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Trademark - Frequently Asked Questions

  • What types of marks are there?

    There are many types of marks. These include:

    1. Trademarks: Trademark is a "word, name, symbol, or device, or any combination thereof used… in commerce… to identify and distinguish… goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. §1127.

    2. Service Marks: Service mark is "any word, name, symbol, or device, or any combination thereof used…in commerce…to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown." Id. Service Marks identify the source of services.

    3. Trade Dress: Trade Dress is a particular type of trademark or service mark that is “the design and appearance of a product together with the elements making up the overall image that serves to identify the product presented to the consumer.” Chrysler Corp. V. Silva, 118 F.3d 56, 58 (1st Cir. 1997).

    4. Collective Marks: A collective mark is one that is used by members of a group or organization.

    5. Certification Marks: A Certification Mark is a symbol, - in addition or separate from the trademark of the owner, - that is used to certify certain goods or services meeting certain designated standards by the entity that provides the certification.

  • Who owns the mark?

    Unless trademark rights are ascertained via contract, as is often the case, the person who controls the first use of the mark is the owner. Thus, since employers usually retain control, they may be deemed to be its owner despite use of the mark by vendors, independent contractors or employees. An owner of a mark could be a distributor, manufacturer, retailer, purchaser or some other entity.

  • Which are the requirements to qualify as a valid mark??

    In order for a mark to distinguish or identify the source of goods or services in commerce, it must be distinctive, must not give rise to likelihood of confusion with another mark, and must not fall within certain categorical restrictions. All three are key factors that must be satisfied before a symbol can meet the qualifications of a mark.

  • Can I assign my mark rights?

    Yes, provided it is in writing, signed, and either sold or licensed in a manner that results in the same or similar products or services the mark was previously applied to. Licensor or transferor should keep in mind the doctrine of secondary and contributory liability, holding owner liable for injury causing goods with his or her trademark, or when owner assists an associated party to cause infringement.

  • What can I trademark?

    A mark must sufficiently differentiate itself from an existing mark to prevent confusion in the mind of a reasonable consumer. In this respect, it is important to consider factors such as the similarity of your mark to an existing name, geographical proximity, closeness of your goods and services, size, visual design elements, the type of industry involved and so forth. Marks must also be sufficiently distinctive to qualify for protection.

  • Who governs the application of trademarks?

    The United States Patent and Trademark Office (USPTO) governs the application of trademark in the context of federal law. However, it is not uncommon for businesses to overlook state law requirements when picking a service or trademark to market a service or product.

  • What Happens Once a Trademark Application is Filed?

    Once USPTO receives your trademark application and the required fee, the application is assigned to an examining attorney to determine if the mark can be registered. That attorney may contact you to request that you disclaim any portion of the mark to permit registration of the remainder. Otherwise, if the mark is determined registrable your mark will be published in the Official Gazette of the Patent and Trademark Office.

  • What are the repercussions of not changing my business name? I live in an HOA community in Tradition (Port St. Lucie, FL). I run a licensed business from my home. I've done so for 7 years. I recently got a certified letter stating that I need to reply regarding the name of my business. The letter had a copy of a page from the "Charter" (rules, I guess) stating I can't use the name "Tradition" in my business without prior consent. I've used it for years and can't see how they can make me change a word. I am not a homeowner, but a renter. I can change the legal address of the business to a PO Box if I have to.

    You need to speak with the HOA or their attorney and obtain more information detailing how and in what manner they claim the use of the name "Tradition" constitutes a possible infringement. Also, while not always the case, a lot of successful businesses who eventually seek trademark protection are denied registration because of a conflicting name. So if one day you decide to trademark your business this may or may not be an issue that you will need to confront. I recommend you speak with an experienced trademark attorney to help reduce or avoid the risk of any existing or potential conflict.

  • Licensing my Service mark in FL - I have negotiated business terms with someone that wants to license my service mark to open up their own real estate company. I need someone to look at my agreement as soon as possible.

    You should consult with a trademark attorney. There are a lot of traps for the unwary licensor and in absence of certain provisions within the policy you may find yourself at a disadvantage. The trademark attorney you consult with is likely to ask additional questions from you and may need to obtain other information to ensure the validity and scope of the agreement.

  • I have been in business in Florida for the past 10 years. I received a letter from a company stating they trademarked the name. What leg do i have to stand on?

    You will need to have an attorney look over this matter. One of the first steps your trademark attorney will take is assess whether or not that company stating the name has already been taken has a priority over the name. The answer to this question will determine which subsequent you will follow. There are many factors that need to be considered in deciding whether or not a trademark infringement is actually taking place.

Contact our Trademark Attorney in Orlando, FL

Hiring an experienced trademark lawyer when starting a business or a new line of products or services is a very important step towards avoiding potential problems in the future because of trademark infringement issues. Contact us today for a free consultation. We can provide legal advice or assist you with registration of your trademark filing. We are available at 407-205-2330. You may also fill out the online form located on this page and our Orlando trademark attorney will contact you shortly. We would be honored to assist you.

 

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