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   Patent Attorneys ·  Trademark Attorneys

                 Dallas · Texas · USA

 

 

Pegasus, a familiar landmark known as the "flying red horse," stands poised for flight on top of the Magnolia Building in Dallas, Texas. Brightly lit by neon, the red-winged horse appears to gallop over the city.  Pegasus originally served as the corporate logo of the Magnolia Petroleum Company and was adopted as the corporate symbol of Mobil Oil Company after merger with Magnolia.  Today, the flying red horse remains the well-known trademark symbol of Exxon Mobil Oil Corporation.

 

 

 

 

  Trademark Practice
 
Pegasus, a familiar landmark known as the "flying red horse," stands poised for flight on top of the Magnolia Building in Dallas, Texas.  Brightly lit by neon, the red-winged horse appears to gallop over the city.  Pegasus originally served as the corporate logo of the Magnolia Petroleum Company and later was adopted as the corporate symbol of Mobil Oil Company, after merger with Magnolia.  Today, the flying red horse remains the well-known trademark of Exxon Mobil Oil Corporation.  See U.S. Trademark Registration No. 355,206.
 

Trademark Application / Trademark Registration

A trademark is a word or symbol that identifies one and only one business as the sole provider of a particular product or service.  Because of this source identifying feature, trademarks have been called the "fingerprints" of commerce. 

Over a period of time, customers trade with certain companies based on personal satisfaction with their products and services, or on the recommendation of a trusted friend.  In a free market where a variety of products satisfy a particular need, customers make their selections based on the distinguishing marks (trademarks) and packaging (trade dress) that they recognize and have learned to trust.  Trademarks and trade dress therefore symbolize a company’s trade reputation.  Customer brand loyalty (reluctance to change) is a measure of customer trust that forms the real basis of a company’s trade reputation and its standing in the community. 

The value of having a recognized trademark is clear: the ability to stand out in a competitive marketplace can mean the difference between a company thriving and merely surviving.  For this reason, trademarks are among the most valuable assets of many businesses.

Protection of these valuable trademark assets is assured by registration in the U.S. Patent and Trademark Office.  Registration gives legal notice of exclusive trademark rights, and opens the door to enforcement actions in federal court and by the U.S. Customs Service.

We help our clients select and register distinctive trademarks that stand out and make winning statements about their innovative products and services.

Our practice before the U.S. Trademark Office:

  selecting distinctive, defendable marks

  searching and clearing candidate marks for use and registration

  securing the registration of trademarks, U.S. and foreign     

  appeals, oppositions and cancellation proceedings before the TTAB

 

  consent agreements

 

  watch service for conflicting marks

 

  maintaining and renewing trademark registrations

 

  recording registered trademarks with the U.S. Customs Service  

Contact us to schedule a confidential meeting with our trademark attorneys.

Learn more:

Trademark Searching and Clearance

Domain Names

Brand Identity and Corporate Image

U.S. Trademarks

A trademark is distinctive device, for example, a word or symbol that originating producers and customers use to uniquely identify a single source of a product or service.  A trademark provides a “source distinguishing” signal that communicates product quality information to the market and evokes a positive emotional response in the customer.  A trademark thus assures customers that a particular item - that is marked or “branded” with a distinctive word or symbol - comes from the same source and can be expected to have the same quality as other similarly marked items that he or she liked (or disliked) in the past.   

A familiar trademark immediately brings to mind the customer’s prior experience with that particular brand and any recommendation he or she may have received from a trusted friend.  This information shapes his opinion regarding the quality of the product and his confidence (or lack thereof) in the integrity and reliability of the producer. All of this factual and emotional information is what the trademark communicates.  If the customer’s previous experience with a brand has been favorable, then his emotional response will be positive, and he is likely to purchase the brand again and recommend it to his friends.  This generates brand loyalty – the capacity to attract customers and hold their trade over time. 

It is the source-distinguishing ability of a trademark - brand identity - that makes it possible for customers to differentiate and choose, and for the originating producer to follow through with its promise to its customers. A unique, distinctive trademark thus provides the customer with an objective means to make an informed product selection.  At the same time, it assures that the producer (and not an imitating competitor) will enjoy the financial rewards, market share and customer good will that result from hard work, quality practices and adherence to high standards.

