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Applying for a Trademark? What Could Go Wrong?

Rosenthal IP LAW

Applying For a Trademark– What Could Go Wrong?

Do you have a business or product name and want to protect it so it becomes exclusively yours? Simply using the trademark symbol ™ for your new name is easy enough, but your trademark is better protected when you obtain a Federal registration and can use the ® symbol. The process seems straightforward enough – fill out the application and submit it to the U.S. Patent and Trademark Office (“USPTO”). But as you can imagine, you can’t count on the process always going smoothly, and it’s smart to anticipate hitting a bump in the road.


When you submit an application to register a trademark, you’ll want to be aware of several pitfalls that can arise:

  • If you don’t conduct a thorough search to discover if your desired trademark is already in use, it can lead to challenges and rejection. 
  • If you don’t properly describe the goods and/or services that you provide under your trademark, your application could be rejected or limited in scope.
  • A generic trademark cannot be registered. A trademark that merely describes a quality of your goods or services can be registered, but the path is not so straight forward and can hit a lot of roadblocks.
  • Once your trademark is registered, you can lose your exclusive rights if you do not actively protect it.


Of course, there’s more to it than this, but if you have something that you want to protect, working with an IP attorney is your best bet. Let me give you some real examples.


The Option to Oppose a Decision

One client I worked with was using his trademark for 5 years before he decided to register it. But when he put the wheels in motion, his submission for a registration was initially refused due to the existence of a prior application -- someone had previously filed an application for the same exact word as a trademark, and it was allowed by the USPTO and published in the Federal Register. This is a great example of why simply using the ™ symbol doesn’t offer full protection.


If you’re not working with an attorney, you may not know that there is a 30-day window after a trademark is published where you can oppose the USPTO’s decision to allow the trademark. I asked for an extension of time to oppose the decision so we could work on an alternate strategy. The delay gave us time to reach an agreement with the other party where both companies could co-exist because of the differences in the customers of the two parties’ services.


A Clearance is Essential

Then there is another satisfied client who asked me to perform a trademark clearance. This is a search not only for pending or registered marks that are identical or very similar to the one you plan to use, but also for any use of the trademark in the marketplace, in state business databases, on social media, or elsewhere in the United States. In this case, there was a company that had registered an arguably similar, but not exact, trademark.


With some research, we learned that this company likely was no longer in existence or wasn’t using the trademark. The client proceeded with caution while understanding the potential roadblocks. When the application was refused by the USPTO due to this other trademark registration, we filed to cancel the pre-existing registration on the grounds that the registered trademark had been abandoned and not in use. We were successful in cancelling this registration, and my client’s mark proceeded to be registered.


Don’t Wait for Trouble – Be Proactive

In addition to obtaining a Federal registration, it’s important to be on the lookout for competitors using or planning to use a trademark that is confusingly similar to yours. Just doing a web search on your own probably won’t find these uses. I offer a trademark watching service that is more comprehensive than a simple web search. Offenders are searched weekly, and I’ll analyze any hits before approaching you with ones that could present an issue. Give me a call or shoot me an email to find out more.


All these twists and turns in the process could mean a frustrating time for you if you’re not working with a professional. As a creative problem solver, I have the knowledge and experience to support you and your goals. Let’s discuss where you are in your quest to protect your intellectual property.

Thank These Innovative Women for Inventions We Commonly Use Today

By Larry Rosenthal • March 24, 2024
Although the right for women to vote in the US didn’t arrive until 1920, women were given the right to apply for a patent at the same time as men in 1790, when the Patent Act passed, allowing anyone to petition for protection of their original inventions and designs. This paved the way for Mary Dixon Kies to become the first woman, in 1809, to successfully file a patent that belonged to her. It was for a process of interweaving silk or thread into straw to make fashion-forward straw bonnets. Today we’re giving a very grateful shout out to the following 7 women whose ingenuity gave us everyday items of convenience we can’t live without. The Call Button. Miriam Benjamin , a schoolteacher, invented the “gong-and-signal chair” in 1888, which made it possible to call for assistance while seated, anywhere attendants were needed. From noisy train stations and hospitals to hotels, theaters, and offices, this handy tool allowed users to receive services wherever desired. The next time you’re on a flight and want to hail the flight attendant, thank Miriam as you press that call button above your head . Central Heating. Alice H. Parker filed a patent for her heating system in 1919, which involved drawing cool air into a gas furnace, then passing it through a heat exchanger, which then transported the heated air throughout the house via ducts. Now using natural gas instead of wood, her invention changed the game for domestic heating. Wi-Fi, Bluetooth, GPS. Hedy Lamarr , the actress who starred in Samson and Delilah, Ecstasy, and Ziegfeld Girl in the 1930s and 40s, was involved in developing a device that would prevent enemy ships from blocking torpedo signals during the Second World War. The invention allowed radio guidance transmitters and the torpedo's receiver to jump between frequencies simultaneously, which became known as "frequency hopping." Today, this is known as spread spectrum technology, and it gave way to the development of Wi-Fi, Bluetooth, and GPS. Windshield Wipers. Mary E. Anderson made her living being a rancher and real estate developer. However, in 1903, Anderson came up with a system that could automatically wash cars, which then gave way to the windshield wiper. Car Heater. Margaret A. Wilcox made traveling far more comfortable when, in 1893, she filed a patent for a car heating system. Originally designed for public railway cars, this technology has been consistently updated over the years and led to the car heaters we appreciate today. This heating system involved running a channel of air through the engine, where it was heated, and then sending it back into the rail cars. Ice Cream Maker. Nancy Johnson invented a device in 1843, the Artificial Freezer, which was the first hand-cranked ice cream churn. It sped up the amount of time it took to make ice cream or sorbet. Prior to her ingenuity, ice cream was made using very intensive labor and it often took a person hours to make. Funny enough, at that time, one could make the frozen treat but we’d have to wait a few years to find a way to store it so that it remained frozen since refrigerators hadn’t been invented yet. Caller ID. Shirley Ann Jackson , a physicist, is responsible for making caller ID accessible to all of us. In 1976, Jackson was hired by AT&T, where she researched in a number of fields. From this research, Jackson developed caller ID technology, something we wouldn't want to live without today. Not all patent filers started out as engineers or scientists – as you can see, they came from all walks of life and had one thing in common – the strong desire to pursue their creative idea to fruition. Registering a trademark or applying for a patent is an endeavor that has become more detailed and intricate over the years. There are enough possible twists and turns in the life of your application to deserve guidance from a professional. I work with my clients from initial consultation, to understand their product and intention, and through every single step, roadblock, and detour. If the thought of registering a trademark or applying for a patent has been your dream and passion, let’s discuss how to make it happen.

