Federal Trademark Law

Devoted to streamlined services and individualized client care, we keep our diverse clientele informed of US trademark law and their US brands protected from counterfeits, unfair competitions, and other kinds of infringements.

We are proudly located in Philadelphia and serving trademark clients from around the world.

Things to Know Before You File.

1. Legal Rights of a Federally-Registered Trademark Owner

As the owner of a federally-registered trademark, you will have the following rights:

  • You will have nationwide priority to use the mark over anyone who use your mark or file an application for it after you.
  • You will have legal presumption of validity, ownership, and exclusive right to use the mark, which will make it very difficult for people to challenge you on these issues in court.
  • You will be allowed to file a trademark infringement lawsuit in federal court.
  • Your mark will be listed in USPTO’s database (register), which serves as a prominent nation-wide public notice of your ownership and registration status and thus reduces the possibility of other people using it in places you don’t know (concurrent use).
  • You can use the trademark symbols, especially the federal trademark registration symbol “®.
  • You can record your mark with the US Customs and Border Protection and have the right to obtain ex parte seizure of counterfeit goods.
  • You will have access to international registration via Paris Convention and Madrid Protocol.

2. Other Benefits of Having a Registered Trademark

  • You are now on the offensive side of the US trademark law. This means that instead of worrying about being sued for infringement, you can now go after infringers.
  • If you want to sell your business, a trademark can add great value to it as evidence of a nationally-recognizable and protectable brand, well-maintained business reputation, and more.
  • Online shopping sites, supermarkets, or other retail stores like Amazon, Costco, etc., prefer working with sellers who have a registered trademark. Particularly, an Amazon seller who owns a registered trademark can join Amazon’s Brand Registry to stop infringers and counterfeiters from listing their products on Amazon.

3. Importance of an Early Filing Date

It is very important to file your trademark registration application as early as possible, because doing so will give you two powerful weapons:

  1. You may retain priority over any application filed later than yours.
  2. You will enjoy retroactive trademark protection against any infringing mark that is used after your filing date.

4. Distinctiveness of a Trademark

Trademarks are all about making your goods/services distinctive from other people’s, and the law recognizes this principle and seeks to promote it.

There are five classes of trademarks in terms of distinctiveness. The more distinctive a trademark is, the stronger it is, meaning the easier its registration can be and the better it is protected by the law.

  • Weakest: Generic Marks. Instead of being a distinctive mark to set a product/service apart, a generic mark is basically a common term that people use to call all of the same products/services in the market. For example——
    • “videotape”
    • “dry ice“
    • “aspirin” (which had been a strong mark at the beginning, but became so common that it was downgraded to a generic term)
  • Somewhat Weak: Descriptive Marks. These marks merely describe some features of the underlying products/services. Think them as unimaginative adjectives people put before something. A descriptive mark cannot be protected unless it obtains a so-called “second meaning,” which is done through extensive branding that help people connect the mark with a particular brand of product/service. For example ——
    • Protected: SHARP (obtained
    • Not protected: hot buffalo wings
    • Not protected: someone’s surname or a geographic term
  • Moderate: Suggestive Marks. These marks are in-betweens, a middle ground between giving too much description of the product/service and giving too little. Instead of bragging features of the product/service out loud, a suggestive mark hint at what the brand is about. In other words, it takes a little guessing before the consumers realize what the product/service is. For example ——
    • AIRBUS
  • Strong: Arbitrary Marks. These marks are English words that tend to bear no connection with the underlying products/services. They get people’s attention by being imaginatively different. Therefore, they are highly protected. For example ——
    • APPLE
    • AMAZON
  • Strongest: Fanciful Marks. Theses marks take a step further towards distinctiveness: they are invented words just for the purpose of creating a brand. For example ——
    • GOOGLE
    • KODAK
    • HULU (Some may argue it is an arbitrary because it is “borrowed” from a Chinese word)

5. Overview of the US Trademark Registration Process

There are several kinds of trademark applications. The most common ones are “use-in-commerce” applications, which are also called “actual use” or “Section 1(a)” applications. With this option, the applicant has to use the mark commercially in the United States before registering it with the USPTO.

If the applicant wants to register a mark before using it, the applicant may file an “intent-to-use” application (a.k.a. “Section 1(b)” application). With this option, the applicant has to submit additional paperwork and proof of use after the USPTO initially approves it.

Here is a brief step-by-step guide of a “use-in-commerce” application.

  • Tasks before you register a trademark:

    • Come up with a mark.
    • Search and evaluate your mark with us.
    • Use your mark commercially.
    • Keep your proof of use (specimen).
    Don’t know how? Ask us. >>>

  • File a trademark application with the USPTO.

    • If you are not a US-based entity, you must do so through a US-licensed attorney.
    • Fill out our trademark service inquiry form to begin your application!
  • Wait until the USPTO finishes examining your application. In the meantime . . .

    • You must respond to any questions from the USPTO (officially dubbed “Office Actions”).
    • Once the examination is completed and all Office Actions are successfully resolved, the USPTO will publish your mark for opposition.
  • Wait until the Opposition Period clears.

    • In the US, the opposition period is 30 days by law. If no one opposes your application within these 30 days, your mark will be processed for final registration.
    • If someone opposes your application, a proceeding will be held before the Trademark Trial and Appeal Board (“TTAB”).
  • Now, your mark is registered!

    Enjoy using your trademark and protect your brand with the full strength of the law.

6. Length of Protection for a Registered Mark

As long as the owner uses the mark in commerce, the protection persists. Nevertheless, maintenance and renewal are required to keep your registration “alive.”

Between the 5th and the 6th year after the registration, you will need to file a maintenance document called an Affidavit of Use, which declares that you are still using the mark in the US. Between the 9th and 10th year after the registration, you need to file for a renewal.

7. Handling Infringement

An US trademark owner usually has three ways to handle a trademark infringement:

  1. Attempting to resolve the matter privately, such as:
    • Issuing a cease-and-desist letter to demand the infringer to stop the bad behaviors and potentially compensate for your loss;
    • If possible, asking for help from the e-commerce platform where the infringer sells its products (Amazon, for example, has an online Report Infringement form);
  2. Asking the USPTO to stop the infringement, which is done through either an opposition to new infringing trademark application before it is registered, or a petition to cancel an already-registered mark;
  3. Suing the infringer in federal or state court, which has authority not only to stop the bad behaviors, but also to award any monetary damages.

An owner should know that the US trademark law has a very expansive definition of infringement, which means that your trademark is well-protected against a variety of bad deeds, not only just counterfeits.

8. Handling Claims of Infringement: Time is of the Essence!

There are several ways that an opponent may challenge your trademark, and each requires you to respond diligently and pay close attention to deadlines.

For example, an opponent may oppose your trademark application during the Opposition Period, and you will have to answer it within a short period of time or your application will be considered as abandoned. Similarly, an opponent may ask USPTO to cancel your registered mark, and you will have to respond before the deadline to avoid abandonment of the registration.

Sometimes, an opponent may directly sue you for infringement in court. Once served with a complaint, you will have to respond or face the consequences of a default judgment against you. Consult us immediately if you receive any notice of infringement. 

About Our Trademark Services

The attorneys at Law Offices of Xingye Yan, Esq., LLC are licensed attorneys in the United States. We can help you navigate through the complex system of trademark registration and protection, and we frequently serve brands with cross-cultural and e-commerce marketing needs. If you need an attorney to help register a U.S. trademark or protect your brand in the U.S., ask us for our flat fee service packages or customized services.

Protect Your Mark.

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