*Please note that while Gerben Law Firm is not located in New York, it can assist businesses from New York in registering a federal trademark because it is a federal matter.
Gerben Law Firm, PLLC is a trademark law firm that was created by trademark attorney Josh Gerben. Mr. Gerben’s trademark focused firm represents a wide range of clients all over the United States, including New York City, New York. Gerben Law Firm’s trademark services include trademark search, trademark application, trademark registration (filing) as well as trademark renewal and trademark monitoring services.
Gerben Law Firm is focused on offering top shelf services at a fraction of the cost of larger law firms. To do this, trademark lawyer Josh Gerben has developed an efficient system that allows him to work with each client individually at extremely competitive rates.
Everything You Need to Know About Obtaining Trademarks for New York City Businesses
What some of our clients in New York City “NYC” are saying:
“Working with Josh was an absolute pleasure. He made the process of getting our trademark a breeze. Should we ever seek another trademark we would certainly retain Josh again in a heartbeat. I highly recommend him.”
– Verena Frydberg
Makeover Your MS, Inc. – New York City, New York
“We are extremely satisfied with Gerben Law Firm’s service. We especially appreciate the extent of knowledge that Josh brings to our matters and the timeliness in which he responds to our requests.”
– Deepak Negpal
JewelAmerica – New York City, NY
“Our business, The Couture Baby LLC, hired Josh to register our company name. From the outset, we found Josh to be very professional, knowledgeable, and willing to spend as much time as required to answer any questions and guide us in support of the registration application and overall approval process. I would strongly recommend Gerben Law Firm, PLLC for any legal work you would require.”
– Ken Montagno
The Couture Baby LLC – New York City, NY
“Josh is a professional that gets the job done with the required and desired results. Murphdog & Company has used Josh’s services more than once and will continue to call upon him in the future.”
– Jenna Robbins
Murphdog & Company – New York City, NY
“Josh made a difficult and tedious project easy and understandable. He is a pleasure to work with – always approachable and willing to go that extra distance to achieve success. Josh is an expert in his field and easily sees even the most obscure potential problem and accounts for it in his work. I will continue to use his service many times in the future.”
– Charles B. Eisenson
PayUsLessRx.com – Greater New York City Area
“It’s too bad Linked in only allows me to choose 3 top attributes, cause I’d love to have chosen them all! It’s always easy to spot someone who does something they love and it’s clear Josh loves his work. He addressed all of my concerns and guided me through every step along the way. His research was also very thorough. I would gladly and quickly recommend Josh to anyone in need of a great trademark attorney! Thanks again Josh!”
– Brian Riley
PetKaboodle, Inc. – Greater New York City Area
“If I had known how easy and pleasant the trademark registration process could be, I wouldn’t have waited so long! From our initial consultation, Josh Gerben had my confidence. I started out knowing nothing, and he answered each one of my hundred questions quickly, clearly, and with great patience for my steep learning curve. He was promptly responsive to all e-mails and calls. And I trusted his council implicitly when making decisions. I have since referred many to him, and I will continue to do so. He is friendly, reliable, knowledgeable, and fast. He sets realistic expectations and meets all promised expectations.”
– Robin Gillies
Breathing Room. – New York City, NY
“Gerben Law was great to work with. It was a pleasure working with Josh, as he did all he had to do to help me with my trademark. I barely lifted a finger. He did all the leg work prior to calling me, and it was a done deal. No calling back and forth, this was the greatest experience I’ve had in a long time. This guy knows his stuff.”
– Lisa Smith
Chief Girl Gone DIY – New York City, NY
Top 5 Questions about Obtaining a Trademark
- What exactly is a trademark?
- Trademarks are filed to protect names, words, colors, sounds, and symbols. Essentially, a trademark serves to indicate that a product or service is associated with a specific company or brand. Once a federal trademark registration is obtained it provides the presumption of validity to the owner of the trademark on a nationwide basis in the United States. A trademark registration can be renewed indefinitely, as long as the goods and / or services associated with the trademark are still offered in the marketplace.
- Why should I hire a trademark attorney?
- A common complaint by many individuals and small businesses who are attempting to obtain their first trademark is that they do not want to spend the additional money on hiring a trademark attorney. Money can be tight at the start of a new business or venture, therefore, many entrepreneurs look to complete the trademark search and registration process themselves. However, the reality is that filing a trademark on your own can end up costing you more money in the long run. Over the years at Gerben Law Firm we have seen many clients who spend more money to have me fix and re-file their trademark applications than they would have spent by hiring one of our trademark attorneys initially. By having an experienced trademark attorney handle things from the very beginning, you can save yourself a lot of time, money, and hassle.
- When should I start the trademark process?
