Trademark Services

Legal Solutions Providers

New York Trademark Attorney – NYC

Dedicated to protecting your intellectual property & trademarks in NYC and beyond.

Trademarks are the essence of a brand, making it pertinent to a business’s success to successfully protect its trademarks in New York, NYC, and beyond. Our New York trademark attorneys in NYC help businesses properly protect product names, logos, and slogans. When trademarks are properly protected, they generate significant and long-term value. Trademarks are often a company’s most valuable asset, so thoroughly intertwined with the business that it is difficult to extricate the two.

Accordingly, selecting a trademark is a critically important decision when developing a brand. At G.A.M. Law Office, our New York trademark lawyers help clients select, properly use and register their trademarks. Our trademark services include trademark filing, New York trademark registration, brand strategies, counseling, clearance searches and risk analysis, registration, TTAB proceedings, enforcement, and licensing in NYC and beyond.

 

Call (347) 329-3952 today to schedule your free consultation.

New York Trademarks Attorneys In NYC

When it comes to the registration of a trademark, being careful is the best strategy. No one wants to pay a nonrefundable fee to the USPTO to realize later that the trademark is not protectable. Additionally, suppose the registration has errors, clerical or not, no business owner wants to go through correcting them before getting a real chance of registering the trademark.

 

For many individuals, businesses, and organizations, trademarks are one of their most important assets. Whether seeking to identify, register or protect a trademark such as a company or organization’s name, a logo, or a slogan, our law firm works with clients to assure protection and the development of a strategy that can last.

What is a Trademark?

A trademark is a sign or symbol capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights. Trademarks can be nominative (words), mix (words and logos), figurative (logos), sound trademarks, audiovisual (video), and tridimensional (also known as trade dress).

 

What Is the Best Trademark?

A trademark is the “best” when it reflects the message and purpose of the owner, whether it is an individual, a business, or an organization. Additionally, when it comes to word trademarks, the best are made or invented words because they are the most unique.

The higher level of distinctiveness of a trademark, the better. There are four levels of distinctiveness when it comes to word trademarks: generic (nor protectable), descriptive (might be protectable to some level), suggestive, fanciful, and arbitrary. The best strategy to register an effective trademark is to conduct a clearance search and understand the process of selecting the right one.

Our New York trademark attorneys are here to help

Call (347) 329-3952 today to schedule your free consultation.

If you have already positioned your brand in the market, will waiting a little to register your brand make a difference?

Of course! It will make a difference. Positioning a brand in the market without the support of an official registration is extremely risky. Before you know it, you could be fighting against imitations or even lose the opportunity to claim your trademark if someone else comes forward to register it. In clear terms: every day without registration is a lost opportunity to protect and capitalize on the value of your brand. Don’t give rise to unnecessary risks, secure your most valuable asset as soon as possible.

A trademark registration will allow you to prevent others from adopting similar business names. It will also allow you to protect yourself against cybersquatting, a practice through which third parties register domain names similar to your brand to take advantage of your commercial recognition.

If you don’t have your trademark registered and third parties register similar domain names, you face several potential problems:

Consumer Confusion: Customers may be diverted to other websites believing they are interacting with your brand, which can result in lost sales and damage to your company’s reputation.

Cybersquatting: This occurs when someone registers a domain name in order to sell it to the rightful owner of the trademark for an inflated price. If you do not have your trademark registered, it will be more difficult and expensive to recover the domain.

Deceptive Practices: Third parties could use domains for fraudulent or defamatory activities, negatively affecting public perception of your brand.

Loss of Web Traffic: Similar domains can capture traffic that would otherwise go to your website, reducing your visits and potentially your revenue.

Legal Costs: If you decide to take legal action to recover the domains, the process will be more complicated and expensive without a registered trademark.

In short, not registering your trademark opens the door for third parties to take advantage of the reputation you have built, and puts you in a vulnerable position from a legal and commercial point of view. It is crucial to protect your brand both in the traditional registry and in the digital sphere.

How long is the Trademark Law Free Consultation

The first interaction with a lawyer of out office is a 10 minute consultation, via phone call. A 10-minute free consultation with a trademark lawyer is like a quick chat to help you understand a few important things. Here’s what it’s for:

1. To Ask Questions: You can ask basic questions about trademarks and how they work.

2. To Get Advice: The lawyer might give you some advice on your specific situation, like if you have a good case for a trademark or not

3. To Learn the Process: They can explain how the process of getting a trademark works.

4. To Figure Out Costs: You can find out how much it might cost to register your trademark.

5. To Decide If You Need More Help: It helps you decide if you want to hire this lawyer to help you with your trademark.

Remember, since it’s only 10 minutes, you won’t get everything sorted out. But it’s a good start to see what your next steps should be!

After that what is the consultation fee?

For purpose of trademark registration purposes, the initial discovery call is $50 per 30 minutes. This discovery call with a trademark attorney is to:

1. Understand Your Needs: The attorney will ask questions to learn about your trademark, your business, whether your are using the trademark or not, and what you want to protect, logo, words, etc.

