Portland Trademark Attorney: Your Partner for Protecting your Brand and Trademarks

Do you have a business name or brand worth protecting? The trademark attorneys at Sierra IP Law have decades of experience and the expertise to secure your trademark rights and protect your business's goodwill and brand. You have invested your time, energy, and resources in building your brand. You need to protect it properly. We are the partner you need to register, protect, and enforce your trademark rights. This concise guide will walk you through the benefits of hiring our firm, and the factors to consider in pursuing trademark protection.

What You Need to Know About Your Trademark Rights

• Selecting an experienced trademark attorney is critical to the success of a trademark applicant.

• A professional trademark search should be performed to evaluate your trademark or service mark for its registrability and any potential infringement issues.

• An trademark application should be filed early and correctly. The application must have the correct form of the mark (e.g., a standard character mark and/or special character marks) and the correct listing of goods and services. These features are often handled incorrectly without the assistance of an experienced trademark attorney.

• After registration, the trademark registration must be maintained and the trademark rights must be enforced to maintain their integrity. Enforcement includes policing third party use of confusingly similar marks, notifying infringers of their potential infringement liability, and pursuing legal claims of defiant infringers.

Partnering with an experienced trademark attorney is critical for strategically and effectively pursuing long-term brand protection and enforceable trademark rights. Our services can benefit businesses of all kinds (e.g., an individual entrepreneur, a limited liability company, a corporation, etc.), and we tailor our services to your specific needs.

Registering Trademarks

Securing trademark rights in your business name or brand should be pursued at the earliest possible time. A registered mark provides many benefits to the registrant, including nationwide patent rights, a public record of trademark rights, publication of the registered mark provides constructive notice to any potential infringers, it prevents a later applicant from registering the same name or mark or a similar mark, it facilitates trademark licensing, it provides a basis for seeking foreign trademark protection, it can be recorded with the US Customs and Border Protection enabling the agency to block importation of infringing products, and many other benefits.

An initial application to register a mark can be filed before you begin using the trademark through an intent-to-use application under Section 1(b) of the Lanham Act. This establishes your priority in your trademark rights at the earliest possible time. Given that overlapping trademark use between different businesses is common, acting early in your branding process to register your existing or proposed trademark is a wise approach. If the mark is being used in connection with goods and services prior to filing an application, the applicant can file under the current use filing basis.

Strategic planning and early action is important, but prudence is also required. Trademark rights should be pursued with the proper due diligence, evaluating a mark for potential conflicts with third-party marks that can result in denial of registration by the United States Patent and Trademark Office (USPTO) and/or disputes with third party owners of confusingly similar marks. The mark must also be evaluated for any descriptive or generic elements in the mark, which are not eligible for trademark protection. Thus, there are several considerations that need to be addressed before making the choice to register a trademark. The assistance of an skilled trademark attorney is essential to establish a proper trademark strategy.

Trademark Attorney assistance is needed to Register a Trademark

What’s the advantage of hiring a experienced trademark attorney?

• Understanding of the relevant laws and process of filing and registering a mark

• Experience to determine the best course of action to secure your trademark rights;

• Guidance in ensuring that your business remains legally compliant and protected, especially if you aim to expand into interstate commerce; and

• Knowledge and skill to enforce the registered mark.

Selecting a Trademark Attorney

The selection of a trademark attorney should be done carefully and thoughtfully. Your trademark attorney is a partner who understands the intricacies of trademark law and can effectively protect your intellectual property. Our firm offers a full spectrum of trademark services, including:

• Trademark searches

• Federal Registration

• State Registrations

• Appeals of final decisions by Trademark Office examiners

• Handling trademark cancellations, oppositions, and concurrent use proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office

• Trademark disputes and litigation

• Trademark licensing and ownership assignment

Finding an attorney who offers these services is like having a guardian for your brand.

Assessing Experience and Track Record

Determining the competency of a trademark lawyer involves considering the length and extent of their experience. What are the areas in which they have practiced? The right lawyer should have experience in the type of trademark cases for which you are seeking assistance. Your lawyer should also have a reasonable approach with which you are comfortable.

