Miami Trademark Attorney
A Miami Trademark lawyer can assist you in matters related to registering, defending, and enforcing your trademark rights. The right trademark attorney will smooth the processes of registration and handling infringements and litigation and will help you strengthen your brand.
What is A Trademark?
A trademark is a word, phrase, or logo designed to identify and distinguish the source of goods or services. In order for a trademark to be valid, it must be in use in commerce. In other words, you can’t simply trademark a name you like so others can’t use it. Rather, the trademark must be used in conjunction with specified products or services.
Trademark owners have exclusive rights to use the trademark, and can attempt to prevent others from using similar trademarks through legal action. Registering your trademark with the United States Patent and Trademark Office (USPTO) gives you the highest level of trademark protection. Unregistered trademarks are still afforded some degree of protection under common law trademark rights, but these rights typically only extend locally.
The USPTO does not enforce trademark rights, so it is the onus of the owner to diligently monitor the usage of their trademark and act promptly in cases of infringement.
Trademarks can be federally registered with the USPTO. A trademark attorney will help you through the process of registration, and will handle a trademark search which is the best first step toward registration. The benefits of registering your trademark include:
- Presumption of validity and ownership nationwide, which gives you a key advantage in potential litigation
- Basis for filing for international trademark protection
- Ability to use the registered trademark symbol (®) in conjunction with specified goods or services
- Constructive notice to other businesses about your rights
- Enhanced ability to sell or license your trademark rights
The Importance of Selecting a Strong Trademark
A strong trademark isn’t merely generic or descriptive. You need to choose a distinctive trademark that will minimize your chances of dealing with infringement issues. You do not want to invest the money in designing a website or printing advertisements, only to discover that your trademark is too similar to an existing trademark.
You can ensure that your desired trademark is up for grabs by having a trademark attorney run a professional trademark search prior to registration.
Trademark searches are partially done using the Trademark Electronic Search System (TESS), a free tool on the USPTO website. A simple search can often let you know if your desired trademark has already been federally registered, or if it is currently pending registration.
It’s important to note that a trademark search should extend beyond TESS. Because unregistered trademarks can still be protected by common law trademark rights, you should perform a wider search to ensure that your desired trademark isn’t in use by another business.
Even if a trademark isn’t identical to your own, a trademark might be deemed too similar if you share a similar commercial impression, or if the trademark sounds the same when spoken out loud. Trademark attorneys are skilled in doing trademark searches that identify potential red flags you might otherwise miss in an independent search.
Once you are certain that your desired trademark does not infringe on an existing trademark, you can begin the process of registration with the USPTO by submitting a trademark application. On your application, you are required to provide information about your trademark, as well as a specimen proving that your trademark is in current use. This could simply be a dated website sample, or an picture of the product or packing showing the trademark.
The application will also require you to specify the types of products or services you are registering in conjunction with the trademark. The government filing fees are typically $225 per class of goods or services. These fees are non-refundable, even if your trademark application is rejected. Trademark attorneys can ensure that there is no incorrect or missing information in your application before submission.
Once your trademark application is submitted, it is reviewed by an examining attorney. At this point, the examining attorney will either approve or reject the application. The most common reason an application is rejected is if it is confusingly similar to an existing trademark.
If your application is rejected, your best bet is to discuss your options with an Miami trademark attorney.
When your trademark application is approved, your trademark will be published for opposition in the Trademark Official Gazette (TMOG). At that time, other trademark owners with demonstrable, vested interest in the matter can come forward and oppose your application.
Oppositions are overseen by the Trademark Trial and Appeal Board (TTAB). These proceedings function as mini trials. Both parties are expected to adhere to the timeline set out by the TTAB. Your trademark attorney will ensure that the correct information is provided and that all deadlines are met. As in a civil trial, there is a period of discovery. During this period, your trademark attorney will build your best case by gathering evidence and interviewing relevant witnesses. The legal fees are much smaller in an opposition than in federal court because the entire case is handled in a streamlined manner.
Oppositions can take several months to reach a resolution. At the end of the case, your trademark will either be cleared for registration, or denied. The decision can be appealed to a federal court.