2. Explain the Process: The  attorney will explain how trademark registration works and based on the  information you provide what steps you need to take, or what issues you may encounter during the process.

3. Assess Eligibility: The attorney can help figure out if your word or logo can be trademarked. If  you want to protect a logo, the analysis will probably require additional time.

4. Discuss Strategy: You may use this call to talk with the attorney about the best way to protect your brand.

 
If you want to protect a word and a logo, these could be one or two trademarks depending on how they’re used:
 
  • One Trademark: If the word is part of the logo and always appears with it, you might register them together.
  • Two Trademarks: If you use the word separately from the logo, you might need to register each one on its own.
The attorney can help you decide the best approach during the call.
 
 
 
 
 
 

 

Other hourly rates

After the discovery call you may decide if one to get one of our flat fee trademark services or consult with the office on an hourly rate. The hourly rate is variable starting at $150. 

The Trademark Registration Process

We make the registration and protection of your trademark easy.

A federal trademark registration is obtained by filing an application, along with the requisite fee, with the U.S. Patent and Trademark Office (USPTO). An application may be filed on either Principal Register or Supplemental Register and is examined/prosecuted in the USPTO by one of many staff trademark attorneys.

If there are any grounds for refusing an application, the examiner will raise them in an Office Action. The examiner’s objections must be fully resolved or withdrawn for the application to proceed to publication. Once a Principal Register application is published, third parties may object to the application by filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB). The application will proceed to registration if no opposition is filed or if an opposition is withdrawn or successfully defended. Supplemental Register applications proceed directly to registration once published. Our NYC trademark attorneys can help with the trademark registration process.

The analysis of the mark the client wants

The first step is to have an open conversation about the trademark you want. For purposes of this meeting, it is essential that you share with out your objective and goals. Additionally, we will to conduct a USPTO trademark search. Therefore, it will be a ideal if a a member of your marketing team is present. If change are necessary, it is important that understand what those changes are. Our goal is to understand what you want in terms of the trademark, in the short and long term. This will also make easier are job when conduct that important USPTO Trademark Search. This meeting is one the most important because it allows our office to determine: whether you can register the mark, if you need to modify the mark, if you need to make adjustments in terms of the use of the trademark in commerce, or if you need to come up with a new trademark.

How to Trademark a Name… The number of marks to be registered

After our first meeting, we will be able to understand your trademark and can explain if, according to your goals, you need one or more applications. You may want to protect several elements of the trademark. For this purpose, we can register for you the trademark as a word trademark without protecting any specific visual elements. If you also want to protect specific visual or artistic components of the mark, we can file two different registrations, one for the words of the trademark alone and one for the trademark with a visual design.

Additionally, some clients sell products using specific packaging or presentation. These features of a product can be classified as trade dress if they comply with specific requirements. Trade dress is another form of a trademark, and it can be registered too. Trade dress is, generally speaking, the total image and overall appearance of a product or service. It may include features such as size, shape, color or color combinations, texture, graphics, sounds, scents, and flavors, motion and moving images, particular business techniques, and the look and feel of a website.

The classes of goods or services for mark

Another critical aspect of the attorney’s services is understanding the client’s business and what the trademark is doing for it. The client may have a business that provides several goods and services; this does not necessarily mean that the mark can be registered to identify all of them. To register a trademark, the USPTO requires that the applicant make a specific description of the type of goods or services distinguished by the trademark and submit proof of such use. That evidence is called a “specimen” of use in commerce.

Considering all this, the attorney must review how the client is selling or promoting its goods or services and what marketing or advertising materials are using. Some clients are unique entrepreneurs that attract customers by talking indirectly about what they sell. An example of this is Starbucks, which is known to promote itself by “selling you an experience,” not a coffee. In terms of marketing, this strategy probably works. However, in terms of trademark law, an applicant must directly show to the USPTO examiner the goods or services promoted by the trademark. In terms of the USPTO, the applicant must show a “direct association between the mark and the goods or services.“.

In sum, with the attorney’s help, the client can assign a proper classification of goods or services to the trademark and submit the proper evidence to show the use of the trademark in commerce.

The registrability of the trademark and the assessment of risk

Finally, the attorney’s most crucial task is to build a Trademark Clearance Report covering the analysis explained above and assess possible problems with the registrations if the client and the attorney don’t make corrections. The report explains to the client the following:

– The type of trademark that will be registered.- Whether there are prior similar trademark registrations or applications.- Whether there are any conflicts.- Whether there are any factors that the examining attorney can use to deny registration or request additional evidence.

It is also worth noting that in contrast with the research that a non-attorney can perform, a U.S. trademark attorney will conduct comprehensive research in order to determine the existence of grounds for denial, including the existence of common law trademarks, the existence of business names similar to the trademark, the existence of marks registered in states where the client wants to do business, the existence of other legal issues like a constitutional bar to registration or right of publicity issues.

The report built by the attorney is crucial because it is the basis of the client’s final decision to proceed with the trademark as it is or to change the trademark. Additionally, if, despite diligent work performed by the attorney, the USPTO Examining Attorney objects to the registration, the report serves as a basis and a guide to defending the client’s trademark application.