Look for a lawyer who:

• is upfront about the potential risks and outcomes of your case;

• admits their limitations and shows a willingness to research further;

• demonstrates objectivity and honesty; and

• is trustworthy and competent.

Understanding Their Approach to Your Trademark Needs

Understanding an attorney’s approach to your trademark matter is critical. There needs to be an meeting of the minds between you and your attorney. Here are some questions to ask to get a sense of their approach:

1. How do you plan to avoid confusion between my trademark and third party trademarks?

2. How can you guide me to establishing distinctive trademarks for my business?

3. How do you handle a USPTO refusal, office action, or potential challenge against my trademark?

4. What is your approach to enforcing trademark rights and determining whether a potential infringer should be pursued?

5. What is your approach to disputes? How will I be involved in the disputes, if any arise?

Asking these questions can give you insight into the attorney’s approach to protecting and advocating for your trademark rights. Remember, a successful partnership with your attorney involves open communication and mutual understanding.

Trademark Registration with the United States Patent and Trademark Office

A trademark attorney handles several steps during the trademark application process, each important and necessary. Prior to filing a trademark application there are due diligence matters to address. First, the trademark attorney consults with the client to determine the form(s) of the trademark(s) and the goods and services on which the trademark(s) are to be used. It is important that the attorney has a full understanding of the client's business goals and branding concepts. The trademark attorney subsequently evaluates the trademarks for formal issues (e.g., descriptiveness, genericness, and geographic descriptiveness) and performs a trademark search for prior use of confusingly similar marks. In order to ensure that the trademark(s) are submitted in the proper form, the goods or services are accurately captured in the application(s), that the ‘interstate-commerce’ requirement is met, and trademark confusion issues are avoided, an experienced trademark attorney must be consulted. Each of these issues must be addressed before you submit a federal trademark application. Our law firm provides the best practices and due diligence to give you the best chance of acceptance of your application and avoid potential issues.

Conducting a Thorough Trademark Search

Conducting a search for pre-existing trademark use is necessary before applying for a trademark using the trademark electronic application system. The search is conducted to address potential rejections and infringement issues and avoid them. A thorough trademark search prior to filing an application is an imperative. Every trademark filing is a public record with a serial number and a complete application record provided through the USPTO website. Our trademark attorneys utilize multiple trademark databases in their search, including the Trademark Electronic Search System (TESS) trademark database available on the USPTO website. However, we do not limit our search to the TESS trademark database. Our trademark attorneys also utilize state trademark databases, and searches for unregistered, common law trademark use to identify any trademarks that may conflict with a client’s proposed mark. If potential conflicts with existing trademarks are discovered, our attorneys consult and advise you about such conflicts and devise a strategy for overcoming such issues.

Pursuing Federal Registration

What approach does a trademark applicant take to prepare for filing a strong application? Our trademark attorneys provide the following to you as an applicant:

• Expert advice on selecting a strong and distinctive mark.

• Guiding clients on the two filing options: whether to file an ‘Intent to use’ or current use mark. The choice of filing basis depends on whether the mark has been used in commerce, whether there are potential conflicts with third party marks, and other factors; and

• Proper trademark use that establishes and maintains use in commerce to establish and preserve the client's trademark rights.

Our attorneys ensure that the trademark application meets all legal requirements for registration, helping to avoid common issues that could lead to rejection. They also handle all post-filing issues before the united states patent and trademark office (USPTO) . While there is no guarantee that a mark can be registered, we prepare the application in the proper form and put the mark in the best condition to be approved and registered by the USPTO.

Cost Considerations: Trademark Registration Fees and Expenses

The process of applying for a trademark goes beyond mere formalities; it also incurs certain costs. The required fees to consider include:

• TEAS Plus filing fee: $250 per class of goods/services

• TEAS Standard filing fee: $350 per class

• Additional fees if your trademark falls under multiple classes

• Attorney Fees

The required filing fees can differ, depending on the contents of the application. For example, if the listed goods and services are selected from the standard descriptions provided in the trademark ID manual (which is published on the USPTO website), then lower TEAS Plus fees can be paid. However, if the listed goods or services do not conform to the standard descriptions, the higher fees of the TEAS Standard filing option must be paid. The cost for filing a trademark application also varies depending on the number of trademark classes under which goods or services are registered.