After your trademark has been successfully registered, you will need to renew it regularly to maintain registration. You must renew your trademark after the fifth year of registration, and then every ten years after registration.
Properly policing a registered trademark means regularly monitoring the usage of your trademark and enforcing those rights as needed. You risk losing trust from your consumers and devaluing your trademark by ignoring infringement.
Monitoring Your Trademark
Trademark attorneys offer trademark watch services that can assist in the process of defending your rights. Once you have a trademark watch in place, you will receive regular reports about the usage of your trademark that will enable you to easily discover infringement.
Cease and Desist Letters
Upon discovering trademark infringement, your first step should be to have a trademark attorney send a cease and desist letter. This letter alerts the infringing party of your rights, and warns that further unauthorized usage of your trademark will result in legal action. Your trademark attorney might also request monetary compensation if you believe that the infringing party has profited from the unauthorized usage of your trademark.
If the infringing party fails to comply with the terms outlined in the cease and desist letter, the next step might be to file a trademark lawsuit.
Receiving a Cease and Desist Letter
Many company owners erroneously believe that receiving a cease and desist letter means they are being sued. Fortunately, this isn’t the case, but receiving the letter should not be taken lightly. Your trademark attorney can attempt to negotiate a peaceful resolution. Many times, the other party is just as eager to avoid a lawsuit, and a careful, measured response by your trademark lawyer will go a long way in reaching a mutually beneficial agreement.
There are some instances where the only option is to file a trademark infringement lawsuit. A trademark attorney assists you throughout the process. At any point in the litigation, a deal between the two parties can be struck, and the lawsuit will end.
Filing a Trademark Lawsuit
The first step in the trademark litigation process is to file a lawsuit. The claim will be written up by an attorney, and outline the specifics of the infringement, along with proof of the claimant’s ownership of the trademark at issue. The plaintiff may request an injunction to prevent the infringing party from using the trademark. The plaintiff may also demand monetary compensation or coverage of legal fees if the unauthorized party has profited off the use of the trademark.
Once the defendant has been served with the lawsuit, they have 21 days to file a response. This response may admit to the allegations, or deny the claims and offer their own proof of trademark ownership. At this point, the defendant may file a motion to dismiss if they believe there is no factual basis for a lawsuit. If the motion is successful, the lawsuit ends there.
The Discovery Phase
The next stage of the trial is the discovery period. During this time, both sides will build their cases by gathering evidence related to their trademark. This could include financial records or documents that prove your trademark has been used in commerce. Both sides might also take this opportunity to interview witnesses, take depositions, or bring in experts relevant to the lawsuit.
Both parties may request information from the opposing side to strengthen their case. This is an enlightening phase of the litigation, and either party may discover their case is stronger or weaker than they previously thought.
After the discovery phase, either side might seek to avoid a trial by filing a motion for summary judgement, which asks the court to make an immediate decision based on the evidence gathered during the discovery period. Alternatively, another attempt might be made at negotiating an agreement between the parties. If an agreement can’t be reached, and a motion for summary judgment is not successful, the case will move forward to trial.
In trademark infringement trials, the burden of proof is on the plaintiff to demonstrate that an infringement has occurred. During the trial, both sides will present their best arguments. Here are the common defenses used in a trademark infringement lawsuit:
- Unclean hands: The defendant might argue that the plaintiff has acted poorly in the case, and therefore should not be rewarded with an injunction or damages.
- Abandoned trademark: The defendant might be able to prove that the trademark has been abandoned by its owner, and thus is not entitled to protection.
- Laches: If the plaintiff unreasonably delayed in taking action on an infringement, the defendant might invoke a Laches defense.
- No infringement: The defendant might be able to prove that no infringement took place, and that they were well within their rights to use the trademark.
- Fair Use: In certain scenarios, it is okay to use a trademark if it does not cause likelihood of confusion.
The courts will reach a decision regarding if the infringement took place and what the damages should be. The damages might include an injunction, compensation for ill-gained profits, and attorneys fees in exceptional cases.