Trademark Attorney Services for Your Silver Spring Business

The top 5 questions Silver Spring businesses have about obtaining a trademark.

Do I need to register my trademark?

Because the U.S. is a common law country, you will have some limited trademark protections as soon as you use the mark in commerce. In many cases, however, these common law rights may not be enough to protect your brand. Your mark will only be protected in the small geographic region where your business is based, which will make it more challenging to expand your business outside Silver Spring in the future, especially in areas where a confusingly similar mark is already in use. You’ll also face more challenges when asserting your trademark rights in future legal proceedings. Rather than relying on these limited common law protections, register your trademarks with the USPTO for the presumption of validity nationwide.

Am I required to work with a trademark attorney?

If you are a U.S. citizen, you are not required to work with a trademark attorney when registering your trademark. However, the United States Patent and Trademark Office, or USPTO, highly encourages the engagement of an experienced trademark attorney. The process to register a trademark is detailed, and knowledge of IP law is needed. Your attorney will conduct a comprehensive trademark search, draft your application, and even respond to non-substantive Office Actions on your behalf, all while you continue to focus on growing your business. Contact Gerben IP to learn about our reasonable, flat-rate registration services.

What are trademark classes?

When you submit your trademark application to the USPTO, you’ll need to file for certain classes of goods or services. There are 45 classes to choose from, 34 for goods and 11 for services. Select all of the trademark classes representing the goods or services you offer now or plan to offer in the near future. Your trademark will only be protected in association with the trademark classes you’ve included in your trademark application. Learn more about the most common trademark classes.

What are some reasons for a trademark application to be rejected by the USPTO?

There are many reasons for a trademark application to be canceled. The most common reason for the USPTO to reject a trademark application is that a confusingly similar trademark is already in use. A mark may also be rejected if it includes generic or descriptive words, like “Good Pizza” or “Hot Coffee,” or if it includes the name of a celebrity without their authorization. Your attorney can assist you in making changes to your trademark application before it’s submitted to increase your likelihood of approval.

What are Office Actions?

Throughout the course of the trademark registration process, you may be issued an Office Action. These are notifications from the USPTO, often requesting additional information or letting you know that your trademark application has been rejected. Each Office Action includes a date by which you must respond, often within 6 months of the date it was issued. Failing to respond to the Office Action within that timeframe could result in the rejection of your application. If you’ve received an Office Action from the USPTO, the attorneys at Gerben IP can assist you in responding.

Common misperceptions about trademarks heard around Silver Spring, MD.

Trademarks, patents, and copyrights are all essentially the same thing.

These three forms of intellectual property each protect something different. Trademarks, for example, protect business and product names, logos, slogans, and anything else that represents a brand in the marketplace. Patents, on the other hand, protect the design and functionality of inventions, while copyrights protect creative works, like art, song lyrics, and poetry.

My competitor didn’t register their name, so I can register it for myself.

If your competitor has used the mark in public, they likely have some common law rights to it. If you are unsure about the availability of a particular mark, Gerben IP can assist you.

My federally registered trademark will protect me in trademark disputes in China.

Your U.S. trademark will only protect your business in disputes that occur within the United States. For many businesses, especially those that manufacture, distribute, or sell goods in China, seeking Chinese trademark protections is critical to protecting your brand. You can apply directly with the country’s trademark office, or you can use the Madrid Protocol, which allows you to file a single application that can be applied to more than 90 member countries, including China. Once your registration has been approved, you can also register with China’s Customs, who will block the export of counterfeit goods bearing your trademark.

Someone from the USPTO will let me know if another business is using my trademark.

The USPTO will not alert you to potential infringement. Once your trademark has been approved, it will be your responsibility to monitor and protect it. Fortunately, many trademark attorneys, including the team at Gerben IP, offer monitoring services and will help you take legal action when infringement is found.

My registered logo is protected, even if I make small changed to it over time.

Your trademark will only be protected as it appears in your trademark application. It’s common to update your trademark from time to time, but you must register the new mark with the USPTO to maintain your protections.