*Please note that while Gerben Law Firm, PLLC is not located in Pennsylvania, it can assist businesses from Pennsylvania in registering a federal trademark because it is a federal matter.
Gerben Law Firm, PLLC provides professional trademark attorney services. In 2008, Josh Gerben, a Philadelphia native, founded Gerben Law firm to provide high-quality trademark search and federal trademark registration services to clients throughout the United States, including Philadelphia. Having assisted clients in obtaining thousands of federal trademark registrations, Gerben Law Firm’s attorneys have the experience to represent individuals and companies on a variety of trademark and intellectual property services. Assistance with trademark monitoring, renewals, office actions, opposition proceedings, and litigation are also available.
While Gerben Law Firm is based in Washington, DC, Gerben Law Firm assists clients all across the country, including from Philadelphia. With competitive rates and individualized service, Gerben Law Firm’s attorneys pride themselves on providing cost conscious legal services which deliver quality results.
Federal Trademark Registration For Your Business
Testimonials From Our Clients in the Philadelphia Region
“Thank you so much for your 1st-rate help getting my trademark. You explained every step clearly, including the risks. Please feel free to use me as a reference at any time.”
– Tom Donovan
P.A.S.S. System – Philadelphia, PA
“I hired Josh to do some trademarking work for me. He was very knowledgeable, explained the process clearly, made sure it was filed in a timely manner, and followed up with me each step of the way.”
– Kathy Wolper
Kitchen Wizards – Philadelphia, PA
“Josh provided me with a great service at a great price. He was always available by email or phone. I recommend him to everyone I know who needs a trademark attorney.”
– George Rothacker
Professional Painter – Philadelphia, PA
“Josh did a great job securing the trademark for my automotive repair centers.”
– Jonathan Gerben
Tires, Etc. – Near Philadelphia, PA
“A HUGE thank you to Josh Gerben, Esq for making our Swifty Snap logo trademark experience the best ever!! As a new start-up, I was very concerned about protecting my investment. Working with Mr. Gerben was by far the smoothest process from start to finish. Not only was the execution flawless, he kept me in check with explaining, setting expectations of the potential trademark approval, and was able to work electronically to save time. It was such a pleasure to work with you. Thank you for helping us secure a REGISTERED trademark!”
– Amanda Schambon, Inventor/CPO/President/Co-Founder
Swifty Snap – Near Philadelphia, PA
Top 5 Questions Philadelphia Businesses Have About Protecting a Trademark
- Should I register my logo or the word itself?
- Whenever possible, we recommend protecting both. A “word mark” will protect the word within almost any font or logo and gives a wider protection of the word compared to the logo alone. A logo will protect the design elements of the logo, but it will limit your rights in the word mark to how it appears in the logo, potentially giving others the opportunity to use the same word in a different logo. There is legal strategy involved in this decision too and your trademark attorney can help you decide which is best for you.
- How long does it take to register a trademark with the U.S. government?
- After you apply, expect the process to take nine to twelve months to complete (potentially longer.) Once you apply, however, everyone else must “get in line” behind you. There are, however, some important milestones. Within three to four months, the government will review the application and either accept it or issue an “office action” with reasons for rejection. If accepted, then it will be processed for another 2-3 months, until it is “Published for Opposition,” a period of time for other companies to object. If no one objects, then in 3-4 months, the registration certificate will issue.
- Should I wait until I have firmly established my business before filing a trademark application?
- We recommend filing as soon as you start to form a business plan, reach out to vendors, and start pre-sale marketing. Unless you reserve rights, you do not gain trademark rights until you begin to sell products (or render services.) You can reserve rights (for an additional fee) for up to three years to make sure no one else “swoops in” and uses the trademark you wanted to use.
- What are “classes” and how do I pick the goods and services to protect?
- The US government requires applicants to provide a detailed and specific list of the products and services they seek federal protection for. To do this, first you must select from one or more of 47 different government categories called “International Classes” covering every conceivable product and service. Next you must draft the list of goods and services. This part requires a detailed legal analysis – apply for the wrong thing, your application may be delayed or even denied outright. Apply too broad, and you may get rejected because of an existing registration that is, in truth, not even in the same industry as you. Too narrow, and your registration may not accurately protect your business offers.
Common Misconceptions about Filing Trademarks for Philadelphia Businesses
- I did a search of the USPTO’s database and did not find any exact matches. This basic search is sufficient and I should start using my trademark.
- Even if you do not find an exact match, you can still be liable for trademark infringement and risk rejection from the USPTO. The USPTO looks at whether your trademark is similar in sight, sound, meaning and commercial impression to other registered trademarks when deciding whether or not your application should be approved. A comprehensive trademark search conducted by a law firm will look these considerations and give you a detailed analysis and risk level.
