New York City Trademark Lawyer
The value of obtaining trademark protection tends to be overlooked by many business owners, especially those in the earlier stages of growing their businesses. However, maintaining a trademark portfolio can reduce the risk of third-party challenges, potentially raise the value of a business in the event of a merger or sale, and it can also make a business appear more valuable to potential investors and financial institutions.
Our New York City trademark lawyers actively help clients find cost-effective ways to protect and grow their brands, particularly as their businesses expand into new product lines, marketplaces, or services.
What Can Be Trademarked?
A trademark is an element that identifies the source of goods or services. This may include names, slogans, logos, sounds, characters, smells, colors, color schemes, product packaging, or product design.
Not every element that attempts to identify the source of goods and services can be trademarked. Informational matter, generic words, and geographically misdescriptive words or phrases cannot be protected under US trademark law.
What Makes a Strong Trademark?
Generally, marks fall into one of four categories: arbitrary or fanciful, suggestive, descriptive, or generic. A “strong” mark is a mark that will easily allow its owner to prevent third-party use of its mark. The strongest and most easily protectable marks are marks that are arbitrary or fanciful. These marks are typically completely made up words or are unusual when used in relation to the goods or services offered. For example, XEROX for copiers, EXXON for petroleum products, APPLE for computers, and SAMSUNG for televisions.
Suggestive marks are also considered strong marks, because they suggest, but do not describe qualities or a connection to any goods or services. For example, MICROSOFT for software of microcomputers, VOLKSWAGEN for automobiles, or COPPERTONE for suntan products.
A “weak” mark is a mark that is descriptive or generic. Descriptive marks are words or designs that describe related goods or services. These marks are difficult to protect. A mark that is merely descriptive cannot be registered on the Principal Register, unless it has acquired distinctiveness (also known as “secondary meaning.”) For example, CANADIAN for beer, FORD for automobiles, and WORLD’S BEST BAGELS for bagels.
The weakest marks are generic marks. Generic marks are common, everyday terms for goods and services and everyone has the right to use such terms. Also, marks that were once strong can become generic over time if the owner starts using the mark in a non-trademark manner or fails to police the use of its mark properly. For example, ASPIRIN for pain relief medication or ESCALATOR for moving staircases.
How Our New York City Trademark Lawyers Can Help
Trademark Counseling
The trademark lawyers at Grant Attorneys at Law counsel clients through every stage of the life of their trademarks. At the very start, we work with clients in the clearance process of new trademarks. Our analysis occurs on many levels. First, we analyze a mark to determine its inherent strength, based on the spectrum of distinctiveness, and second, we analyze a mark to determine its relative strength, based on what is already in existence in the marketplace and on the trademark registries.
Once a mark registers we advise and assist with maintenance of the brand. Ultimately, we continue to provide meaningful counsel through expansion and enforcement.
Trademark Prosecution and Enforcement
Trademark prosecution is the legal process of registering a trademark for the sale of a product or service. We provide strategic guidance on the selection, clearance, and filing of our clients’ marks.
At Grant Attorneys at Law, we assist our clients to develop strategies for the protection and enforcement of their trademarks. If as a result of our watch service, or otherwise, a potential conflict or infringement is revealed, we are able to readily address the issue with a solid plan of action. In addition to enforcement, we also assist clients who have received cease and desist letters or have been served with a complaint, to defend against allegations of infringement.
Trademark Portfolio Management
Domain Name Disputes
The Uniform Domain-Name Dispute-Resolution Policy (UDRP), is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes related to domain names. The UDRP provides a streamlined and cost-effective process for trademark owners to challenge the registration of a domain name that they believe was registered in bad faith and infringes on their trademark rights. UDRP proceedings can result in the transfer or cancellation of the domain name, and the decisions of the UDRP panels are binding.
Our trademark lawyers have experience resolving domain disputes through settlements, UDRP proceedings, as well as litigation.
Consult an Experienced New York City Trademark Lawyer
Investing in the development and maintenance of a trademark portfolio is more than a mere defensive act against potential competitors. Such an investment could provide major commercial advantages for a business.
Book a meeting with one of our New York City trademark lawyers to discuss obtaining trademark protection for your brand, enforcing your trademark rights against potential infringers, and trademark monetization strategies such as trademark licensing or sale.
Trademark FAQs
How Long Does it Take to Get a Trademark Approved?
Trademark processing wait times are largely within the control of the USPTO and may change from time to time. Current processing times may be viewed here.
