US Trademark and Intellectual Property

US trademark registration attorney in Miami Florida

Our US trademark attorney in Miami, Florida USA can assist with protecting your trademark and other intellectual property in the US. Intellectual property protects intangible assets such as inventions, designs and artistic works by granting inventors and creators exclusive rights over their creations.

In the United States, there are three types of intellectual property protections afforded by federal government for trademarks, patents and copyright. In addition, there is a fourth type of intellectual property protected in the United States and that is trade secrets.

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US trademark

A trademark protects a word, name, symbol, brand name or logo that is used in commerce on goods and services and identifies the source of the goods or services. A trademark owner has an property right in the trademark and can prevent others from using a similar mark in commerce to confuse consumers.

A trademark generally lasts as long as the trademark continues to be used and is defended against infringement.

For the most part trademark registration in the United States requires federal registration with the USPTO in order to protect the trademark owner against the unauthorized use of the trademark across the United States.

In order to register a trademark in the United States, a business or individual must file for protection with the United States Patent and Trademark Office (USPTO) and follow all the steps for registration.

However, trademark applicants can also register a trademark for goods or services at the state level as long as you file a trademark application with the specific trademark office in each state the trademark protection is needed.

The important aspect to understand is that a trademark registered at state level only affords protection within that state and does not protect from unauthorized use of the trademark in another state. Each state can vary in the exact protections offered and the specific application process, but in general, most states pattern the benefits of trademarks after the International Trademark Association guidance. 

However, the federal trademark registration with USPTO provides protection of the unique identity of the trademark not only throughout the United States but also across all of its possessions and territories, including Puerto Rico, U.S. Virgin Islands, Guam, American Samoa, and the Commonwealth of the Northern Mariana Islands.

A trademark registration in Florida limits protections to State of Florida’s boundaries. However, if your business primarily deals within the state or region, this level of protection is probably enough. For Florida trademark registration you can contact our trademark attorneys or book a consultation.

If your trademark needs greater protections, you can register a trademark with USPTO at the federal level. Federal registration comes with nationwide protections and the Trademark Trial and Appeal Board (TTAB) where decisions regarding trademark disputes are made.

In order to register a trademark for goods or services used in the United States, trademark applicants, foreign or domestic, must go through a comprehensive application process to register a trademark with the USPTO. 

For the foreign domiciled trademark applicants, registration with USPTO at federal level is essential to protect the trademark especially since foreign domiciled applicants have already used and built a strong trademark abroad before considering the United States.

You can contact our US trademark attorney to assist you with Florida trademark registration and renewals, USPTO trademark registration and renewals or request USPTO trademark registration directly from our website.

Looking for a US Licensed Trademark attorney?

US trademark attorney required for USPTO trademark registration

All foreign trademark applicants must be represented by a U.S. licensed trademark attorney before USPTO for trademark registration, trademark renewal, office actions and other filings.

Starting August 3, 2019, all foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings must be represented by an attorney who is licensed to practice law in the United States.

This requirement applies to all USPTO trademark applicants, registrants, and parties whose permanent legal residence or principal place of business is outside the United States.

If you are a foreign applicant domiciled in a country outside the United States and would like to register a trademark with USPTO, renew your trademark or respond to office actions or appeals you must be represented by a U.S. – licensed attorney. The attorney must be licensed to practice law in the United States. This is also the case if you have filed your trademark application through the World Intellectual Property Organization (WIPO) and you designated the United States under the Madrid Protocol.

The USPTO trademark registration process involves a number of steps which includes determining the type of protection needed, preparing and filing the application and obtaining the registration certificate.

USPTO Trademark Registration

The steps to register a USPTO trademark are:

1. Select the mark you want to protect
2. Select the format of the mark you wish to protect, the precise goods or services to which the trademark will apply, the filing basis
3. Conduct a trademark search
4. Prepare and submit the trademark application with USPTO.
5. Await USPTO review of trademark application
6. Publish the trademark for opposition
7. USPTO trademark certificate of registration

1. Select the mark you want to protect

First, you must determine the protection needed for the mark. Some trademarks are not capable of serving as the basis for a legal claim by the owner seeking to stop others from using a similar mark on related goods or services for various reasons. 

2. Select the format of the mark, the goods and services to which the trademark applies and filing basis.

The filing basis for a specific trademark refers to the legal ground under US trademark law on which you intend to rely when filing your trademark or service mark application with the USPTO.

In general, the filing basis for your application falls into one of four categories: use in commerce basis, intent-to-use basis, foreign registration basis and foreign application basis (also known as foreign priority basis). 

Your US trademark attorney can assist you to determine the filing basis before submitting the application with USPTO.

3. Conduct a trademark search

You should search for similar trademarks in the USPTO database to determine if anyone is already claiming trademark rights in wording/design that is similar and used on related goods/services.

You can also hire a U.S. trademark attorney to conduct a comprehensive trademark search and guide you through the USPTO trademark application process.

4. Prepare and submit the trademark application with USPTO

The next step is to prepare and submit the trademark application with the USPTO. The trademark application can be filed with USPTO via their online application system, the Trademark Electronic Application System (TEAS).

The fees and payment for an initial online filing vary between $250 and $350 for one mark in one class. If you have multiple marks that you would like to register or you want to register a trademark in more than one class of goods or services, you must pay additional USPTO filing fees. Payment is required before the application is approved.

