Law Offices of Olga Zalomiy offers variety of trademark services in the US and abroad:
-trademark registration in the US and abroad;
-response to examiner’s office actions;
-protection of trademark owner’s rights before federal and state courts, and Trademark Trial and Appeal Board;
– protection of trademark owner’s rights in domain name dispute proceedings;
-draft trademark licensing and assignment agreements;
-anti-counterfeiting and trademark enforcement.
Below are some frequently asked questions about trademarks:
Can I trademark my idea?
Trademark law doesn’t protect ideas. (You might be thinking of patents, which protect inventions.)
So what can I trademark?
Trademark law protects the use of designations that identify and distinguish goods and services. (“Trademarks” cover products and “service marks” cover services.)
The following types of designations can be the subject of trademarks and service marks:
• Words and product/service names (iPod, Dr Pepper)
• Phrases/slogans (Intel Inside, Just Do It, The Good Hands People)
• Character names (Tarzan, Indiana Jones)
• Two dimensional logos (the Nike “swoosh,” the McDonald’s golden arches)
• Three dimensional shapes (the Coke bottle, the Toblerone candy bar)
• Colors (when used in conjunction with particular products, such as a green-gold color for dry cleaning pads)
• Smells (plumeria-scented thread)
• Sounds (the roar of the MGM lion, the Apple Mac startup chime)
Do I need to register my trademarks?
You don’t have to, but it’s a VERY good idea.
Trademarks can be protected under US federal law, under state statutes, and under state common law. You don’t have to register your mark with the federal government in order to protect it, but federal registration offers many significant advantages.
Federal registration provides the trademark owner with:
• prima facie evidence of the validity of the mark,
• presumption of ownership, and
• the exclusive right to use the mark in connection with the goods and/or services specified in the application.
In five years after obtaining federal trademark registration, the owner may file a declaration with the US Patent and Trademark Office (USPTO) stating that the mark has been registered for five years and has been continually used by the owner during those five years. After the owner files this declaration, the mark automatically becomes “incontestable.” Incontestability is a conclusive proof that the mark was properly registered and of ownership of the trademark.
Also, although trademark registration in the US doesn’t directly give trademark rights in other countries, it can help support foreign registrations.
In addition, federal registration lets you ask the US Customs Service to block imports of counterfeit goods using your mark, and seize and destroy any pirate goods it finds.
Can I register a trademark for a product I haven’t made or sold yet?
Federal registration cannot protect a trademark that you haven’t actually used in commerce yet, because the registration will not issue until you start using the mark in commerce (and notify the USPTO using the proper form). The law, however, allows you to file an “intent to use” application to register a trademark that you have not started using yet. The advantage of filing the “intent to use” application is that the filing date will serve as the date of first use, which can be important if there’s a conflict with another mark.
How do I register a trademark?
It’s important to hire an attorney who specializes in trademark law to file your trademark application. Here’s why:
• At attorney can help you determine whether your proposed mark is registrable. For example, a proposed mark may not be viable because it is too generic.
• An attorney can conduct a thorough search to determine whether any existing marks are confusingly similar to your proposed mark. An attorney will not only search the database of the USPTO (which only shows federally registered trademarks) but will also search state trademark databases and unregistered marks.
• An attorney will prepare a description of goods and services covered by your proposed mark that will maximize the value of your mark.
How long does a trademark last?
In theory, a trademark can last “forever,” as long as you keep up with the paperwork and continue to use the mark to identify source of your goods or services. Unlike copyrights and patents, trademarks don’t automatically expire after a period of years.
If you have questions about trademark law, or want us to search or register a trademark for you, please contact us at 1 (310) 461-3776.