Thinking of Patenting an Invention?

By Larry Rosenthal • February 23, 2024
Here’s Some Inspiration

What to Expect When You Want to Apply for a Trademark

By Larry Rosenthal • February 8, 2024
While DIY projects have their place, some endeavors are better left to the professionals. Sure, you can tackle changing out the wallpaper from your downstairs ½ bathroom yourself, but when it comes to adding a full bath off your master bedroom, you know it’s over your head and time to call the builders. With the multitude of online resources and videos available, you may be tempted to handle some business projects yourself. Protecting your intellectual property, your carefully birthed idea, is a different story - it deserves the knowledgeable and experienced care of an attorney. Step away from that DIY website, shut off the YouTube videos and start the process of interviewing the professionals. There are many rules and processes and timelines involved with applying for, defending, and receiving a trademark. An important part of my job is not only to protect your creation, but also support you, your time, and your resources, when there is even a hint of a dispute. The unexpected pitfalls of failing to adhere to every nuanced rule can create extra work and frustration, setting you back when you could have easily been on your way to securing the rights by using the know-how of an experienced Intellectual Property Attorney. What Happens When You Apply for a Federal Trademark Registration? Your request to register a name or phrase as a trademark must go under an examination by the US Patent and Trademark Office which will scrutinize it for certain criteria. At any time, the trademark office could refuse your request because of · the way you’ve described it, · the name it was filed under, or · if they deem it too similar to an application or registration filed before yours. Even if someone hasn’t registered the trademark, but they have been using the name longer than you have, they may have prior rights. My job and goal as an IP attorney is to protect your best interests, using resources that you likely don’t have access to. Without professional support and proficiency on your side, you may very well get sent back to the drawing board, at a time when you were hoping to secure your trademark before someone else comes along with a similar development. Simply put, getting the upper hand during this window of time may make or break the success of your idea. What if the USPTO Declines My Application for a Trademark? As a DIY warrior, you’re stuck in the mud. An IP attorney knows the process and can strategize with you on creative ways for you to achieve a successful outcome. It all starts at the beginning - as your IP Attorney, I will · Ensure that I understand what aspects of your idea are worthy of a trademark or similar protection. · Help you understand all the details involved in the application process to avoid misunderstandings. · File your application completely and accurately as it defines your unique product or service. · Handle responses from the application process and advise you on how to proceed. What Are Some Details to Know When Applying for a Trademark? One of the first hurdles is: did someone already take that name? We’ll look into whether that name is already in use, if it’s already trademarked, and where and how it’s being used. In some cases, the same company name can be used for completely different products or services and there’s no danger of infringement. I’ll bet you’ve never confused Dove ® soap with Dove ® chocolate. Another component in getting an approval is a bona fide reason for the use of a word or phrase associated with your idea. For example, when the Washington Commanders football team wanted to change their name from the “Redskins”, some people tried to jump the gun with the intent to profit by registering possible new names. Since they didn’t have a legitimate intent to start a football team, it was deemed fraudulent, and their attempts to trademark their submissions were turned down. If I was working with someone who tried to do this, I would have saved them a significant amount of time and trouble by explaining the likely result. Disputes? Don’t Go it Alone I’m here to advise you on what to do if other trademark owners accuse you of infringing on their trademark, or if you were to discover that others were trying to infringe on your trademark. Without professional legal support, it’s your legal responsibility to monitor and protect your trademark from any infringement issues that may arise in the future. There are quite a few intricate technical details involved in trademark law – it’s not something you can fly through easily on your own. Trying to tackle this all yourself is made more difficult by the fact that the US Patent and Trademark Office cannot give you legal advice the way a personal patent attorney can. Why miss out on the opportunity for success? Let’s meet for an initial consult.
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