A trademark serves as a symbol which communicates to consumers that the associated goods or services are from a unified source and/or embody a consistent quality level. The mark, which can be a word, name, symbol or device (including trade dress), must be able to create a separate commercial impression on the consumer, apart from the other material used with it, and its primary effect must be to identify or distinguish the goods or services, and not serve merely as decoration. This section is directed to Ware, Fressola, Maguire & Barber LLP’s capabilities in the following areas: helping clients determine whether marks which interest them are available, registering marks, maintaining registrations, policing others’ use of similar marks, and formulating approaches to avoiding others’ trademark rights.
We counsel clients about the legal and business shortcomings of potential marks prior to their adoption, with a view toward avoiding questionable marks at the threshold. Once a candidate mark is selected, we encourage our clients to have us perform a comprehensive trademark search, which can help avoid disputes over the use of the mark by identifying potential problems and devising ways to combat them in advance.
Creating trademark rights in the U.S. can be effected by proper use of the mark in trade, and we guide our clients in making such use, including the proper use of marks not inherently distinctive. An alternative way to acquire the rights, without having made any use of the mark beforehand, is to file an application in the USPTO based on the “intent to use” the mark in commerce. We guide our clients in preparing, filing and prosecuting such an application. When use of a mark is blocked by another’s preexisting use of a rival mark, another possible alternative can be acquiring ownership by negotiating with the other party to secure an assignment of the rival mark, and we help clients with this process.
We assist our clients in registering their marks with the USPTO or the State of Connecticut, if the mark is only used in Connecticut. Federal registration strengthens the claim to ownership by giving a presumption of mark title and validity, and after five years of registration, precludes certain challenges or defenses to the mark. Federal registration also extends the geographical area in which the owner has rights to the mark and gives the owner a right to assistance from U.S. Customs and Border Protection in preventing infringing goods from entering the country. If a mark is not registrable on the Principal Register because it is not distinctive, the mark may be registered on the Federal Supplemental Register in order to help secure rights abroad.
After a registration has been granted by the USPTO, our firm assists in preparing and filing the necessary documents to maintain registrations, including Declarations of Continued Use, Applications for Renewal, and Declarations of Incontestability.
When a client is transferring a mark to another party the transfer must also include the goodwill of the business providing the goods or services with which a mark is associated. We assist clients by preparing an instrument for assigning the mark to the other party, along with advising on what must be transferred along with the mark in order for the assignment to be valid.
We use a network of attorneys abroad to obtain trademark protection in countries around the world. Trademarks may be registered in foreign countries by directly filing an application in the foreign country or by filing an application for an International Registration under the Madrid Protocol, which can then be submitted to particular foreign trademark offices for registration in the foreign country. Unlike the U.S., in many off-shore jurisdictions so-called common law trademark rights are not favored, and registration of a mark is the principal means of creating rights. When registrations are granted, we assist with maintenance of those rights by attending to submission of evidence of use and any requisite payment of annuities at the prescribed times.
We welcome you to contact Ware, Fressola, Maguire & Barber for more information about our trademark law practice.