Services Provided

Trademark Selection - The trademark process begins with the selection or creation of the words or symbol that will be used in connection with a good or service.  Our firm can assist clients in the vital choice of which trademark to select for your company. 

Trademark Availability Search - Anyone can conduct a trademark search at the United States Patent and Trademark Office (USPTO) website. However, experienced trademark lawyers know how best to search USPTO and State databases, as well as other proprietary databases, and properly interpret the search results. 

Trademark Applications - Careful preparation of a trademark application by an experienced attorney can help avoid potential problems that can hinder the application process or even undermine the validity of an approved registration.  We represent clients in the filing of trademark applications within the United States and in foreign countries.

Office Actions - After a trademark application has been received by the USPTO, it will be scrutinized by a Trademark Office examiner, who will look for procedural or substantive issues. If grounds for rejection are found, the examiner will issue an Office Action rejecting the application. These rejections may difficult to overcome. Henry Rodriguez is experienced in dealing with these rejections. 

Oppositions and Cancellations - If the trademark examiner deems an application satisfactory, it will be published in the USPTO Official Gazette. Anyone who may be harmed by the registration of a trademark may file an opposition before the Trademark Trial and Appeal Board (TTAB). The TTAB also conducts proceedings for the cancellation of existing trademarks. Our firm is experienced in representing clients before the TTAB & the Court of Appeals for the Federal Circuit. 

Trademark Infringement - Our firm represents both plaintiffs and defendants in trademark infringement cases in state or federal court.

How do Trademarks relate to Copyrights?

Copyrights are arise from original works of authorship.  Copyrightable works rarely  function as trademarks, but they can in cases where a logo or composition function to identify the source of a product.

Find out more about ©

Trademark Availability Studies

What is an Availability Search and Why do I need one?

The most common obstacle to obtaining a trademark registration is the existence of a prior pending application or registration for a confusingly similar trademark used on the same or similar goods or services.  One of the key tools in addressing this issue is a trademark availability search.  Furthermore, the law may require that the user of a trademark satisfy its duty of due diligence prior to initiating use of the trademark in commerce.  Thus, a business launching a new product may have to show that it had a reasonable basis for selecting and using the brand name.  This standard may be satisfied by having an attorney conduct a trademark availability search.

Trademark searches can involve multiple investigations using Federal or State trademark databases, as well as marketplace databases such as trade name listings and Internet activity searches.  These searches incorporate a variety of search criteria intended to capture not only prior or intended uses of the same mark but also marks that might be confusingly similar to the searched for mark.  The latter category is critical as these results are frequently more numerous and require a more in-depth analysis by an attorney to determine the likelihood of those marks becoming obstacles to obtaining a federal registration.

While anyone may conduct a trademark search on the public database of the Patent and Trademark Office, laypersons are often incapable of formulating the correct queries or interpreting the results of complex searches.  It may appear that a trademark is not available when in fact it is.  Conversely, and more damaging, it may appear that a trademark is available when it is not.  And the results of the search can be quite copious and difficult to evaluate.  An experienced trademark lawyer can explain to the applicant the issues that may arise, assist in the selection of the trademark, and correctly interpret the trademark search.

It should be noted that due to procedures inherent to the trademark application process and limitations on the effectiveness of search queries, no search can ever be wholly accurate.  


The Trademark Application Process

The Federal Registration Process

Obtaining a federal trademark registration is a time-consuming process that frequently requires the expertise of an intellectual property attorney to successfully navigate the numerous obstacles that can arise. This process begins with the selection of the trademark and, ideally, retaining a trademark attorney. The first step is to ensure that the chosen mark is more than likely available for registration. To do so, one should conduct a trademark availability search, as discussed above.  If trademark clears, then one begins with the...

  • Application Preparation:

The application should include all of the necessary information for the Patent and Trademark Office examiner to approve the application:

  1. The exact trademark must be identified and any design element described.
  2. The proper owner of the trademark needs to be identified.
  3. It must be stated whether the trademark has been used in U.S. commerce or whether the application is to be filed based on an intent to use basis (which postpones the requirement of showing use).
  4. If there has been use, the date of first use as well as an image of the trademark as used in commerce must be submitted.
  5. The application must list with specificity what goods or services the trademark is or will be used.
  6. If the applicant has recently filed an application in a foreign country or owns a registration in a foreign country for the identical mark, this information might form an alternative basis for filing the application.
  7. Where appropriate other information such as claims of acquired distinctiveness, disclaimers, translations, and ownership of prior registrations for the same mark should be included.
  8. The proper placing of the mark within one or more international classes according to the treaty of Nice should be determined.

