Intellectual Property Law
A trademark can include:
Trademark protection generally requires:
Trademark questions come up at every stage of business, from choosing a name before launch to addressing a conflict years later. We help you understand where you stand and what your options are at each step.
Not every name or logo qualifies for trademark protection, and not every mark that qualifies is worth registering. We start by discussing what you are using, how you are using it, and what level of protection makes sense given your business goals.
Before investing in a brand, it is worth understanding whether a similar mark already exists. A trademark clearance search reviews existing federal registrations, pending applications, and common law uses to identify potential conflicts. Finding a conflict before you launch is considerably less costly than finding one after.
Trademark rights can arise from use alone, but federal registration with the United States Patent and Trademark Office provides significant additional benefits, including a public record of your claim, a legal presumption of ownership, and the ability to use the registered trademark symbol. State registration is also an option for marks used only within Texas. We help you understand the differences and what makes sense for your situation.
A federal trademark application requires identifying the mark, the goods or services it covers, the basis for filing, and a specimen showing use in commerce. How the application is prepared, including how the description of goods and services is written, affects the scope of what gets covered. Errors or omissions in the application can delay examination or limit the protection you receive.
After filing, a USPTO examining attorney reviews the application and may issue an office action raising legal or technical objections. Common objections include likelihood of confusion with an existing mark or descriptiveness of the mark itself. Responding to office actions clearly and on time is a necessary part of moving an application toward registration.
A registered trademark requires ongoing maintenance filings to stay active. Rights can also be lost if a mark is abandoned through non-use or if it becomes generic over time. We help trademark owners understand their ongoing obligations and what steps make sense for maintaining the value of what they have built.
These three types of intellectual property cover different things. A trademark identifies the source of goods or services and distinguishes one business’s offerings from another’s. A copyright covers original creative works such as writing, art, music, and software. A patent covers inventions, processes, and novel designs. A business name or logo is a trademark question. A written work or photograph is a copyright question. A new product or process is a patent question. Some situations involve more than one type, and understanding which applies to your specific situation is a good starting point for any intellectual property conversation.
The TM symbol can be used with any mark you are claiming as a trademark for goods, regardless of whether it is registered. The SM symbol functions the same way for service marks. Neither requires federal registration. The registered trademark symbol, the R in a circle, may only be used after the USPTO has officially registered the mark. Using the registered symbol before registration is granted is a federal violation.
No. Trademark rights in the United States can arise from actual use of a mark in commerce, even without registration. These are called common law trademark rights. However, common law rights are generally limited to the geographic area where the mark is actually used. Federal registration provides broader rights, a public record of your claim, and additional legal tools that common law use alone does not. For businesses operating beyond a local area or planning to grow, federal registration is generally worth considering.
Likelihood of confusion is the primary standard used to determine whether one mark infringes on another. It does not require that two marks be identical. If consumers are likely to be confused about the source of goods or services because two marks are similar and the goods or services are related, a conflict may exist. Trademark examiners and courts look at multiple factors including the similarity of the marks, the relatedness of the goods or services, the channels of trade, and the sophistication of the consumers involved.
Generally, no. Marks that merely describe the goods or services they identify, or that are primarily geographically descriptive, face significant obstacles to registration. A mark that tells consumers what a product is or where it comes from rather than who makes it is considered weak from a trademark standpoint. There are limited exceptions, such as marks that have acquired distinctiveness through long and exclusive use, but descriptive and geographic marks are among the most commonly refused categories in trademark examination.
Trade dress refers to the overall commercial image or appearance of a product or business that identifies its source. This can include the design of packaging, the look of a product, or even the décor and layout of a retail location. Trade dress can qualify for trademark protection if it is distinctive and not functional. The Tex-Mex restaurant chain case involving the look and feel of a restaurant interior is a well-known example of trade dress litigation. Establishing trade dress protection typically requires demonstrating that consumers associate the appearance with a single source.
A federal trademark registration does not expire on a fixed schedule the way a patent does, but it does require maintenance filings to remain active. Between the fifth and sixth year after registration, the owner must file a declaration of continued use. Additional renewal filings are required every ten years. A registration that is not maintained through these filings will be cancelled. As long as the mark is in use and the required filings are made, a registration can remain active indefinitely.
The appropriate response depends on a number of factors, including whether your mark is registered, how similar the marks are, how related the goods or services are, and what outcome you are trying to reach. Options can range from sending a cease and desist communication to filing an opposition or cancellation proceeding with the USPTO to pursuing litigation. Understanding the strength of your position before taking action is an important first step. An attorney can help you think through your options based on the specifics of your situation.
Federal trademark registration is a national process handled through the USPTO, so the geographic location of the business does not determine whether we can assist with a federal filing. We work with Texas-based businesses and entrepreneurs on trademark matters as part of our broader intellectual property and business law practice.
