Trademark Attorneys in New York, NY

As trademark attorneys, we can help you with trademark search, trademark application, trademark registration, trademark maintenance and renewal, trademark office action responses, and trademark infringement.

A trademark is a form of intellectual property right that allows the trademark owner to register a sign distinguishing its goods and services from that of another through the use of words, logos, symbols, names, slogans, and colors. A registered trademark allows the trademark owner the use of the ® symbol and exclusive rights to use such trademark to the exclusion of others to prevent others from using similar marks to cause confusion among consumers regarding the source of the products or services.

Trademarks can be abstract, in letter form, a picture, a word, or an emblem, to name a few. Below are a few examples of such trademarks:

Trademark Search

A trademark search allows a business owner to research existing trademarks to see whether a proposed mark is already in use or registered by another person in the same classification of product or service. This involves the search of the proposed trademark various search databases in the relevant jurisdiction or proposed jurisdiction the trademark owner seeks to do business in and a search of federal trademarks in the United States Patent and Trademark Office (USPTO). Conducting a thorough trademark search is important prior to filing a trademark application.

Trademark Application

When filing a trademark application, your trademark attorney must review existing trademarks to see whether your proposed mark has already been taken.

Classification of System for All Goods and Services

The USPTO follows the Nice Classification of goods and services published by the World Intellectual Property Organization. When applying for a trademark, the business owner needs to identify the products or services intended to be sold under that particular mark, using the Nice Classification. If there is a similar mark but sold under a different classification, the business owner may still be approved, especially when there is less likelihood to cause confusion regarding the source of the product because the already registered mark pertains to an entirely different category of products compared to the proposed mark. When there is no proximity of products or services regarding a registered trademark and a proposed mark, the possibility that the trademark application would be approved is higher.

The Nice Classification provides the following 45 different categories:

• Class 1: Chemicals
• Class 2: Paints, varnishes, and coatings
• Class 3: Cosmetics and cleaning preparations
• Class 4: Fuels, industrial oils, and greases
• Class 5: Pharmaceuticals and medical supplies
• Class 6: Metal goods
• Class 7: Machinery
• Class 8: Hand tools and implements
• Class 9: Scientific, nautical, and surveying apparatus
• Class 10: Medical apparatus
• Class 11: Environmental control apparatus
• Class 12: Vehicles
• Class 13: Firearms
• Class 14: Jewelry and watches
• Class 15: Musical instruments
• Class 16: Paper goods and printed matter
• Class 17: Rubber goods
• Class 18: Leather goods
• Class 19: Building materials
• Class 20: Furniture and articles not otherwise classified
• Class 21: Housewares and glass
• Class 22: Cordage and fibers
• Class 23: Yarns and threads
• Class 24: Fabrics
• Class 25: Clothing
• Class 26: Fancy goods and lace
• Class 27: Floor coverings
• Class 28: Toys and sporting goods
• Class 29: Meats and processed foods
• Class 30: Staple foods
• Class 31: Natural agricultural products
• Class 32: Light beverages
• Class 33: Wines and spirits
• Class 34: Smokers' articles
• Class 35: Advertising and business services
• Class 36: Insurance and financial services
• Class 37: Building construction and repair
• Class 38: Telecommunications
• Class 39: Transportation and storage services
• Class 40: Treatment of materials
• Class 41: Education and entertainment services
• Class 42: Scientific and technological services
• Class 43: Food services
• Class 44: Medical and veterinary services
• Class 45: Personal and social services

Given these categories, for example, if there is an existing registered mark under the category of floor coverings (Class 27), if a similar mark is being proposed for registration for fabrics (Class 24), there is a possibility that the application may be approved because the proposed mark pertains to a different class than the currently registered mark, which leads to less likelihood of confusion regarding the purchase of such product or service.

Spectrum of Distinctiveness

Under the spectrum of distinctiveness, trademarks can be classified into five categories along the spectrum:

On one end of the spectrum, fanciful trademarks usually can be registered and are most protectable, while at the other end of the spectrum, generic trademarks cannot be registered and are not protectable.

Fanciful trademarks are the most distinctive types of trademarks because they are wholly invented signs, symbols, words, or phrases. Examples of these fanciful trademarks are Exxon, Pepsi, Clorox, and Verizon.

Arbitrary trademarks are trademarks consisting of common words used in an unrelated context. They are almost always protectable. Examples of these trademarks are Apple (which relates to computers and not fruits), Coach (relating to luxury accessories), Amazon (online marketplace), and Dove (personal care products and not an animal).