- Ideally, trademarks should be filed as quickly as possible. Obtaining a federal trademark registration for your business, product or service name should be treated as an urgent matter. The longer you wait to complete the process, the greater your chances of encountering an issue. For example, a trademark search should be done before you settle on any name. You do not want to create signs for your storefront or print labels for your products only to find out the name you have selected is infringing on another party’s trademark. If a trademark search shows that there is a good chance your desired trademark is clear to adopt and register you should then file the federal trademark application as soon as possible. This is because the filing date of your trademark application with the United States Patent and Trademark Office becomes your priority date nationwide on the trademark.
- How long does it take for my trademark to be registered?
- Once a trademark application has been successfully completed and filed, the waiting game begins. If the application is “clean” (meaning no issues are found by an examining attorney) it typically takes about 8-10 months for the process to complete. That being said it can take a year or more to complete the registration process in some cases. This is another place where a trademark attorney can be helpful. By getting all the technical points of your application correct an experienced attorney can ensure the trademark registration process goes as smoothly and quickly as possible.
- Does hiring a trademark attorney increase my chances of approval?
- The simple answer here is “yes”. Not only can a trademark attorney provide you with valuable legal advice throughout the trademark registration process, but a study by the University of North Carolina actually 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 (USPTO).
Common Misconceptions about Filing Trademarks for NYC Based Businesses
- The terms trademark, copyright, and patents can all be used interchangeably.
- Trademarks, copyrights, and patents do not cover the same things. Trademarks protect items such as product/service names, company names, slogans and logos Alternatively, copyrights protect works of authorship, while patents protect inventions.
- My competitor didn’t register its name or logo, so I can trademark it for myself.
- Just because a mark hasn’t been federally registered yet doesn’t necessarily mean that you can adopt and use it. The United States is a “common law” country which means that if someone else has adopting and is commercially using a trademark they may have certain rights (even if they did not attempt to register the trademark).
- No one else can use a word that I have registered as a federal trademark.
- Obtaining a trademark on a word does not necessarily mean that it cannot be used by any other business. A trademark simply verifies the origin of a product or service. Two brands can have the same name if there is no potential confusion between the products or services that they provide. For instance, there is an airline named Delta, but there is also a company named Delta that manufactures and sells faucets. They may have the same name, but they are two entirely different companies in two vastly different industries.
- It only takes one trademark to cover your assets.
- When submitting a trademark application to the USPTO, you must indicate which categories that your trademark will cover. Failure to choose all of the appropriate categories could leave your assets vulnerable. Be sure to indicate all areas where your trademark could be used.
- The symbols “TM” and “®” mean the same thing.
- Use of the trademark registration symbol ® indicates that your trademark has been federally registered. You are allowed to use the TM symbol until your trademark application has been approved by the USPTO. Using the ® prior to obtaining your federal trademark registration is a violation of federal law in the United States. If the USPTO sees that you are using this symbol the examiner handling your application will reject your trademark application on grounds you are improperly using the registered trademark symbol.
Types of Trademark Services Offered to New York City Clients
Additional Information on Trademark Registration for New York Businesses
New York City is home to thousands of small businesses; each block is its own micro-community with an assortment of product and service offerings. So how important is a trademark registration for a business like this in New York? As a small business owner, although you may not be selling your products outside of a region, registering your mark can help prevent many issues. In particular, two scenarios are likely. Let’s say a company is selling tires in New York City. It starts using “Screech Tires” as its trademark but fails to register the trademark.
One scenario is that there’s already another company out there called Screech Tires which the business owners didn’t know about. In this case, the other company could send Screech Tires a cease and desist letter at any point and Screech Tires would likely have to stop selling the products under that name. Any time or money it had invested in building its brand equity in the New York area would effectively be erased overnight.
A second scenario highlighting the importance of obtaining a federal trademark registration is that it gives your business the ability to grow outside of New York. Let’s say there is not another ‘Screech Tires’ in New York or the entire country when the company first starts selling its tires, yet it still does not register the trademark. If at any point in the future someone registers “Screech Tires,” the original Screech Tires will still retain the rights to sell its tires, but only in the specific region which it is currently selling them, which would be the New York City area. The company would never be able to grow without spending a significant amount of legal fees fighting the junior company.
By registering your trademark, not only do you prevent yourself wasting time and money with these problems, but most importantly you gain federal recognition of your ownership of the mark. This prevents anyone from selling products or services under a similar name which could potentially confuse your customers or dilute your brand. It also gives you the right to sue if someone infringes on your trademark without authorization.
Especially in a global economy where products and services can easily be sold over the internet, a trademark registration is crucial to protecting your brand as well as helping you to avoid any future litigation that may arise.