Filing Options and Budgeting for the Entire Process

Bear in mind, your budgeting for trademark registration needs to be comprehensive. The standard filing fees are the USPTO's fee for accepting and examining the application. There are many additional costs, including attorney fees, extension fees, and charges for extra services like expedited examination. Inadequate budgeting can result in a failed process and the potential loss of intellectual property rights. Underbudgeting for trademark applications may result in incomplete or abandoned applications, leaving your mark unprotected and susceptible to competitor exploitation. It is recommended to consult with our attorneys to ascertain the costs associated with potential trademark filings.

Protecting Your Brand Beyond Registration

Trademark registration protects your trademark with nationwide right and a presumption of priority and validity in the mark. In order to maintain those protections, trademark owners must police their marks to avoid loss of rights due to unauthorized and unchecked third party use. Infringing use can lead to a loss of distinctiveness and strength in the mark. Trademark dilution claims are another aspect of rights enforcement where attorneys can assist, dealing specifically with the lessening of a trademark’s distinctiveness or harm to its reputation.

Upon discovering infringement, our trademark attorneys initiate an evaluation of the infringement threat, weighing the seriousness and potential impact of the infringement. The client is then consulted and the need as to whether to take action is evaluated. If the infringement presents a threat, enforcement action is swiftly taken with a cease and desist letter to the alleged infringer. If the infringer ignores the warning, the matter may be escalated to a lawsuit.

Enforcement and Federal Court Representation

In the event of disputes over trademark infringement, our attorneys are prepared to represent our trademark clients in federal court to protect and enforce their rights. Filing a trademark infringement lawsuit in federal court requires the plaintiff to establish several key elements under the Lanham Act, primarily that they have a valid and legally protectable mark and that the defendant's use of a similar mark in commerce that is likely to cause confusion, mistake, or deception among consumers about the source or origin of the products or services. The claimant must demonstrate actual use in commerce of the trademark, which is a prerequisite for enforcement under the Lanham Act. In the case of a federal registration, the registrant enjoys a presumption of rights in the asserted mark. Beyond direct infringement, the plaintiff can also assert claims of unfair competition, which relates to deceptive practices that mislead consumers about the origin or endorsement of goods or services. Additionally, under state common law, a trademark infringement claim can be pursued based on the principles of passing off or unfair competition. These common law rights are geographically limited and based on the actual use of the mark in commerce within a specific area, unlike the nationwide protection offered by federal registration under the Lanham Act.

Our trademark attorneys are experienced in filing and prosecuting trademark infringement and related claims in federal court. Our attorneys services include:

• Represent clients in dealing with unauthorized use of their protected trademarks;

• Monitor the market for potential trademark infringements;

• Initiate legal action when necessary; and

• Carry out the enforcement and litigation processes.

Renewal and Maintenance of Trademark Rights

Trademark registrations can be forever, but require continuous use and periodic maintenance filings. Every registered mark must be maintained. A lapse in use can lead to abandonment and loss of trademark rights. The US Patent and Trademark Office requires periodic proof of use of your mark in order to maintain the registration. In order to maintain the registration, a declaration of use under section 8 of the Lanham Act must be filed between the fifth and sixth years after the registration issued, and every ten years after the registration date. Along with the ten-year Section 8 declaration, a Section 9 renewal application must be filed to avoid cancellation or expiration of the registration.

If the periodic forms for trademark registration are not filed, the registration will lapse, and the protections provided by the registration are lost. The trademark owner would have to re-file an application with the USPTO to protect the mark. If the mark has been in continuous use in commerce for at least five years after registration and is registered on the Principal Register, the owner can file a Declaration of Incontestability under section 15 which eliminates many of the bases for challenging the registered mark and strengthening the registrant's rights.

As a trademark owner, you are responsible for timely filings regardless of whether a reminder is received. A six-month grace period is available for meeting maintenance deadlines, albeit with an additional fee for any late filings. Proof of the trademark’s use in commerce must be submitted with maintenance documents. Our trademark attorneys can take the burden of renewing and maintaining registrations off of your hands. We provide our clients with monitoring and maintenance services to ensure that their trademark rights are secure.