Suggestive trademarks are trademarks containing words or phrases that hint at a product attribute, suggest a quality or characteristic of the goods or services without directly describing them. Examples of suggestive trademarks are Citibank (suggesting a relation between a city and a bank), Coppertone (suggesting a relationship between a suggested skin color after use of the product), and Kitchenaid (suggesting aid in the kitchen).

Descriptive trademarks directly describe the product or service offered using words that reflect the nature, quality, or contents of the product. They are generally not protectable or registerable, although they may be registered when they acquire distinctiveness through a secondary meaning by extensive use in commerce of many years. Examples of these unregisterable descriptive trademarks are “Greek” for yogurt (Greek Yogurt) and “Vanilla” for candle (Vanilla Candle). Some descriptive trademarks that have been allowed registration are American Airlines (an airline in America), Bank of America (a bank in America), and the Associated Press (an association of journalists).

Generic trademarks, at the opposite end of the spectrum, are not protectable or registerable. These are generic terms or common names of goods or services and can never function as trademark for that particular good or service. For example, the word “Bicycle” on its own cannot be used as a trademark for bicycles; “Compact SUV' cannot be trademarked to refer to compact sports utility vehicles; “Table Tennis” on its own cannot be trademarked to refer to the table tennis racket. However, Ping Pong has been registered to refer to table tennis and Jeep has been registered to refer to compact SUVs.

Application Process

Once your trademark attorney has determined the proposed mark's eligibility for registration, a trademark application is prepared as the initial step in obtaining trademark protection. During this stage, the applicant submits necessary information regarding the proposed mark, the goods and services associated with it, and the basis for filing (current use in commerce or intent to use in the future). The trademark examiner reviews the application to see whether it complies with the legal requirements. If not, the examiner may issue an office action, which is an official letter listing the legal problems with the proposed mark and the application. The applicant must respond to this office action, and thereafter, the examiner may decide whether to deny or approve the trademark application.

Trademark Registration

Trademark registration comes after the approval of the trademark application. Once the examiner approves the application, the proposed mark is officially entered into the register, granting the applicant legal rights and protections as the owner of the trademark. These legal rights and protections include the exclusive use of the mark in connection to the specific good or service applied for, the ability to use the ® symbol, legal presumptions of ownership and validity, and enhanced legal remedies in case of infringement.

Trademark Maintenance and Renewal

The initial term of a registered federal trademark is 10 years. However, between the fifth and sixth year of the registration date, the trademark owner must submit an affidavit stating that the trademark is still in use (Form Section 8: Declaration of Use). The trademark's registration is cancelled if this affidavit is not submitted. However, the trademark owner may still have common law rights over the mark despite the mark's cancellation.

If a trademark owner seeks to extend the registration of the trademark, a trademark renewal application is required, between the 9^th and 10^th year prior to the expiration of the current term by filing the aforesaid Form Section 8 and Form Section 9: Application for Renewal.

Renewal periods are for 10 years each. A trademark's registration can be renewed indefinitely for as long as trademark owner is able to comply with the requirements for renewal.

Trademark Office Action Responses

During the process of application, a trademark examiner may issue an office action when it finds the application to be deficient. This office action will list the legal problems with the proposed mark and the application. The applicant must respond to this office action. Otherwise, the application will be denied.

Because this office action contains the examiner's finding of legal problems regarding the application, having a trademark attorney prepare your response to an office action can increase your likelihood of success in registering the trademark.

Trademark Infringement Attorneys

To prove trademark infringement, the following elements are required:

• The plaintiff must own a valid and legally protectable trademark through registration or common law rights.
• The defendant used the same or similar trademark in commerce without the plaintiff's consent; and
• The defendant's use of the trademark caused a likelihood of confusion.

In determining whether the use of the trademark caused a likelihood of confusion, the Polaroid confusion test enunciated in Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir. 1961) by the US Court of Appeals is used. This decision stated the key factors that would determine whether there is trademark infringement or whether a trademark should be registered:

• Similarity of marks
• Proximity of the products or services
• Strength of the plaintiff's marks
• Similarity of marketing channels
• Likely degree of purchaser care (sophistication of buyers)
• Actual confusion
• Defendant's intent and good faith in adopting its own mark
• Likelihood of expansion

A trademark attorney can initiate legal action for trademark infringement, given the factors provided in the Polaroid confusion test, and request for remedies in the form of injunctions and monetary compensation.

Trademark issues can be a complex and specialized matter. Seeking the counsel of an experienced trademark attorney is important in navigating trademark law. Should you need legal representation, we, at the law offices of Albert Goodwin, are here for you. We are located in New York, NY. You can call us at 212-233-1233 or send us an email at [email protected].