 U.S. Trademark Applications

Ownership of a trademark in the U.S. is acquired simply by using the trademark in commerce in connection with the sale of a product or performing a service on behalf of a customer.  We recommend that a new trademark be cleared for use and registration, preferably before it is used in business and before a trademark application is filed.  Our trademark attorneys conduct trademark searches and advise on trademark selection and clearance.

Trademark Application Checklist

Your trademark attorney will need the following information to prepare your trademark application:

1. Owner’s identity.  The exact name and citizenship of the person or entity who is the owner of the trademark or service mark.  The owner may be, for example, an individual sole proprietor, two or more individuals claiming joint ownership, a husband and wife, a general partnership, a limited liability company, a limited partnership, a corporation, a non-profit organization, an unincorporated association, or a joint venture. 

2.
Owner’s contact information.  Contact information including the business street address, email, telephone and fax number, of the owner as well as information about the owner’s citizenship, state of incorporation or legal organization.

3.
Trademark.  Identify the word or words, name and/or design that form the trademark or service mark. (Graphic logos and stylized designs should be sent via email in .jpg format.)

4.
Goods/Services.  List all of the goods (products) that are now being sold and services that are now being advertised and sold in connection with the trademark. It is important to provide a complete list, since once the application has been filed, it cannot be expanded beyond the initial listing of goods and services.

 

5.  Priority.  Give the date (month, year) of your first sale to a customer anywhere, and the date (month, year) of your first sale to an out-of-state customer.  If a foreign applicant is claiming priority from a foreign application or registration, identify the country of origin, the application number or registration number, and filing date or registration date.

6.
Stylized marks.  If the mark is in stylized form, or includes a logo or other graphic image, provide a good quality black/white image of the trademark. If provided in digital form, the image should have a resolution of 300 dpi and size not exceeding 400 pixels by 900 pixels.  Photo prints should lay flat and be reproducible. We make every effort to ensure that pending trademarks are published in the highest digital quality.

7.
Actual use sample.  For products, provide one product sample specimen - packaging, hang tags, shipping labels, packing inserts, and/or photographs showing how the trademark is currently being used in your business.  For services, provide one advertising sample, for example a promotional brochure, store front signage, flyer, or magazine ad.  If you are using your service mark on a web page, give us the web URL and we will prepare the digital images.  See Acceptable Trademark Specimens and Acceptable Service Mark Specimens.

 

The trademark use specimen should clearly and legibly show the mark so that it can be read without magnification.  Preferably, the specimen should be flat and not exceed 8˝ x 11 inches.  Otherwise, it should be foldable to fit within a letter-size file folder.  Digital images of the specimen are preferred and should be in .jpeg format (send by email).  Polaroid photographs and prints from 35 mm negatives are acceptable.  Photo prints should be in color and at least 3 x 5 size (not larger than 8 x 10).

 

"Intent to Use" Trademark Applications

It is possible to register trademarks on an intent-to-use basis, meaning that a trademark application can be filed and ownership can be established even though the trademark is not yet being used in your business.  That is, an application can be filed on a bona fide “intent-to-use” basis, and proof of use in interstate commerce can be filed after you start advertising and selling the branded product, up to 36 months after the U.S. Trademark Office gives provisional approval for registration (the Notice of Allowance).  We recommend the filing of an intent-to-use trademark application as soon as you have definitely decided to use it in your business.  This will pre-empt all others who might also be considering adopting the same or similar mark for use in connection with a competitive product or service.

Intent-to-use Processing

A trademark application filed under the intent-to-use statute proceeds as follows: 

·        The trademark application, stating a bona fide intention to use the mark in commerce, is filed.  A drawing and filing fee, but not specimens, are required. 

·        The application is examined.  The application may be rejected if the mark presented for registration conflicts with an active registration, or if the mark presented is merely descriptive or incapable of functioning as a mark.  Examination will be suspended if the mark presented for registration conflicts with an earlier filed application. 

·        If not rejected or suspended, the mark is published for opposition pursuant to Section 12(a)

·        Within thirty (30) days following the date of publica­tion, an opposition can be filed by any party who believes he may be injured or damaged by the proposed registration.  An intent-to-use applicant may oppose a later filed application.  

