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 Trademarks 

Areas Covered: words, trade names, arbitrary terms, phrases, slogans, logos, symbols, uniquely shaped devices or any combination thereof that indicate the source of the goods or services.

Step 1:
Trademark Clearance search:

This includes searching 5 databases which are far more sophisticated than the government's web site, and allow greater flexibility to search various aspects of marks:
a) all federal trademarks in the US PTO in Washington, DC;
b) trademark registrations from all 50 individual states;
c) common law unregistered marks and trade names;
d) domains names and Internet usages; and includes preparing a search report and opinion letter for the client.
      The Cost is: $450. If a direct conflict is found at the federal search level, the cost is only $250, which includes preparing the search report letter. All searching is done in-house. Turn around time is usually 1-2 days.

Step 2:
Preparing and filing Federal Trademark Application.
      Cost: $875, including $375 government filing fee (1 class of products).

Not included is: cost of filing any Amendments/Arguments that may be necessary to keep the application alive and/or get it approved; and final completion of the registration process several months later, such as filing a Statement of Use and labels if you were NOT yet using the mark when it was originally filed (Intent to Use applications), which the US PTO requires to prove the mark is in use.

Duration of Trademark Protection: 10 years
Area of Coverage: USA.
Please telephone for foreign protection advice and costs.
Renewable: Yes, every ten years.

How to Distinguish Between a
Patent, Trademark and Copyright

  Normally, a mark for goods appears as a "brand name" or logo on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a copyright or a patent. A copyright protects an original artistic or literary work; a patent usually protects a mechanical, electrical or chemical invention.

Use of the ''TM,'' ''SM'' and '''' Symbols

  Anyone who claims rights in a mark may use the TM (trademark) or SM (service mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol may only be used when the mark is registered in the PTO. It is improper to use this symbol at any point before the registration issues. Please omit all symbols from the mark in the drawing you submit with your application; the symbols are not considered part of the mark.

International Patent & Trademark Protection

  Almost all countries in the world register and protect trademarks. Each national or regional office maintains a Register of Trademarks. The effects of such a registration are, however, limited to the country.

  Our firm maintains a network of international trademark associates, agents and databases to clear and register your trademark property worldwide.

How can one lose rights to a trademark?

  One can lose rights to a trademark if a mark that was once distinctive becomes the common generic name for a product or service. This may occur when a trademark owner does not properly police the use of his or her mark. In one example, the word ''escalator'' was once a trademark for a brand of moving stairs, but because of improper policing of the mark it has become generic.

  The name of a product or service should always be capitalized. It should always be used in conjunction with the common generic name of the goods or service as in ''Ford motor car'' or ''XYZ brand of toilet tissue''. Never use a trademark as a verb; it is improper to ''Xerox a document'' - instead, one photocopies a document using a Xerox brand copy machine.

Distinctiveness of Marks

  Under trademark law, a mark must be distinctive (i.e. capable of distinguishing the product or service from others.) Thus, trademarks are classified according to their level of distinctiveness and are afforded different levels of protection according to their classification.

Arbitrary or Fanciful Marks

  The most distinctive marks are those which are arbitrary or fanciful. Arbitrary marks are those which have no relation to the goods (e.g. Apple for computers) and fanciful marks are coined or invented names (e.g. Kodak film). As long as they are not confusingly similar to other marks, arbitrary or fanciful marks are afforded the highest level of protection.

Generic Marks

  On the opposite end of the spectrum of distinctiveness lie generic marks - the common name for the product or service. Generic marks are incapable of protection under trademark law because others need to use the common name to compete effectively. Thus, one cannot claim trademark rights in the word ''desk'' to identify the supplier of a desk.

Descriptive Marks

  Between arbitrary/fanciful marks on one end of the distinctiveness spectrum and generic marks on the other end lie descriptive marks. These are marks which describe an attribute, function or use, characteristic, purpose or quality of the goods or services. Descriptive marks are only eligible for trademark protection if they acquire secondary meaning (consumer recognition of the term as a trademark.)

Federal Registration of Trademarks

  Although protection for trademarks is available under state law, a higher degree of protection is afforded through registration of the mark in the U.S. Patent and Trademark Office (All 50 States).

  Federal registration allows the owner of the mark to display the familiar symbol thereby putting others on notice of trademark rights. It also opens the door to collecting enhanced money damages and attorney fees.

  Trademark rights are no longer restricted to state boundaries; a first user of a federally registered mark is entitled to nationwide protection.

  Federal registration grants the trademark owner access to federal court under an expanded body of law (Section 1114). In causes of action for trademark infringement of federally registered marks, profits, damages, and costs of the lawsuit are potentially recoverable and up to triple damages and attorney's fees are potentially available.

A federal registration may also be grounds for stopping importation of goods bearing an infringing mark through U.S. Customs. Our Law Firm routinely records trademark registrations with U.S. Customs so that infringing goods are stopped at the U.S. border, before they ever make it into the stream of commerce.


 Ezra Sutton, Esq., Plaza 9, 900 Route 9, Suite 201, Woodbridge, NJ 07095 
Copyright 2004 Ezra Sutton, Esq. All rights reserved.