Speak with a trademark attorney in NYC today

Call (347) 329-3952 today to schedule your free consultation.

What Can We Do When There Are Two Similar Trademarks?

New York Trademark Attorneys

The similarity between trademarks is important in two scenarios, registration or litigation. Similarity is a concept usually used in the context of copyright law because similarity is important to establish copyright infringement or copyrightability. In the trademark law context, the similarity is important because the USPTO wants to avoid the co-existence of trademarks that are likely to confuse. Similarity by itself is not an issue; however, if two trademarks are so similar that a potential consumer could be confused about the commercial source of goods or services, then trademark similarity can be a problem.

What Can We Do When There Are Two Similar Trademarks?

New York Trademark Attorneys

The similarity between trademarks is important in two scenarios, registration or litigation. Similarity is a concept usually used in the context of copyright law because similarity is important to establish copyright infringement or copyrightability. In the trademark law context, the similarity is important because the USPTO wants to avoid the co-existence of trademarks that are likely to confuse. Similarity by itself is not an issue; however, if two trademarks are so similar that a potential consumer could be confused about the commercial source of goods or services, then trademark similarity can be a problem.

Trademarks’ similarity in the context of registration

When an applicant applies to register a trademark, the USPTO examining attorney researches to establish if there are other similar trademarks already registered. If there are trademarks using similar words, logos, or features, this is not a problem if each trademark is used to distinguish different and unrelated goods or services. In other words, if IVON and IVONN are registered but one is used to mark financial consulting services, and the other is register to promote organic goods, this is unlikely to be a problem. Considering this, before an application for registration is filed, attorneys conduct a clearance search, which allows them to advise clients regarding the viability of a trademark or the existence of risk factors. Our New York trademark attorneys at G.A.M. Law Offices can help you address any questions or concerns regarding the similarity of trademarks in New York, NYC, and beyond.

The specific case of famous trademarks

Even though similar trademarks in different industries can co-exist, when a trademark is very popular among consumers or when it has achieved recognition in more than one market, that trademark can be categorized as a famous trademark can prevent the registration of similar trademarks, even if they are used in a different industry, this applies to trademarks in New York as well. For example, even though the Nike logo is used especially to promote sports clothing and sports footwear, it is unlikely that Nike will stand by while another tries to register a similar trademark in the health industry or for purposes of financial coaching services. Nike has gained such a level of recognition that it is unlikely that trademarks similar to Nike’s logo are registered.

What could happen if similar trademarks are filed for registrations?

If two or more similar trademarks are filed for registration before the USPTO, the examining attorney will probably issue an Office Action requesting the applicants to offer evidence that proves there is no likelihood of confusion; that is, evidence that proves that a potential purchaser would be able to distinguish between the applicant’s goods or services.

Trademarks’ similarity in the context of litigation

Trademarks’ similarity issues arise in the context of litigation when a trademark owner files a complaint against another alleging trademark infringement, counterfeiting, unfair competition, and trademark dilution. In this case, the owner of a trademark states that another is using its trademark without authorization, that the coexistence of the two marks is likely to cause confusion, and/or that the defendant’s goods or services are being promoted as if the trademark owner offered them.

Trademark Infringement

Section 32 of the Lanham Act, 15 U.S.C. § 1114(1), governs trademark infringement claims. To file a claim according to this section, the trademark of the plaintiff must be registered. The basic elements of this cause of action are that:

 

Plaintiff owns a valid and legally protectable trademark.- Defendant used that mark or a similar mark without consent.- Defendant’s use of the mark at issue has caused a likelihood of confusion.

Trademark Dilution

Trademark dilution is a cause of action raised by the owners of a famous trademark. The rationale behind trademark dilution is that an unauthorized third-party using a famous trademark is likely to reduce the public’s perception that the famous mark signifies something unique, singular, or particular. There are two types of dilution: dilution by blurring and dilution by tarnishment.

– Dilution by blurring occurs when a famous mark’s distinctiveness is slowly whittled away by a similar mark used in connection with different goods or services.- Dilution by tarnishment occurs when a famous mark is linked to shoddy quality products or is portrayed in an unsavory context, thus harming its reputation.

– Plaintiff owns a valid and legally protectable trademark.- Defendant used that mark or a similar mark without consent.- Defendant’s use of the mark at issue has caused a likelihood of confusion.

Counterfeiting

Counterfeiting takes place when a third-party try to imitate another’ mark, with the intent to steal, destroy, or replace the recognition of the original, or to deceive consumers.

At G.A.M. Law Offices, our trademark lawyers are dedicated to your success.

Call (347) 329-3952 today to schedule your free consultation.

Likelihood of confusion

The last concept that is important to explore thinking about similar trademarks’ co-existence is likelihood of confusion. Likelihood of confusion is a legal term that trademark common law has developed with time. The most famous decision about likelihood of confusion is the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). According to the Du Pont case, there are several factors that an agency can consider to determine if there is a likelihood of confusion between two marks, such as appearance, sound, connotation, and commercial impression. An agency may also consider the similarity and nature of the goods, trade channels, consumers, and marketing strategies.

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