In addition to the USPTO filing fees and payment schedule, if you are using the services of a US-licensed trademark attorney for the trademark search and registration or renewal, you are responsible to pay your trademark attorney’s fees.

To find out more about the trademark filing fees and payment schedule, please visit trademark fee information.

5. Await USPTO review of trademark application

After the trademark application is filed, the USPTO determines if you have met the minimum filing requirements, assigns an application serial number, and the application is forwarded to an examining attorney. The trademark is listed in the Trademark Principal Register while pending USPTO review.

This process can take approximately 6 months but you can visit USPTO for current trademark processing times. After, the trademark application is assigned to a USPTO examining attorney who will evaluate it.

After review, the examining attorney will determine if the trademark application meets all applicable legal requirements. You should periodically monitor the progress of your trademark application through the Trademark Status and Document Retrieval (TSDR) system. It is important to check trademark application status every 3-4 months after the initial filing of the application not to miss a filing deadline.

You can check the status of your trademark registration with your US serial, registration or reference number. Visit check status for more information.

If an official objection or rejection is raised to your trademark registration by the examining attorney, then the examining attorney issues you an Office Action. The USPTO Office Action is a letter explaining you any substantive reasons for refusal, and any technical or procedural deficiencies in the trademark application. 

If the examining attorney sends you an Office Action, then you or your attorney must submit a response to the Office Action within 6 months of the issue date of the Office Action or the application will be declared abandoned.

6. Publish the trademark for opposition

If the USPTO examining attorney raises no objection to registration of your trademark or if you overcome all the objections in the Office Action, then the trademark is approved for publication and is scheduled for publication for opposition in the Official Gazette.

After the trademark is published in the Trademark Official Gazette (TMOG), any party who believes it will be damaged by the registration of the mark can file a notice of opposition (or extension of time) with the Trademark Trial and Appeal Board within 30 days after the publication date.

If no one is opposing the trademark registration and files an opposition or extension request within the 30-days period, then trademark is approved for registration.

In the case of an international applications for trademark initially filed through the Madrid Protocol – the Madrid International Trademark System, if no party files an opposition during the publication period, then USPTO certifies the application after the expiration of the 30-day period and sends it back to the IB to be examined for completeness. 

7. USPTO trademark certificate of registration

Finally, about 11 weeks after the publication date, the USPTO registers the trademark and issues a certificate of registration for the trademark. 

After the trademark is registered, you as the trademark owner are responsible for enforcing your rights and policing the use of your trademark. Even more, it is important to understand that a United States trademark does not afford protection in another country and in order to seek protection in other countries you must apply for a trademark in each of the other countries. 

Contact us, your experienced US trademark attorney in Miami, Florida USA to assist you with your US trademark application and US trademark registration before USPTO. 

Patent

A patent protects an invention and grants a property right to the inventor

In the United States, a business or individual (patent owner) can file for patent protection with USPTO. Patents allow their owner to determine who can make, use, or sell an invention. The USPTO issues a new patent for a 20-year term from the date on which the application for the patent was filed with USPTO, or in special cases, from the date an earlier related application was filed. The patent protection extends only within the United States and its territories.

Patent attorneys must be registered to practice in patent matters before USPTO.  

Copyright

A copyright protects original works of authorship 

A copyright protects “original works of authorship” including literary, artistic, musical dramatic, and other intellectual works, both published and unpublished. The protection runs from the time the works are created in a fixed form.

Copyrights provide their owner with the ability to determine who can reproduce or distribute a work, publicly perform and display a work, or prepare derivative works. It is not required to register a copyright in order for the work to be protected.

However, registering the copyright provides benefits, including a public record of the copyright claim, evidence of the validity of the copyright, and the possible recovery of damages and costs in successful copyright infringement litigation. Generally, the term of a copyright is the life of the author plus 70 years after the author’s death.

An application to register a copyright in the United States can be submitted online to the U.S. Copyright Office. To register your work with U.S. Copyright office contact our attorneys or book a consultation.

Trade secrets

Trade secret protection is a complement to patent protection

Trade secrets refer to ownership of information that gives the business a competitive edge over its competitors and can include a formula, method, devise, program, technique, process, compilation or others.

Trade secrets are not as popular as trademarks, patents, and copyrights, but the United States provides trade secret protection as a member of the World Trade Organization (WTO) and a signatory party to the Agreement on Trade Related Aspects of Intellectual-Property Rights (TRIPS). In addition, the United States provides a federal civil cause of action for disputes involving trade secrets under the Defend Trade Secrets Act of 2016.

Trade secrets are further protected at state level and while state laws differ, all U.S. states have adopted a form of the Uniform Trade Secrets Act.

In order to protect trade secrets, courts can enjoin misappropriation of trade secrets, order parties to maintain secrecy of trade secrets, order payment of royalties to the owner, and award damages, court costs and reasonable attorneys’ fees.

Malescu Law assists with US trademark & copyright registration

Our trademark registration lawyers in Miami, Florida assist with preparing, filing and registering trademarks and copyrights before the U.S. Patent and Trademark Office and U.S. Copyright Office. In addition, we prepare and conduct preliminary trademark searches, risk assessment and trademark registration opinions. We protect the brand globally through applications based under the Madrid Protocol.

Contact our experienced Miami, Florida US trademark attorney for trademark registration services with USPTO. We represent foreign domicile and domestic applicants before the USPTO. Contact us below, your US licensed trademark attorney in Miami, Florida, USA to register your trademark in the United States.  

Malescu Law P.A. – Trademark Lawyers