Trademark Prosecution 2017-05-18T18:53:10+00:00

TUCKER IP TRADEMARK LAWYER

Trademark law provides the exclusive right to use a mark in commerce.  Trademark lawyer Matthew Sean Tucker prepares and files both federal and state trademark applications for Firm clients.  The Tucker IP in many situations advises clients on the the appropriate course of action for marking each product or service offered in the marketplace. Furthermore, after your company has chosen a mark, trademark attorney Matthew Sean Tucker will work with you to clearly and precisely associate your trademark to your products as used in the marketplace.

Although not required, most individuals hire a a trademark lawyer to pursue trademark rights because of the complex nature of the trademark laws. Merely obtaining a trademark registration is not sufficient to determine whether the trademark was properly filed and maintained, and thereby enforceable. Therefore, Trademark lawyer Matthew Sean Tucker recommends that you hire a trademark lawyer to prepare and file your trademark application, which can help reduce falling victim to the common pitfalls associated with self filing trademark applications. In many cases, individuals who file and maintain the trademark registration themselves will not learn of the mistake until it is too late, which can result in significant legal bills to correct the error. For a free consultation with a trademark lawyer, please click here.

Tucker IP also enforces trademark rights for Firm clients.  Trademark lawyer Matthew Sean Tucker is also experienced in trademark litigation.  Additionally, trademark lawyer Matthew Sean Tucker has encountered many unique areas of trademark law including trademark litigation over the color of a product.  To learn more about the Firm’s litigation practice, please click here.

TRADEMARK PACKAGES:

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GET TRADEMARKED™ Registration Package. Tucker IP offers a fantastic cost effective five step registration package. Click here to learn more.

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INDIVIDUAL TRADEMARK SERVICES:

Trademark Searches. A trademark search is essential before using a mark in commerce. The trademark search will allow you to weigh the risk associated with using a particular business name, slogan, or other symbol in commerce.  A trademark search helps to reduce the likelihood of costly trademark. Click here to learn more.

Trademark Registrations. Tucker IP will draft and file your trademark registrations. In addition, the Firm is knowledgeable in the nuances of trademark law and the trademark registration process, which will help you to avoid the common mistakes made by companies.

Trademark Office Action Responses. It is essential to respond to Office Actions, or your rights in the trademark will go abandoned. In addition, any statements that you make to the Trademark Office creates a permanent public record that can be used against you later when enforcing your trademark. Let Tucker IP respond to your Office Action to avoid making costly errors. In addition, the Firm will advise you of your legal rights and options.

Trademark Renewals. After your trademark is registered, you must renew your trademark at specified intervals to maintain your registration. Let Tucker IP keep track of your critical renewal dates and file the periodic renewals.

Trademark Monitoring. You have an affirmative duty to protect against the unauthorized use of your mark. Failure to monitor for trademark infringement could result in the loss of your legal rights. Tucker IP will monitor your mark and provide quarterly reports detailing any potential infringement.

Trademark Oppositions and Cancellations. In some instances, somebody may have filed an opposition or cancellation of your trademark. In other instances, you wish to oppose or cancel another’s trademarks. In both cases, Tucker IP has you covered. Contact Tucker IP today to learn more.

Trademark Litigation. Tucker IP maintains a complete civil litigation practice, which allows us to litigate trademark cases. In many instances, trademark infringement claims also include patents, copyrights, unfair competition, and other claims. Contact Tucker IP today and let us review your case.

WHAT IS A TRADEMARK

The very first question you may have is “what is a trademark?”  A trademark is a word, phrase, logo, or other symbol that identifies the source of goods or services.  Trademark rights are created when use of a trademark begins.  Trademark law determines who wins a dispute over the use of the name.  The loser of the dispute may be required to pay damages and cease using the infringing mark.

In order to receive a registered trademark, you must file a trademark application.  A trademark will only be available if the mark is distinctive.  There are five categories of distinctiveness.  Starting from the most distinctive to least distinctive, the categories include: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; and (5) generic. The Court considers the first three categories to be inherently distinctive and are entitled to trademark protection, whereas the latter two categories are not available for trademark protection.