Additional Services Offered by Trademark Attorneys

We provide an array of services that extend beyond the trademark registration process. Our attorneys offers a range of legal services beyond registering trademarks. We provide expert guidance on the use and enforcement of trademarks, handling proceedings before the USPTO Trademark Trial and Appeal Board (e.g., oppositions, cancellations, and concurrent use proceedings), and infringement disputes to safeguard your brand's integrity. Additionally, we negotiate and draft licensing agreements, aiding in the commercialization of a brand while ensuring compliance with trademark law. Our expertise also encompasses international trademark protection. We navigate the complexities of global intellectual property law to secure and maintain trademark rights across foreign jurisdictions.

Intellectual Property Strategy

We assist trademark owners on how to effectively integrate trademarks into the broader business strategy. We are also well versed in all areas of intellectual property law (including copyrights and patents), allowing us to integrate and maximize intellectual property protections in a way that maximizes value to your business.

Licensing and Assignment of Trademarks

We also assist our clients with licensing and transferring rights in trademarks. Our attorneys guide our clients through the process of transferring trademark rights, whether through sale, merger, or inheritance, ensuring that such transactions comply with relevant laws and regulations. We conduct thorough due diligence, identifying potential risks and liabilities associated with intellectual property (IP) transactions, thereby safeguarding the client's interests and enhancing the value of their IP portfolio. We advise our clients in preparation for negotiation to put them in strongest position in dealing with licensing partners and purchaser or sellers of IP.

Our licensing agreements serve the client in a way that accomplishes the client's goals. Our agreement drafts capture the appropriate scope of the license, royalty structures, enforcement mechanisms, termination clauses, and other appropriate terms, depending on the particular situation. A properly drafted licensing agreement achieves the client's objective and mitigates risks of breach and failure of the other party to perform. Our thorough approach fosters a stable commercial outcome for out client.

Strategic Partnership for Long-Term Brand Protection

Having a trademark attorney involved in the process of establishing a strong brand is invaluable for businesses aiming to maximize their market presence and fortify their IP assets. We can help shape your business's branding strategy, advising on how to differentiate the brand and avoid common pitfalls that could lead to legal disputes or dilution of the brand's distinctiveness. A trademark attorney offers several benefits for businesses, including:

• Professionals to protect and enforce IP rights over the long haul

• Assistance in fortifying a brand and/or business name position that enables growth of the business

• Consulting on brand strategy, content marketing, and social media to enhance the business’s overall brand and intellectual property presence

• A partnership that provides valuable advice and support for businesses.

Summary

Sierra IP Law guides its clients through the trademark process, assisting with all areas of trademark law, including registering trademarks, dealing with disputes, and handling licenses and transfers. Our attorneys provide invaluable assistance to the client, offering expertise, tailored advice, and a strategic partnership for long-term brand protection.

Whether you’re a entrepreneur just getting started, or an owner of an established business, it’s important to understand and protect the IP rights in your business name and brand. Securing your rights is not simply a legal formality; it’s an imperative your business's identity, your investment in it, and its future. Contact our Portland office to schedule a free consultation with our trademark professionals. You can also review more information regarding trademarks on our website.

Your brand is your legacy, and it is worth protecting.

Frequently Asked Questions

What is a trademark?

A trademark is a symbol, word, or phrase that distinguishes a company's products or services from those of others, representing their ownership and brand identity. It can include symbols, phrases, colors, designs, or sounds, providing legal protection and differentiation.

Should I use a lawyer to file a trademark?

Yes, it's recommended to hire an attorney if you can afford one to file for a trademark registration. Professional assistance can navigate the application process effectively.

What is the purpose of a trademark attorney?

A trademark attorney provides legal advice, reviews applications, advises on legal rights, and assists with enforcing trademark rights and maintaining your registrations. They are essential for ensuring your mark is legally protected and enforced effectively.

Is a trademark attorney the same as a patent attorney?

No, a trademark attorney is different from a patent attorney. The expertise of a patent attorney is different from that of a trademark attorney. Patents cover inventions, whereas trademarks are source identifiers for businesses and sources of goods and services. However, it is fairly common for attorneys to practice in both areas.