NYC Trademark Attorney
A New York NYC trademark attorney can assist with the often tricky area of trademark registration, infringement claims, and litigation. Registering your trademark should be a top priority for business owners. Doing so provides legal protection and confirms your rights to use the trademark in connection with the goods or services your company offers.
What is a Trademark?
A trademark is any word, symbol, or device that is intended to be used in commerce to identify the source of goods or services. It is not legally required that you register your trademark with the U.S. Patent Trademark Office (USPTO), but doing so offers many advantages and protects your claim to ownership in potential trademark lawsuits.
The first step in federally registering your trademark is running a trademark search.
Conducting a Trademark Search
By doing a trademark search, you will be able to identify any potential issues with existing trademarks before they occur. If you attempt to apply for a trademark without performing a trademark search first, you could potentially open yourself to a lawsuit for trademark infringement. At the very least, you would lose your application fee without obtaining any rights.
Unfortunately, conducting this search isn’t as simple as plugging your desired trademark into a search engine and hitting the enter key. For example, you could easily miss an existing trademark by not searching for synonyms or something as small as missing a space in your desired brand name. It is a good idea to have a trademark attorney perform the search on the Trademark Electronic Search System to identify any red flags. Typically, our law firm charges $300 for a trademark search.
Applying for a Trademark
After a trademark lawyer has performed a trademark search, you can move forward with the trademark application process. In the application, you are required to provide proof that you are using or intend to use the trademark in commerce.
The most common reason a trademark application is refused is if it is likely to be confused with an existing trademark, through its appearance, meaning, or sound. The USPTO encourages applicants to have a trademark attorney handle the application process. According to a recent study, you are 50% more likely to successfully register a trademark if you have a trademark attorney than if you submit the application on your own. Our law firm typically charges about $650 for submitting a trademark application and doing basic follow up through registration.
Of course, simply registering your trademark does not guarantee that your trademark rights will not be infringed upon. Fortunately, there are several steps you can take to protect yourself and your business.
It is your responsibility to monitor your trademark and keep an eye out for infringement. Understandably, this can be a time consuming task, and requires constant vigilance from the trademark owner.
This is why it is a good idea to have a trademark attorney set up a trademark watch. This way, you will be notified immediately if somebody files for a similar trademark. Additionally, you can set up a Google alert so that you can track unauthorized uses of your trademark online. This is particularly useful for identifying misuse of your trademark from smaller infringing parties, like sellers on sites such as Etsy or Pinterest.
Cease and Desist Letter
If you are notified about a trademark infringement, your first step will typically be to send a cease and desist letter. A cease and desist letter is a formal demand to the infringing party to stop using the offending trademark. Depending on the severity of infringement, the letter could also demand monetary compensation if the party has profited through unlawful use of the trademark. Typically, if this letter is sent by a trademark attorney it is enough to stop infringement in its tracks. If the letter is ignored by the recipient, or receives a hostile or unreasonable response, your next step would be to file a trademark lawsuit in a federal court.
It should be noted that your letter is more likely to be taken seriously if it is sent by an attorney who litigates trademark lawsuits, as opposed to the business owner or a lawyer who does not handle trademark litigation in court. Our law firm typically charges about $550 for a standard cease and desist letter.
Receiving a Cease and Desist Letter
No matter how careful you are, there is always the chance that you could inadvertently infringe on another trademark owner’s rights. There is also the possibility that you could be the victim of trademark bullying. Trademark bullying occurs when a trademark owner uses their rights to harass or intimidate other business owners in an effort to hinder their competition.
In either case, you should allow a trademark attorney to handle your response to the letter. This demonstrates to the sender of the letter that you are serious about protecting your rights. It might also prevent a costly lawsuit from being filed against you. Additionally, a trademark lawyer can assist you in outlining exactly why you are not in violation of the claimant’s rights. Many business owners make a critical error in this step by exposing themselves to liability in their off the cuff responses. Having a trademark attorney handle your response is the safest way to avoid possible costly missteps.
If you are liable for trademark infringement, you should stop all use of the offending trademark immediately. A trademark attorney can help you negotiate a phase out period, so you can sell out the remainder of your inventory and avoid losing as much money as possible. While it might seem hard to believe that the claimant would allow this, most business owners want to avoid a costly lawsuit. Having a competent trademark attorney handle this negotiation is the key to reaching a deal that works out for everybody.
While a cease and desist letter from our law firm is rarely ignored, there is always the chance it could be, if you are dealing with an unreasonable party, or if they are purposely attempting to mislead consumers about the source of their products. If that happens, you will want to consider filing a trademark infringement lawsuit in a federal court.
While you could theoretically reach a settlement at any point in the litigation process, it is a good idea to have a general understanding of the entire process.
- Filing the lawsuit: The lawsuit begins once a complaint has been filed. In trademark cases, you can file in a court or with the Trademark Trial and Appeal Board (TTAB). If you are filing with the TTAB, you would file either a trademark opposition to stop a pending trademark application, or a trademark cancellation against an existing trademark registration. Our law firm has extensive experience handling lawsuits filed with the TTAB and in federal courts. If filed in a federal court, the defendant will have 21 days to file a response to the case. If the defendant files a Motion to Dismiss and the motion is granted, the lawsuit will end here.
- Discovery phase: Once the defendant has responded to the complaint, the discovery phase begins. At this point, the legal counsel of both parties connect to request evidence from the other party or to issue deposition notices. This is also the point where expert witnesses may be called to give statements.
- Summary judgement motions: After the discovery period ends, either party can file a motion for summary judgement. A summary judgement basically says that there are no facts in dispute, and that the next action can be decided without a trial. If this is granted, the lawsuit will end before going into court.
- The trial: Trademark trials typically last 4 to 5 days and are presented in front of a jury or judge. During the trial, attorneys from both sides will present their most compelling evidence and question witnesses.
The primary goal in trademark litigation is often to stop the unlawful use of the contested trademark, and not necessarily to seek damages. However, the plaintiff could be eligible for damages if the infringing party profited off the unauthorized commercial use of the trademark. This is especially true if the infringement was willful.
The Option to Countersue
If you are being sued for trademark infringement, you might take it as your cue to panic. This is understandable, but there are still several options available to you. If you have been accused of infringing on trademark rights, but haven’t been sued yet, you can file for declaratory relief which could give you an advantage in possible lawsuits. Declaratory relief determines the rights of the parties, without awarding any damages. Our law firm would consider the best options for your circumstances, which might include filing a motion to dismiss or filing a counterclaim.
Other defenses that might be available to you are:
- Doctrine of Laches: This defense can be used if the plaintiff unduly delayed in asserting its rights and the delay negatively affected the defendant.
- Unclean Hands: If the plaintiff engaged in dishonest behavior related to its trademark rights, or behaved inappropriately during the lawsuit, the judge or jury could decide not to award damages against the defendant.
- Fair Use: Under certain circumstances, trademarks can be fairly used, typically in advertising. For example, if you inadvertently used a descriptive trademark when describing your product, you might be protected by Fair Use. This can also protect reporters or bloggers who may use registered trademarks in their stories covering companies.
- Collateral Use: If you are using a trademarked product as a component for a more complex product (think a certain type of screw or building material), and you identify the trademarked product in your advertising, or description, this may not be considered an infringement.