- I purchased a domain-name containing the trademark I plan to use. This gives me sufficient rights in the word or phrase.
- Purchasing a domain-name (without more) is not sufficient to gain trademark rights. You must sell products bearing the trademark (for goods) or render services (for services) before you gain trademark rights. Until then, you will not have a protectable trademark.
- I have a popular blog but I do not currently have advertisers. I cannot register my trademark because I am not making money.
- While “use in commerce” is a requirement for trademark registration, earning money or selling products is not a requirement. If you have an active readership in the United States, then you may be able to register your blog’s name. Consult a trademark attorney for learn more about the best way to move forward!
- I came up with a unique business plan. I should register a trademark to stop other people from using a similar business plan under different names.
- Trademarks cover brands, logos, slogans, tag-lines and other things that ‘represent’ a business. It will not stop others from offering the same idea or process under a different name. Potentially, you may be able to protect your idea under patent law, but not trademark law.
- I have a clothing boutique in downtown Philly. Because I am still starting out, I should wait to register my trademark.
- You should protect your rights as early as possible, through a standard trademark application or through an “intent-to-use” application, which allows you to reserve rights while you launch your business. Moreover, the federal application will provide a presumption of federal ownership in your brand which will make expansion outside of the Philadelphia area less risky.
The Number of Trademarks Registered by Philadelphia (by Year)
How many trademarks have Philadelphia, Pennsylvania businesses registered over the years? Gerben Law Firm collected the following data.
||# of Trademarks Registered
*data was gathered from the USPTO’s public database
Types of Trademark Services offered to Philly Companies & Individuals
Additional Information on Trademark Registration in Philadelphia, PA
Philadelphia, Pennsylvania is a center of business in the United States. Both entrepreneurs and huge companies come to the City of Brotherly Love to innovate and expand their businesses. Regardless of whether you run a small or large business, a start-up or a conglomerate, your company needs to protect its trademarks. It can start by registering its valuable trademarks with the United States Patent and Trademark Office.
Consider this: a new stationary store opens downtown. Its owners decide to call it “Perelony Paper and Gifts.” Perelony’s owners, Kim and Nate, picked out a storefront and are about to order a stylizish window decal and sign. Kim and Nate wonder whether or not they should spend the money to register the name of their store. There are a few reasons why Kim and Nate should put trademark search and registration high on their priority list.
First, even though Kim and Nate did a Google search of the name and looked for similar names in the Philadelphia area, they do not have an accurate view of their overall risk-level from a nationwide perspective. While they are only opening one shop in Philly for now, they also plan extensive online sales throughout the U.S. This means that they need do a nationwide search to identify potential trademark issues. If not, they could be using a trademark that someone else already owns and they could be forced to, at best, not sell products in certain geographic areas or, at worst, change the name completely (and potentially be liable for damages.)
By performing a comprehensive search, Kim and Nate will be able to see who else is using names similar to “Perelony” and make an informed decision moving forward.
Second, if Kim and Nate register their trademark they will have nationwide “priority” over anyone who uses a similar name after they applied for their trademark. This means that if another stationary store ‘Pereloney’ opens in Oregon, Kim and Nate would be within their rights to ask the junior user of the trademark to stop. Otherwise, they would need to prove that their rights extended from Philadelphia, PA, all the way to Oregon, which is extremely difficult (and expensive, from a legal costs perspective.) With a federal registration, Kim and Nate would have a government certificate showing nationwide rights. That is not to say that the registration cannot be canceled by someone who used a similar mark first, but it is a powerful tool in protecting a brand.
Third, Kim and Nate will be able to stop counterfeiters and other infringers on-line easier. If Nate was searching Esty and found someone reporting to sell fake Perelony products, the trademark registration will make it easier to get the listing removed. While not an explicit ‘benefit’ of a federal registration, these types of things help build an effective brand and keep costs low.
By searching and registering their trademark, Kim and Nate of Perelony Paper and Gifts will be on their way to joining the other storied and successful Philadelphia, PA-based businesses. By being pro-active and consulting with an experienced attorney, business owners can avoid trademark pitfalls and build a strong and memorable brand.
Gerben Law Firm, PLLC has provided trademark services for multiple clients within the state of Pennsylvania. As a law firm practicing federal trademark law, we provide services across the United States and Pennsylvania. Click on the following links to see client reviews from the following locations: Scranton trademark attorney, Lancaster trademark attorney and Pittsburgh trademark attorney.