*Please note that while Gerben Law Firm, PLLC is not located in Illinois, it can assist businesses from Illinois in registering a federal trademark because it is a federal matter.
Gerben Law Firm, PLLC was founded in 2008 by trademark attorney Josh Gerben. Gerben Law Firm attorneys provide trademark and intellectual property services for a wide range of clients all over the United States, including Chicago, Illinois. Gerben Law Firm’s trademark services (complete list) include trademark search, trademark application, trademark registration (filing) as well as trademark renewal and trademark monitoring services.
Gerben Law is focused on offering top-shelf legal services at a fraction of the cost of larger firms. To do this, trademark lawyer Josh Gerben and the experienced trademark lawyers at Gerben Law Firm developed an extremely efficient system that allows experienced attorneys to work with each client individually at very competitive flat rates.
Federal Trademark Registration For Your Business
Testimonials From Our Clients in the Chicago Region
“When I started my small business, I was working with a local attorney who told me one of his specialties was trademark filings. After spending over $1,000 with him on trademark searches and other research (all preliminary work), his conclusion was that a trademark filing would be futile, as there were too many conflicts and similar names. This attorney would therefore not support the money and effort required for a trademark filing, took his fee, and walked away. Not willing to give up so easily, I searched for a reputable firm that really did specialize in trademarks. After doing some research, I found Josh and his company. During our initial conversation he noted some reservations and concerns, but thought the filing was still worth pursuing. As it turns out, it was. Working through Josh the trademark was granted, and Josh was in communication with me every step of the way. For the flat rate I paid Josh, I received more than three times the information I had received from my local attorney, at a fraction of the cost. I would highly recommend Josh to anyone wishing to pursue a trademark filing.”
– Kevin Knight
President of Kinightic Corporations – Near Chicago, IL
“I had used another service before hiring Josh Gerben Law Firm to complete my product registration filings. I should have made the change earlier.”
– Tim Buford
President/Owner of Safety Compliance Training Services, Inc. – Near Chicago, IL
“I would recommend to anyone that is looking for a qualified, professional and talented attorney that Josh is the person to turn to! My trademark could have been a very stressful and complicated process and Josh made it very easy. Josh will be my first call when my next product is completed.”
– Brian Gibbs
Golf Innovations, Inc. – Chicago, IL
Top 4 Questions Chicago Businesses Have About Protecting a Trademark
- Do I need a trademark?
- A trademark protects anything that represents your company to your customers—names, phrases, words, and symbols are the most common, but colors, sounds—even smells—can be trademarks. A distinctive trademark allows you to separate your company from your competitors and allows you to stop competitors from using a similar trademark. However, simply selecting a trademark is not enough – you need to research, register, and protect your trademark, starting with conducting a professional search and registering your trademark with the United States Patent and Trademark Office.
- Do I need an attorney to file my trademark(s)?
- When starting a business, budgets can be tight and trademark protection can seem like a low priority. Some business owners decide to file their own trademark application with the United States Patent and Trademark Office. However, filing a trademark application without the proper expertise can end up costing businesses dearly in the long run. Gerben Law Firm has seen many clients spend more money on fixing and re-filing their trademark than they would have spent if they worked with an attorney from the beginning. Having an attorney perform a comprehensive search, select the appropriate classes and language for the application, and submit the correct specimens to ensure a successful process is worth it in the long run.
- Does hiring a trademark attorney increase my chances of approval?
- The simple answer is “yes”. A trademark attorney can provide you with valuable legal advice throughout the trademark registration process. A study by the University of North Carolina found that trademark applications submitted with the help of an attorney are 50% more likely to be approved by the United States Patent and Trademark Office.
- How long does it take for my trademark to be registered?
- After you file the trademark application, it is reviewed by a trademark examiner (a government attorney.) From start to finish, the process of review takes about 8 – 10 months. However, once registered, you will be protected against anyone who uses a confusingly similar trademark for related goods and services from the date you applied. In some cases, it may take longer than a year to complete the registration and having an attorney can be helpful to ensure that there are no technical errors in the application or missed deadlines. Additionally, should any issues arise in the registration process, you have an attorney on your side to guide you through the process. Gerben Law Firm’s goal is for trademark registration to be a smooth and seamless as possible.
Common Misconceptions about Filing Trademarks for Chicago Based Businesses
- A trademark is only for a logo. You should copyright the company name.
- While a trademark can protect a logo or design, it is also able to protect anything that represents your company – your company name, slogan, or even a specific company color or sound. Copyrights, on the other hand, protect creative works of authorship, such as drawings, novels, or songs. You should protect your logo and your company name as trademarks. If you don’t know whether you need a copyright or a trademark, contact our firm for a free consultation.
