Trademark Law & Litigation

A trademark is a word, phrase, symbol, or logo that identifies the source of goods or services — think trade names, brand or product names, and slogans. Trademark law protects a business's right to use a given mark in connection with specific goods or services, distinguishing it from copyright (which protects original artistic or literary works) and patent law (which protects inventions). By preventing counterfeiters from freely trading on an established reputation, trademark protection also protects consumers from being misled into buying lesser-quality imitations.

Common-law trademark rights exist even without registration, but they're narrower and offer weaker legal protection. Federal registration — which allows use of the ® symbol — provides several advantages:

• Evidence of ownership and use
• Stronger protections and remedies available in federal court
• A nationwide legal presumption of validity, and constructive notice of your ownership claim to others
• The right to record your mark with U.S. Customs to help block imports of infringing goods
• Priority when filing for trademark protection in foreign countries

You can apply either before or after you begin using a mark. Applying before use can secure your exclusive rights to use it later, provided no one else was already using it as of your filing date. The right timing depends on factors like the likelihood that a competitor might file for a similar mark, your available capital, and how much a pending or issued registration matters to investors. It typically takes five to six months for the USPTO to complete its initial review, so many business owners prefer to file as early as possible — the longer you wait, the greater the risk that you'll invest time and money into a brand that either can't be protected, or worse, infringes on someone else's existing mark.

Choosing the right mark involves weighing several tensions. A more descriptive name (like "Honey Roasted Nuts") can build instant recognition with consumers, but the more descriptive a mark is, the weaker the legal protection it typically receives. Before filing, it's worth researching existing marks to reduce the risk of a conflict with an existing owner. You'll also need to decide whether to register the name alone, as part of a logo, or both — along with related choices like how many words to include, and whether to register a logo in color or black-and-white. Perhaps most importantly, you'll need to carefully define the specific goods and/or services the mark will cover, since trademark protection generally only extends to what's actually listed in the registration. Getting all of this right takes careful thought and strategic judgment.

Working with an experienced trademark attorney offers real advantages:

• Experience: While you're permitted to file a trademark application yourself, most people find it inefficient to learn the entire process for just one or two registrations. An experienced attorney can prepare a strong application far more quickly than most laypeople could on their own — freeing you to focus on running your business.
• Quality: Crafting an application that defines your rights as broadly as possible, while still meeting USPTO requirements, takes real expertise. The USPTO frequently issues Office Actions requiring a persuasive response, and experience matters here. Our firm has also developed systematic processes for tracking deadlines throughout the application and maintenance process.
• Judgment: Business owners are often too close to their own brand to see problems coming. An experienced attorney brings the detachment needed to spot issues early and address them before they escalate.
• Results: The stakes are real — federal filing fees run $275–$325 per class of goods or services, and the process (from filing through registration) typically takes the better part of a year, with the USPTO's initial review alone taking five to six months. Skilled counsel helps you get it right the first time, avoiding rejections and delays that can cost you both time and trademark rights.

In the United States, trademark rights are established through actual use of a mark in commerce — not simply by registering it. This is known as a "first to use" system, in contrast to the "first to file" system used in most countries outside the U.S. Generally, whoever can prove they used a mark in commerce first holds priority rights to that mark, even over someone who files for federal registration earlier. Because of this, establishing — and later proving — your first use date is often one of the most important elements in a trademark dispute.

An Intent to Use application lets you secure a priority date before you've actually started using your mark, based on a sworn statement that you intend to use it. This is especially useful if you've developed a strong brand idea but haven't yet brought it to market: filing gives you a constructive first use date, protecting your rights even if someone else starts using a similar mark before you do.

One exception to first-use priority is abandonment. If a trademark is found to have been abandoned, another party may be able to claim it — the principle is often summarized as "use it or lose it."

Yes. While not strictly required, you should keep evidence of both your first use and your continued, ongoing use of a mark. Defendants in trademark infringement cases frequently attack a plaintiff's registration by alleging fraud in its procurement — arguing the registrant misrepresented their use of the mark. Solid documentation of first and continuous use is one of the best protections against this kind of challenge.

Possibly — it depends on how "token use" is defined under the specific facts of your case. It's a claim we see often in disputes, which is another reason to keep thorough records of your use of the mark.

Use ® once your registration has issued, and ™ while your application is still pending.

Yes — there are ongoing legal requirements to maintain your registration, including periodic filings. Beyond paperwork, trademark owners should stay alert to potential infringement; when it occurs, there are a range of responses available, up to and including litigation.