PA Intellectual Property Attorney
What is a trademark?
A trademark or service mark includes words, names, or symbols, (or any combination of them) that are used or intended to be used to identify and distinguish goods or services from different sellers and to indicate the source of those goods and services. Marks generally fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic. Fanciful marks (those with no dictionary or other known meaning) or arbitrary marks (actual words with a known meaning that has no relationship with the goods or services protected) are inherently distinctive and the strongest and easiest to protect; suggestive marks (those that suggest, but do not describe qualities or a connection to the goods or services) are registrable and considered strong marks; descriptive marks (words or designs that describe the goods or services) are considered weaker and more difficult to protect; and generic marks (common, everyday names for goods or services) are never registrable or enforceable.
How do you register a trademark?
As part of our legal services, we work with our clients to determine whether a desired mark is registrable, and if so, we help them prepare, file and obtain their respective marks. In particular, in order to determine whether a particular mark is available and protectable, we conduct a thorough search of the Trademark Electronic Search System ("TESS"), which is intended to determine whether any other person or entity currently owns (or has applied to own) a registered mark that is identical or substantially similar to the mark sought by our client. We also search the USPTO's goods and services manual to determine the classes of goods or services to which the proposed mark relates. We then prepare and file an electronic application for review by the USPTO.
The trademark application process
During the application process, we also respond to USPTO office actions in order to try to overcome issues that an examiner may find with respect to the desired mark. For example, an examiner may refuse registration on the grounds that there is a likelihood of confusion between the desired mark and a pending application or existing mark owned by another party. As another example, an examiner may determine that the desired mark is weak, i.e., descriptive of the goods or services, which would make the desired mark difficult for the client to use and protect against potential infringers. Also, we represent our clients in matters before the Trademark Trial and Appeal Board ("TTAB"), which has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.
The benefits of federal registration of a trademark
Federal registration of a mark is not required; however, owning a federal registration provides certain advantages, including a legal presumption of the ownership of the mark and the exclusive right to use the mark nationwide, public notice of ownership of the mark, and the ability to bring an action concerning the mark in federal court.
In addition to prosecuting trademarks for our clients, we also represent our clients in litigation matters involving trademarks. We have represented various clients as both plaintiffs and defendants in trademark infringement cases in federal court. We have defended a franchisee that was being sued for trademark infringement and for alleged violations of the franchise agreement, and we were able to posture the case in such a way through aggressive litigation for the client to negotiate a successful settlement. In another matter, we represented a trademark owner that sued a competing entity for using and trading on a name that was identical to our client's mark. Our client obtained a consent order from the defendants that they would not use the mark in any capacity and also recovered a favorable settlement. We also represented a client in a TTAB proceeding where another user contested the client's right to use the trademark.
Contact Our Pennsylvania Intellectual Property Lawyers Today: Business Litigation. Pittsburgh Strong.®
Attorney Henry Sneath chairs the firm's Intellectual Property Practice Group. Contact him at 412-288-4013. Our PSMN ® trademark attorneys help clients navigate intellectual property including trademarks and copyrights by providing them with the knowledge and information needed to make informed decisions.