- I can use my neighborhood’s nickname in my trademark and stop others in the neighborhood for using the same nickname.
- Chicago and its neighborhoods have a rich range of nicknames. Whether your company is located in Chicagoland or not, if the windy city is deeply connected to your brand – and not just a description of its location – then you can use it as a part of your name. However, to gain exclusive rights in a geographic location, you must use a trademark for a long time and make sure that, when people see or hear your company name, they think of you, not the geographic location. For example, American Airlines is an airline in America. However, when consumers when they hear the company “American Airlines”, think of a brand, not all of the major airlines in America. The same may be true for your Chicago business. Conducting a comprehensive search, and talking with one of our experienced attorneys can help decide the best strategy for protecting your trademarks.
- I registered my business name with the Office of the Illinois Secretary of State and the county clerk’s office on my business license. That is enough to protect my trademark.
- Most businesses in Illinois are required to register or be licensed with a state agency. While this is necessary for the Illinois Department of Revenue, simply registering a business name and filing your corporate paperwork will not give you any trademark rights. You must use your company name on a product or in an advertisement for services, so that customers would see it.
- Once I register my trademark no one else can use that word on any other product.
- The owner of a federal trademark registration may stop others from using a confusingly-similar trademark for related goods and services. Owning a trademark does not mean that another business cannot use it for unrelated goods or services. Two brands can have the same name if there is no potential confusion between the products or services they provide. Take the famous Chicago-founded UNO® Pizzeria & Grill and Mattel’s UNO® card game. While they share the same “UNO” name, there is no confusion because they are in vastly different industries. If Mattel decided to go into the pizza business, however, then the owners of the UNO® Pizzeria & Grill would certainly be able to stop them.
- I applied for a trademark and it is currently pending. Now I can use ®, the “registered trademark” symbol.
- Not yet! It is against federal law to use the ® symbol unless your application is approved and registered. While your application is pending you can use the ™ symbol.
The Number of Trademarks Registered by Chicago Businesses (by Year)
How many trademarks have Chicago, Illinois businesses registered over the years? Gerben Law Firm collected the following data.
|Year||# of Trademarks Registered|
*data was gathered from the USPTO’s public database
Types of Trademark Services We Offer
Additional Information on Trademark Registration for Chicago Businesses
Whether your Chicago-based company aims to make it big in The Loop or in Wicker Park, it is important to consult a trademark attorney. Trademark rights are not “set it and forget it.” To effectively protect your trademark, you must research, select, and register your trademark, but you also have to diligently stop others from using names that could confuse customers. An experience trademark attorney will be able to guide you through the trademark search, registration, and protection process to assist you in protecting one of your most valuable assets—your company’s trademarks.
Imagine that a new small retail clothing store opens near historic Lincoln Park called “Shore Swathe.” The company is new and did not consult an attorney to protect and register its “Shore Swathe” trademark. This can open the business up to several unwanted legal scenarios.
Let’s say that another clothing store in New York and New Jersey is using the name “Shore Swathes” and registered the trademark with the United States Patent and Trademark Office. The owners of the Chicago-based Shore Swathe were unaware of this before buying thousands of dollars in marketing materials and having a very expensive sign made for its storefront. The original, senior company with the registered trademark would be well within its rights to send a cease-and-desist letter in order to protect its trademark rights and could potentially file a lawsuit under U.S. trademark law. In a situation like this, the Chicago company would almost certainly need to change its name and the energy in creating branding, signage, marketing, would be wasted. The Chicago company may even be forced to destroy its remaining stock of labeled products or close its store until a new name is selected. This would be devastating to a new business. However, by talking to an attorney and conducting a trademark search, the Chicago-based Shore Swathe would have known the level of risk associated with their mark and could have discussed a strategy that would have been best for the company. Ultimately, consulting a trademark attorney could have saved the business tens of thousands of dollars.
Another reason it is important to consult an attorney and register a trademark is that is gives a Chicago-based business the ability to protect its trademark outside of Chicago and Illinois. If a company starts using a trademark and fails to register it, then it may be unable to stop new companies from opening up with similar names in other geographic locations. A federal trademark registration allows the owner to protect its rights throughout the United States and anyone using the trademark after the trademark registers cannot claim that it “didn’t know” about the registered trademark.
The most important reason to protect and register your trademark is that exclusive trademark rights allow you to stop anyone in the United States from selling similar products or services under a similar name. This allows businesses to invest in their names and build brands that stands for their companies’ quality goods and services. It means that customers would know that when see the name and walk into the store, they are getting high-quality, curated services from a Chicago-based business, not a cheap knock-off. With a registered trademark, a company can enforce its trademark against infringers and counterfeiters and ensure that the money and hard-work spent on its brand is not wasted.