  • Pre-Examination Issues:

A number of issues arise during this initial step. For example, what is "use in commerce" or what is the proper way to categorize the mark? It is helpful to understand these and other concepts and to have access to and know how to use the Trademark Manual of Examining Procedure, the Acceptable Identification of Goods and Services Manual, and the Design Search Code Manual. After preparing and reviewing the trademark application, the applicant must sign a declaration in support of the facts and assertions made on it. One must be aware that misrepresentations of fact or intent in the application can form the basis for cancellation of any resulting registration due to fraud on the Patent and Trademark Office. The application is then submitted to the Patent and Trademark Office. Assuming there are no obstacles, it can take some 11 to 18 months from the date of submission for an application to mature into a registration.

It is important to note that, if the trademark registration is ultimately granted, the applicant's priority date is the filing date.

The next step in the process involves Patent and Trademark Office assistants entering the application data into their databases. It is during this step, some 4 to 8 weeks after submission, that one may receive a notice stating that a pseudo mark or design codes were assigned to the application to facilitate the future examination process. Reviewing this notice for errors is important.

  • Examiner Review:

Between 3 to 6 months after submission, an examiner at the Patent and Trademark Office will review the application for procedural errors and substantive issues. If any errors or issues are found, the examiner will issue an Office Action. The applicant has a six month window from the date the examiner issues the Office Action in which to respond or allow the application become abandoned.

Multiple Office Actions can be issued addressing new points each time. A second Office Action covering the same point as the prior Office Action is termed a Final Office Action. The applicant has one last chance to overcome the rejection either by regular response or appeal to the Trademark Trial and Appeal Board, or the application becomes abandoned. After the examiner has deemed one's trademark application satisfactory, she or he approves the application for publication. 

  • Publication:

The application is sent to the publication office for a final review. If the application is in order, a notice is issued that it will be published in the Patent and Trademark Office's Official Gazette. It takes approximately six weeks from the examiner's approval for one to receive a publication date. The publication of the trademark takes place about four weeks later. So publication should be expected some two and half to three months after examiner approval.

The publication process is intended to provide interested parties in the public with notice of the pending registration of one's trademark. Such parties have a 30-day window from the date of publication to file either an opposition to one's registration or request an extension of time to file an opposition before the Trademark Trial and Appeal Board.  Assuming no opposition ensues, one can expect to receive one's certificate of registration some two to three months after the end of the opposition period.

  • Post-Registration:

It is at this point that one is permitted the use of the ® symbol. Prior to registration, one may use the ™ symbol. Though one's common law trademark rights persist for as long as one does not abandon use of the trademark, post-registration requires a few regular "maintenance" filings between the fifth and sixth year and every tenth year thereafter.


Trademark Trial and Appeal Board Proceedings


Federal Administrative Cases

The process of perfecting the protection of one's trademark began with an application that involved intearaction only between the applicant and agents for the Patent and Trademark Office (PTO). However, there are two critical options available to third parties that allows them to interject themselves into the registration process.

The law provides for an administrative board to hear the public's objections both to registrations and approved applications. The name of this board is the Trademark Trial and Appeal Board (TTAB). All proceedings undertaken here are governed by a combination of the Federal Rules of Civil Procedure, the Federal Rules of Evidence, the Lanham Act (15 U.S.C.A. §1051 et. al.), the Trademark Rules of Practice (37 C.F.R. §2.1 et seq. & Rules 116-136) and the TTAB Manual of Procedure.

The Trademark Trial and Appeal Board has its own peculiar set of rules that can easily be transgressed. The rights at stake are significant. The results of these proceedings may lead to a fundamental change in the right to the use of one's mark. A trademark applicant or registrant should consult with a trademark attorney before involving itself in a Trademark Trial and Appeal Board proceeding.

