Frequently Asked Questions
Trademarks
What is a trademark?
A trademark is a symbol (e.g., word, phrase, design) that allows consumers to identify the source of a product or service. The word “trademark” is used interchangeably to refer to both trademarks (for goods) and service marks (for services). You can also trademark “trade dresses”, or the total look or packaging of a product (a wine bottle design and label or a chain restaurant’s design and decorations).
How do I know if my trademark is effective?
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Generic - “The Shop” for a store
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Descriptive - “Yellow Yummy Fruit” for a banana
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Suggestive - “Better Health” for vitamins
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Arbitrary - “Neon Lamps” for a band
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Fanciful - “Tegon” for electronics.
Do I need to register my trademark to protect it from use by others?
However, if you want to protect that right, you should register it. Registering your trademark will prohibit others from using your mark (or marks so similar that consumers would be confused). Registration also provides other benefits, like legal presumption of the validity and ownership over the trademark, and special remedies if you ever need to go to court.
What kinds of trademarks are allowed to be registered?
Registry is not available to every trademark. Before commencing your registration application we recommend you consult an attorney for an opinion as to your mark’s registrability.
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Marks that closely resemble pre-existing marks in the same (or similar) International Classes, as this may cause confusion among consumers;
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Marks that closely resemble trademarks so famous they would cause confusion even if they are in different International Classes; or
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Generic or descriptive trademarks (descriptive trademarks could be registered if they prove to have “secondary meaning”, which can be achieved by having a presence so strong in commerce, that no consumer would be confused by your trademark because they already know it well).
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“Coca-Cola” for cars (even if its in a different International Class, this trademark is so famous, it is off-limits to everyone);
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“Tigre” for a soda, if there already is a “Tiger” for juice (words that sound/look similar, or are translations of existing marks);
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“Shoe” for shoes.
When can I register my trademark?
If you have already begun to use your mark in commerce, you can register it at any time using a regular application. If you have not used it in commerce, but plan to do so in the next few months, you can file an Intent of Use Application and later provide evidence of use in commerce.
Where do I register my trademark?
If you are planning to offer your goods or services in a specific geographic region, you can register the trademark at the local register (in Puerto Rico, we have a Puerto Rico Trademark Office in our State Department, the “PRTO”). However, if you plan on expanding outside of your territory or offering your good or service through the internet, we recommend you use the United States Patent and Trademark Office’s (the “USPTO”) registry for protection in all of the United States. If you need international protection, consult with your attorney for further proceedings.
What do I need to register my trademark?
What is the process of registration?
Should I consult an attorney to register my trademark?
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Legal opinion on the strength of you mark;
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Detailed research of local and federal registry, as well as use in commerce to assess likelihood of confusion and therefore registration;
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Recommendations as to types of marks and International Classes to register;
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Experience with the local and federal online registry processes;
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Preferential fees in some registries (USPTO); and
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Ability to respond to Office Actions on your behalf.