Fanciful Trademarks

Fanciful marks are the most distinctive category of marks invented for the sole purpose as functioning as a trademark.  These marks have no other meaning outside of their use as a trademark.  Fanciful marks receive the strongest level of protection.  KODAK®, EXXON®, and XEROX® are examples of fanciful marks.  However, it is important to remain diligent against trademark infringers to avoid dilution of your trademark.  For example, a competitor’s use of your fanciful trademark may dissociate your mark with your business.  In which case, your fanciful trademark could become a generic term resulting in the loss of trademark protection.

Arbitrary

Arbitrary marks utilize a common word in an unfamiliar way.  For example, APPLE® is considered an arbitrary mark because the word “apple” has no other particular connection to computers.  However, if the word “apple” was used for a company selling apples, it would be considered generic.  In which case the term “apple” would not be available for trademark protection.  Accordingly, whether a word qualifies as an arbitrary mark relates to the context for which the word is used.  Tucker IP Law can help you determine whether your mark is considered arbitrary in its particular context.

Suggestive

Suggestive marks hint or suggest some idea of the product.  Suggestive marks are the most common types of marks due to their inherent marketing advantage.  For example, CITIBANK® for banking services, CHICKEN OF THE SEA® for tuna fish, and COPPERTONE® for tanning lotion.

Descriptive

Descriptive marks are not inherently distinctive and cannot initially be protected.  However, marks that are descriptive may acquire a secondary meaning and be available for trademark protection.  Secondary meaning requires that consumers instantly identify the mark to a brand or other source.  However, even if these marks later acquire secondary meaning, they remain a weak mark and do not receive as broad legal protection as fanciful, arbitrary, and suggestive marks.  Therefore, descriptive marks are typically not preferred and should be avoided whenever possible.

Generic

Generic marks are formed from common ordinary names associated with products or services.  Generic marks are not available for trademark protection because they do not distinguish the mark against competing products or services.  For example, SUPER GLUE for identifying an adhesive, CAR WASH for identifying a car wash service, and TRIPOD for holding a camera, are considered generic because they merely include a common and ordinary name associated with a product or service.  Strong trademarks, including fanciful terms, can become generic when the term becomes diluted over time.  For instance, a mark may become diluted to the point that the mark no longer identifies the source of the goods and services.  For example, “Escalator” was originally fanciful, but has since held to have become generic because the owner of the trademark failed to enforce their trademark rights against others.  Tucker IP can guide you on the steps that your business can take to avoid diluting the rights you may have in your trademark.

Trademark Searches

A trademark lawyer should conduct a trademark search for all state and federally registered trademarks. All too often, individuals and companies forgo a trademark search and invest significant amounts of capital in the production and advertisement of products.  Shortly after entering the market, they receive a cease and desist letter from another company informing them that they must cease selling their products due that other company’s trademark registration. The individuals and companies are then left with the expensive decision of whether to fight a an expensive trademark lawsuit or re-brand their products. This may require destruction of large quantities of products.

Additionally, when you use another companies federally registered trademark in commerce, even by mistake, a court will assume that you knew a mark was federally registered.  In those instances, the court will find you to be a willful infringer and assert treble damages in the amount of three times (3x) the actual damages caused, as well as lawyer fees. A trademark search performed by a trademark lawyer can help you avoid such a costly penalty.

Trademark Attorney serving all of Broward County, Miami-Dade County, and Palm Beach County, encompassing Coconut CreekCooper CityCoral SpringsDania BeachDavieDeerfield BeachFort LauderdaleHallandale BeachHillsboro BeachHollywoodLauderhillLauderdale LakesLauderdale By The SeaLighthouse PointMargateMiramarNorth LauderdaleOakland ParkParklandPembroke ParkPembroke PinesPlantationPompano BeachSouthwest RanchesSunriseTamaracWest ParkWestonWilton Manors, Aventura, Bal Harbour, Bay Habor Islands, Coral Gables, Hialeah, Hialeah Gardens, Homestead, Key Biscayne, Miami, Miami Beach, North Miami, North Miami Beach, Pinecrest, Surfside, Boca Raton, Boynton Beach, Delray Beach, Greenacres, Highland Beach, Hypoluxo, Juno Beach, Jupiter, Lake Park, Lake Worth, Lantana, Ocean Ridge, Palm Beach, Palm Beach Gardens, Royal Palm Beach,, Wellington, and West Palm Beach.

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