FAQ

A trademark is a word, phrase, symbol, design, or combination of these that identifies a business’s goods or services. Trademarks help to identify the source of goods or services a business provides. Trademarks are used to distinguish a company from its competitors and help customers recognize it in the marketplace.

Trademarks are protected by intellectual property rights and can be registered with the United States Patent and Trademark Office (USPTO). Benefits of registering a trademark include:

• Nationwide notice: The trademark owner’s claim is given constructive notice nationwide
• Evidence of ownership: The trademark owner has evidence of ownership
• Federal court jurisdiction: The trademark owner can invoke the jurisdiction of federal courts
• Foreign registration: Registration can be used as a basis for obtaining registration in foreign countries
• Customs and Border Protection: Registration can be filed with the Customs and Border Protection (CBP) to prevent the importation of infringing foreign goods

A common law trademark is a trademark that is not registered with the government but is still protected by use in commerce. Common law trademarks are governed by state law and are enforceable in state courts.

Here are some things to know about common law trademarks:

• Protection – Common law trademarks protect a business’s brand and help prevent consumers from being confused about the source of a product or service.
• Geographic area – Common law trademarks are only valid in the geographic area where the mark is used. For example, if a coffee shop uses the name “Coffee Cafe” in Nevada, the trademark rights are only valid in Nevada.
• Search for common law trademarks – You can search for common law trademarks by looking through business directories or searching the internet for businesses that use similar trademarks.
• Notification – To notify others of your common law trademark rights, you can place the TM symbol on your trademarks.
• Comparison to registered trademarks – Registered trademarks have a higher degree of protection in federal courts than unregistered marks. Registered trademarks also provide nationwide priority over similar marks.

Registering a trademark with the United States Patent and Trademark Office (USPTO) can provide many benefits, including:

• Nationwide protection
  A registered trademark gives you rights throughout the United States and its territories.
• Federal court jurisdiction
  You can bring lawsuits about your trademark in federal court, which can have advantages like easier discovery across state lines.
• Evidence of ownership
  A registered trademark is evidence of your ownership of the mark.
• Foreign registration
  You can use your US registration as a basis for registering your trademark in other countries.
• Customs and Border Protection
  You can file your registration with US Customs and Border Protection to prevent the importation of infringing foreign goods.
• Constructive notice
  A registered trademark gives the public constructive notice of your claim of ownership.
• Use of the ® symbol
  You can use the federal trademark registration symbol, ®, with your trademark.
• Brand protection
  A registered trademark protects your brand and prevents confusion between your brand and others.
• Attracting talent
  Brand protection can be a positive factor in attracting future talent.

While registration is not required for trademark protection, registered trademarks provide stronger protection than unregistered marks.

TradeWeasel can file your trademark application within 1-3 days of receipt of your order. The USPTO will take approximately 12 months to review your application. There is no mechanism to speed this process us, except for filing a complete and strong trademark application.

Whether you possess a common-law trademark or a registered trademark, you have rights to the use of that trademark through local, state, and federal law. In other words, you have a right to exclude others from using your mark. There are exceptions to this rule for review, educational purposes, among others under the “Fair Use” Doctrine However, it is up to you as the trademark owner to hire investigators to determine who is using your mark, document the evidence, file demand letters, and/or start a lawsuit claiming damages. However, bear in mind that there are no “Trademark Police” or a government number to call for legal help. You will need to pay for your own investigation and your own lawsuit. Consult with one of our attorneys at [email protected] for more information.

TradeWeasel is a legal services company that concentrates on Trademark application filing and office action resolution. TradeWeasel does not specialize in lawsuits, either as a plaintiff or a defendant. We can assist you with demand letter drafting and conflict resolution, but if your issue leads to a potential lawsuit, you will need to hire an attorney that specializes in trademark litigation.

Please contact us at [email protected] or call us at (888) 688-5592.

Yes, we are entirely owned and operated out of our offices in Houston, Texas.

When your trademark application is formally reviewed by a USPTO Examining Attorney, one of the essential searches will be to determine whether your proposed trademark possesses a “likelihood of confusion” with another registered trademark. The DuPont factors are 13 criteria that the Examine ruses to make a subjective assessment of your application. There is no bright line test to determine whether a trademark could cause a “likelihood of confusion”; the Examiner can consider one or all of the DuPont factors in making their determination. The DuPont factors include:

1. Similarity or dissimilarity of marks. This factor considers how similar the two trademarks look, sound, and feel in appearance, sound, connotation, and commercial impression.
2. Nature of the goods and services. The USPTO compares the products or services associated with the trademarks determining whether they are similar or dissimilar.
3. Trade channels used. The third factor examines whether the trademarks are used in similar or different trade channels, such as retail stores, online platforms, or others.
4. Purchasing conditions. This factor evaluates the conditions under which sales are made and if the buyers involved tend to make impulse purchases or carefully consider their options before buying.
5. Fame of the existing mark. If the prior mark has a strong reputation or significant fame, it may be more susceptible to confusion with a newly proposed trademark.
6. Similar marks with similar goods. This factor takes into account the number and nature of similar trademarks used with similar goods or services in the market.
7. Actual confusion between the marks. The USPTO looks for any existing evidence of confusion between the two trademarks in question.
8. Length and conditions of concurrent use without confusion. The office considers whether the two trademarks have been used simultaneously without causing confusion for an extended period.
9. Variety of goods and services associated with the marks. The USPTO evaluates if the trademark is used or not used with a range of different products or services.
10. Market interface. This factor assesses the interactions and competitive relationship between the applicant and the owner of the existing trademark.
11. Applicant’s right to exclude others. This factor measures the extent to which the applicant has the right to prevent others from using the trademark on specific goods or services.
12. Extent of potential confusion. The USPTO tries to gauge the possible level of confusion that could arise between the two trademarks.
13. Other established facts. Any additional relevant information that could help determine the impact of trademark use is also considered.