  • Oppositions

During the application process, after an examiner has approved the application, one's trademark is published in the Patent and Trademark Office's Official Gazette. This publication notifies the public of trademarks about to be registered unless there is an objection. Any member of the public with an interest in the trademark may oppose its registration within 30 days from the publication date. If desired, a party can request an extension of time to file an Opposition. A party initiates such an Opposition by filing a Notice of Opposition with the Trademark Trial and Appeal Board. In addition to the rules cited above, Oppositions must also comply with 37 C.F.R. §2.1 et. al. & Rules 101-107.

  • Cancellations

For existing registrations, a party may initiate a cancellation proceeding. This is done before the Trademark Trial and Appeal Board by filing a Petition to Cancel. In addition to the rules cited above, Cancellations must also comply with 37 C.F.R. §2.1 et. al. & Rules 111-115.

  • Initial Steps

When deciding to oppose an application or cancel a registration, one must make a statement regarding how the party would be damaged by the registration and specify the grounds for the opposition or cancellation. The statutory grounds to cancel or oppose a mark can be found in 15 U.S.C.A. §1052, §1064, and §1065. 

They include:

  1. The mark is likely to be confused with a previously used, non-abandoned mark, or with a mark in an earlier filed application, or with a registered mark.
  2. The mark is descriptive, deceptively descriptive, or primarily geographically descriptive or deceptively misdescriptive.
  3. The descriptive mark is not distinctive of applicant's goods or services.
  4. The mark includes immoral, deceptive, or scandalous matter.
  5. The mark includes a governmental insignia.
  6. The mark identifies a living individual without the individual's consent.
  7. The mark is functional.
  8. The registered mark has become a generic term for the good or service.
  9. The registered mark has been abandoned.
  10. Registration was fraudulently obtained.
  11. The registered mark is being used by the registrant to misrepresent the source of goods or services.
  12. The mark would dilute the distinctiveness of one's famous mark.
  13. A prior judicial decision or agreement between the parties precludes the use of the mark by the applicant or registrant.

Upon filing the notice or petition with the Trademark Trial and Appeal Board, the Board reviews the document and prepares a notice to the applicant or registrant that a proceeding has been initiated before the Board. This document will incorporate a calendar which sets the dates for the answer, discovery, and trial.

The Answer is due within 40 days of the notice issuance date. It must comply with 37 C.F.R. §2.106 if responding to an opposition or §2.114 if responding to a cancellation. Generally, one must either admit or deny each allegation made in the Notice or Petition or state one has no knowledge.

Additionally, one should specify the affirmative defenses one intends to rely upon. These are as varied as the grounds for initiating the opposition or cancellation. There are equitable defenses such as laches, acquiescence, and estoppel. Such defenses address the acts or omissions of the Opposer which support one's use of the trademark. Other defenses raise specific points such as the applicant or registrant having superior rights to the mark due to priority of use or Opposer having abandoned use of the mark.

The Applicant must also consider moving to counter-claim for cancellation of Opposer's registration(s) where appropriate. This puts at issue the Opposer's own trademark rights. There are certain situations where the Board might deem the counter-claim to be compulsory. In such an instance, if one does not file the counter-claim with one's answer, then one has waived all rights to ever cancel the Opposer's registration(s).

  • Discovery

Both parties may engage in discovery. This entails the acquisition of information and documents from the opponent as well as from oneself. The means of acquiring this information can be through written questions and requests for specific types of documents. It can also be through in-person deposition of key individuals from the opposing side. In certain cases, an expert's insight may be required. It is through this mass of information that one draws the facts which will support one's position, whether it is as Opposer or Applicant.

Following the discovery period is the testimony period wherein the parties submit any documents and transcripts of testimony as factual evidence in support of its case. At the end of the testimony period, closing briefs are prepared and filed. The Trademark Trial and Appeal Board then takes several months to issue its written decision. It is possible to appeal this decision.

  • Conclusion

The nature of these proceedings entails that the time required for the Trademark Trial and Appeal Board to arrive at a decision can take years. Parties may be able to reach a settlement agreement, thus ending the proceedings much sooner. Where appropriate, the issues raised in an opposition or cancellation can be resolved by a dispositive motion such as a Motion for Summary Judgment or Motion to Dismiss. Such motions may significantly shorten the length of a proceeding. A proceeding before the Trademark Trial and Appeal Board is an intense and complicated affair. Only a trademark attorney can properly handle such proceedings.