending application ahead of you. If you have grounds you may file an opposition to prevent that mark from being registered.
We can typically screen the mark and file the application in a way that increases chances of approval starting at $500.00 plus the $350.00 USPTO fee. Often times a more detailed search is needed and the price will reflect this additional search. Response to Office Actions, Cancellations, Oppositions, Renewals, Amendements, Assignments and other actions with the USPTO will varying price depending on complexity of the work.
I have a trademark being infringed or have been threatened with litigation for infringement. What should I do?
Seek competent legal counsel immediately. Time is of the essence in these matters. You may lose your rights to sue or waive your rights to defend if certain timelines are not observed. While trademark litigation is largely based upon federal law, most states have comparable statutes. In such cases we may retain local counsel to work with us in handling the litigation. In litigation it is typical that both claims are brought. Damages may require disgorgement of profits and the award of attorneys fees. If a domain name is involved the courtt can award statutory damages of up to $100,000.00 per domain name registered plus attorneys fees.
Call for a free consultation on your trademark work.
Anthony J. DeGidio Esq.,
419-382-9590 FAX 419-382-9592