Trademark Attorney Services for Your Phoenix Business

The top 5 questions Phoenix businesses have about obtaining a trademark.

What does a trademark protect?

A trademark protects anything that indicates a particular product or service is related to a specific brand. Common trademarks include words (like product or business names), logos, and slogans, but even sounds, smells, and colors can be protected through trademark registration. For more information on what can be trademarked, view our post here.

Do I need to register my trademark with the USPTO?

Because the United States is a first-to-use country, you will have some limited trademark protections simply by using the mark, even if it is not registered. However, these protections are extremely limited. Your trademark will only be protected in the small geographic region where your business is located, which could prohibit you from expanding your business to areas outside Phoenix, if a similar trademark is already in use there. In addition, it could be more challenging to argue your trademark rights in legal proceedings. In order to gain the presumption of nationwide validity, you must register your trademark with the United States Patent and Trademark Office, or USPTO.

When should I file my trademark application?

Ideally, trademark registration should be one of the first steps you take in starting your business. Before you settle on a business name, label your products, and develop marketing material, you’ll want to be sure that the mark you’ve chosen won’t infringe on another business. The date you file will also become your priority date, which means anyone looking to file a similar mark after that date will likely not be approved by the USPTO. In order to lock in your priority date, it’s best to register your mark as soon as possible.

Does working with a trademark attorney increase my likelihood of approval?

Yes, working with a trademark attorney will likely increase your chances of approval. In fact, a study by the University of North Carolina found that applications submitted with the help of a trademark attorney were up to 50 percent more likely to be approved by the USPTO. This is because the process to register a trademark involves many detailed legal decisions. Working with an attorney ensures that your application is submitted correctly and the process runs smoothly. If you’re ready to register a trademark, contact our firm today.

When does a registered trademark expire?

Your federally registered trademark will never expire, as long as you continue to use it and meet renewal deadlines. For new businesses, the first renewal will occur between the fifth and sixth year, and then again between the ninth and tenth year. After that, you’ll need to renew your mark every ten years to maintain your registration.

Common misperceptions about trademarks heard around Phoenix, AZ.

Once I register a trademark, no other business can use it in the marketplace.

This is not necessarily true. The USPTO rejects trademark applications if a confusingly similar trademark is already in use. However, not all similar trademarks will cause a likelihood of confusion in the marketplace. Dove, for instance, is the trademark for both a chocolate brand and a soap company. Because consumers are not likely to confuse the two companies, both are free to use the same mark.

I only need one trademark to protect my business.

Most businesses register multiple trademarks to protect their brands. For instance, your business name, product name, and logo should all be registered with the USPTO. Many businesses should also consider registering less common marks, like signature colors. Each of these requires its own trademark registration. If you are unsure about which aspects of your business could benefit from trademark registration, give us a call.

My U.S. trademark will protect my business in international trademark disputes.

Unfortunately, your federally registered trademark will not protect your brand in disputes that occur outside the United States. If you do business outside the U.S., through direct sales, manufacturing, or distribution, you should strongly consider international trademark registration. You can file with individual countries directly, or you can choose to use the Madrid Protocol. This international treaty allows applicants to complete a single application in their home language, then apply it to over 90 member countries.

The USPTO will monitor my trademark and let me know of any potential infringement.

The USPTO will not monitor your trademark’s use. As a trademark owner, the responsibility to monitor and police the trademark is yours. Fortunately, many trademark attorneys, including Gerben IP, offer monitoring services to assist you. If potential trademark infringement is found, your attorney will determine the best course of action, whether a simple cease-and-desist letter or more formal legal action is needed.