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501 Fifth Avenue, Suite 1203
New York, NY 10017

(212) 873-0250

Bellizio & Igel, PLLC is a New York City law firm which advises entrepreneurs and businesses of all sizes in a variety of industries such as technology, media, entertainment and the arts.

FAQs

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1. What is a “trademark” or “servicemark”?

A trademark is a word, name, symbol, or device used in trade to indicate the source of goods and to distinguish them from the goods of others. A servicemark is the same, except it indicates and distinguishes the source of a service rather than a good. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

The U.S. Patent and Trademark Office (PTO) reviews trademark applications and decides whether or not to grant federal registration. The PTO does not: (i) conduct trademark searches for applicants, (ii) provide opinions as to the registerability of a proposed mark, (iii) make decisions on the applicant’s right to use a mark or (iv) give any legal advice


2. What is the difference between the notations TM, SM and ®?

Any time you claim rights in a mark, you may use the “TM” (trademark) or “SM” (service mark) designation to alert the public to your claim, regardless of whether or not you have filed an application with the PTO. However, you may use the federal registration symbol “®” only after the PTO actually registers your mark, and not while an application is pending.


3. Should marks be registered?

Registration is not required, as the right or ownership of a mark is established by the legitimate use of the mark. However, securing a registration is highly recommended. The main benefits of registering a trademark are that it:

    • provides exclusive, national scope and protection to the mark and its usage

    • acts as public notice and gives legal presumption of ownership

    • gives the right to sue for infringement in federal courts

    • helps to obtain registration in foreign countries

    • helps to prevent importation of infringing foreign goods

    • grants the right to use the “®” symbol, which may deter potential infringers


4. Do I need a trademark attorney to register the mark?

Not necessarily, as you can file the application yourself. However, the services of a skilled trademark attorney who is familiar with conducting searches, the detailed application filing procedure and maintenance requirements will help you to save time, avoid liability, ensure proper protection in the appropriate classes and avoid unwarranted rejection.


5. Can I apply for a mark without actually using it?

Yes. You can file on the basis of a bonafide “intent to use” the mark in commerce in the future. There are additional, post-application fee and filing requirements for marks filed on an “intent to use” basis.  You must file either a Statement of Use (“SOU”) or an extension within six months after your initial application has been accepted to prove your “actual use” in the marketplace or to extend your time to prove such use for an additional six months.  You are entitled to five consecutive extensions for a total of 2.5 years.  Thereafter, you would have to file a SOU or the mark would be abandoned.  Actual use of the mark must begin before the PTO registers the mark. Pricing is available here.


6. What is a trademark search?

A search for conflicting marks is necessary to ascertain the uniqueness and ultimate registerability of your mark. A search will confirm whether or not there is a similar mark already in use as a registered mark, or part of a pending application, in the same or similar classes. We conduct our search using the PTO website, search engines and proprietary software to achieve the most comprehensive results possible. Thereafter, we provide you with a detailed opinion letter summarizing our findings. Our search fees are available here.


7. On what grounds might my application be rejected?

The application can be rejected for a number of reasons, including, without limitation:

1. The mark (or a confusingly similar mark) is already in use as a registered mark, or is part of a senior pending application.

2. The mark uses words that generically identify a good or service (e.g. ‘Pen’ for a pen manufacturer).

3. “Merely descriptive” marks:

    • Descriptive of the goods or service (e.g. ‘Small’ for a compact computer)

    • Descriptive of quality or feature of goods or service (e.g. ‘Fast’ for a super fast car)

    • Geographically descriptive (e.g. ‘California’ for a software company)

    • Descriptive of an individual by using merely a surname (e.g. ‘John’ for a law firm)

4. “Deceptive” marks: The mark misleads people as to the nature, quality, feature or geographic origin of the goods

5. Immoral or Scandalous Marks

6. Government’s flag, armorial bearings, official hallmarks and emblems of states and international organizations

7. Name, portrait or signature of a living person (without first obtaining consent)


8. What is an "Office Action"?

An “Office Action” is a letter from the PTO refusing registration of a trademark application. Refusals may be informal, requiring clarification or amendment of the application in order to place it in proper condition for publication. Informalities include problems with the identification of goods or services, the legal entity status or citizenship of the applicant, improper specimens, etc. More complicated problems may involve substantive legal refusals based on statutory prohibitions, such as refusals based on mere descriptiveness (or generic marks), likelihood of confusion or scandalous marks. If you receive an “Office Action” from the PTO, you may require legal assistance to properly respond to the issues. Absent such a response, your application may be abandoned and you may lose your rights. We can assist you with a proper response to an Office Action.