·        If no opposition is filed, or an opposition is filed but is unsuccessful, a Notice of Allowance is issued pursuant to Section 13(b)(2) of the statute.

·        The applicant must commence actual use of the mark in interstate commerce in connection with a bona fide business at any time after application filing but not later than six months after the date of the Notice of Allowance.  This term is extendable under certain conditions up to an additional 30 months.

·        Within six months after the date of the Notice of Allowance, or within the limit of an extended term, the applicant must file a sworn statement of such actual use (commercial use declaration) pursuant to Section 1(d) of the Act.  If the actual use statement is not timely filed, the application is automatically abandoned.

·        After the commercial use declaration is filed, the specimen is examined for technical compliance. Upon acceptance, registration is granted.  The registration thus issued has the same effect as a registration based on pre-filing actual use in commerce.

 Advantages Provided by Federal Trademark Registration  

  • the right to file an action in federal district court to recover profits, damages and costs for infringement, including the possibility of receiving an award of treble damages in exceptional cases;

  • the ability to recover attorneys fees in infringement actions;  

  • the right to file an action in federal district court to obtain an order enjoining a competitor’s use of a confusingly similar trademark;

  • the right to rely on the registration as prima facie evidence of ownership and use in opposition and cancellation proceedings before the Trademark Trial and Appeal Board; 

  • the incontestable status that a registration can achieve after five years of uncontested use and registration on the Principal Register, which means that the registration will no longer be vulnerable to cancellation attacks founded on priority claims;

  • provides constructive notice throughout the entire U.S. and its territorial possessions, which cuts off the claims of so-called “innocent adopters;”

  • becomes searchable as a public record for the benefit of those doing trademark searches, which helps others to avoid the adoption of confusingly similar marks;

  • the right to record the registration with the U.S. Customs Service for the purpose of blocking the importation of counterfeit goods bearing an infringing mark;  and

  • the right to use the ® symbol in connection with the mark, which signals federal registration and may have a deterrent effect on potential infringers.

 

Trademark registration in foreign countries

The trademark attorneys at the law office of Griggs Bergen LLP in Dallas, Texas also help its clients secure trademark registrations in foreign countries around the world. Foreign trademark registrations are needed when a business has a global brand, or intends to launch a new product in overseas markets.  The firm's trademark lawyers are familiar with multilateral international treaties that sometimes provide a cost-effective method of securing registrations in multiple countries by way of a single application. These include the European Community Trademark (CTM) and the Madrid Protocol.

The European Community Trade Mark (CTM) provides for registration of  trademarks in all of the countries of the European Union (EU) by filing a single application. The countries covered (as of February, 2006) are Austria, Benelux (Belgium, the Netherlands and Luxembourg), Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden and the United Kingdom. The initial registration period is ten years from the date of filing the application.

The trademark lawyers of Griggs Bergen LLP work closely with “foreign associate” trademark firms, and have long standing relationships with an extensive network of legal professionals internationally. The firm’s foreign associates know and understand the needs of U.S. businesses when trademark registration services are required in foreign countries.

Griggs Bergen LLP:  Trademark Registration Lawyers

To maintain a trademark registration, the owner must comply with commercial use requirements and make appropriate and timely filings of statements of use and renewal declarations.  The trademark lawyers at Griggs Bergen LLP monitor trademark portfolios, making sure that filings necessary for maintaining trademark registrations are made on time. They will consult with you when it is time to take action on your trademark registrations and prepare and file the documents necessary for renewal.

Also, the trademark attorneys at Griggs Bergen LLP assist clients in keeping their registrations current, by recording assignments of trademarks, and making sure that ownership is recorded and use declarations are filed in the proper name following any change-of-name, change-of-entity type (for example, from a sole proprietor to a limited partnership, or from a corporation to a limited liability company), merger or acquisition. 

The firm’s trademark lawyers also guide clients on trademark-related commercial considerations such as labeling, packaging and advertising to comply with various government regulations, for example, under the U.S. Federal Food, Drug and Cosmetic Act.

In addition to trademark registration, the lawyers at Griggs Bergen LLP conduct trademark audits and represent trademark owners in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the U.S. Trademark Office.

   

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