9. What is publication for opposition?

Once the PTO is convinced about the credentials and uniqueness of your mark, your mark will be published in the Official Gazette. The PTO offers thirty (30) days from the date of publication for any third-party to file an appeal against the approval of your mark. If there is no opposition either a Certificate of Registration (for applications based on actual use) or a Notice of Allowance (for “intent to use” applications) will be issued. Certificates of Registration are typically issued about twelve weeks after the date the mark was published.


10. What is a Notice of Allowance (NOA)?

If the mark is published based upon the applicant's bona fide intention to use the mark in commerce, and no party files an opposition or a request to extend the time to oppose, the PTO will issue a NOA about twelve (12) weeks after the date the mark was published. The applicant then has six months from the date of the NOA to either: (i) use the mark in commerce and submit a SOU or (ii) request an extension. The PTO will issue the registration certificate only after the SOU is filed and approved.


11. What is an Allegation of Use (AOU)?

This is a sworn statement signed by the owner (or a person authorized to sign on behalf of the owner) to declare the use of the mark in commerce. An AOU can be filed only: (i) on or before the day the PTO approves the mark for publication in the Official Gazette or (ii) on or after the day the PTO issues the NOA. An AOU filed before the mark is approved for publication is called an Amendment to Allege Use. An AOU filed after the NOA is issued is called a SOU. The AOU must be filed along with: (i) a specimen showing use of the mark in commerce for each class of goods or services listed in the original application and (ii) the appropriate filing fee. services.


12. How long does a trademark last?

Rights in a federally-registered mark can last indefinitely if the owner continues to use the mark in connection with the goods/services in the registration and files all necessary documentation in the PTO at the appropriate times. Most registrants file (i) a Combined Declaration of Use and Incontestability (“Section 8 & 15”) between the 5th and 6th years after their registration date and (ii) a Combined Declaration of Use and Application for Renewal (“Section 8 & 9”) between the 9th and 10th years after their registration date, and every ten years thereafter. Pricing is available here.


13. How long will it take to register the trademark with the PTO?

You have to be patient as the completion of the registration process may take a long time. The applicant should receive a response to the application from the PTO within six (6) months from filing the application. However, the total time for an application to be processed may be more than a year, depending on the basis for filing, and the legal issues which may arise in the examination of the application.


14. Is my US registration valid in foreign countries?

No. US registration protects your rights only within the US. For protection in foreign countries, you need to register your mark internationally. This is typically accomplished on a country-by-country basis. However, there are a few international agreements that give the benefit of multiple filings across different member countries by filing just one application. For more information about international searches and filings, please contact us.


15. How can I protect my registered trademark?

The golden rule is to continue to use your mark in trade and commerce. At the same time, be wary of potential infringers and counterfeiters. If you happen to come across any misuse of your registered mark, you must notify the infringing parties or risk losing your trademark rights. ‘Aspirin’ lost its trademark status due to the failure of the owner to prevent others from using it. We can help you protect your trademark.


16. What if there is a trademark infringement?

If there has been an infringement of your trademark, you can file a claim under the federal and state laws. As the plaintiff, the onus will be on you to prove that the use of a similar mark by the defendant has created a likelihood of confusion. If you are successful in establishing that there has been an infringement: (i) the court will grant an injunction against further infringement, (ii) your attorney’s fees will be recouped, if the mark is federally registered and (iii) you may be awarded monetary damages.


17. Can I register my domain name as a trademark?

Yes, provided the domain name is used to provide a unique and distinct image and identity to your goods or services. Simply registering your domain name does not mean that the domain name is protected as a trademark.


18. Is a "trademark" the same as a "trade name?"

No. A “trade name” is a name an owner uses to identify his or her business. It normally ends with “Inc.,” “LLC.,” etc. Trade names are typically registered with the county in which the business operates. For more information about forming an entity, please contact us.


19. What is a “copyright”?

A copyright is a legal right granted to authors of “original works of authorship” that are fixed in a tangible form of expression, whether published or unpublished. Copyright protection is available for the following types of works: Literary, Musical, Dramatic, Choreographic, Architectural, Pictorial, Graphic, Sculptural, Sound recordings, Motion pictures and other audiovisual works.


20. What are the benefits of timely copyright registration?

While conventional wisdom suggests that copyright protection exists once a work is reduced to writing (or any other tangible medium, as in the case of software code written to disk), a copyright must be registered with the U.S. Copyright Office before a party may sue in federal court for its infringement. A bonus is granted to those that register their copyrights immediately, or within three (3) months of publication, in the form of statutory damages and attorney’s fees for infringement. We can assist you in filing the documents needed to register your copyright.


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