How Trademarks are Challenged, and How a Miami, Florida Trademark Lawyer Can Help? What could be the potential reason for the trademark clash? Either the opposition might have missed a beat in the research part or the motive is to directly copy you. Every year, lakhs of trademark registration applications are received by the USPTO. In 2022, they received 753,926 applications and in 2023, it was about 737,018. (source) With such an increased rate of registrations, the probability of trademark conflicts is undeniably higher. In this blog, we’ll discuss the laws that govern trademark registration and protection, the role of a trademark lawyer in Miami, Florida, and how a trademark can be challenged.
What Legal Framework Does Trademark Follow? A trademark lawyer in Miami, Florida, assists in preparing and filing a trademark with the United States Patent and Trademark Office (USPTO). They help businesses protect their brand identity and intellectual property through legal procedures and formalities set forth by the governing bodies. In the US, the trademark law is primarily governed by the Lanham Act, which provides a national system for trademark registration and protection with USPTO. Registered trademarks receive a higher level of protection as compared to the unregistered ones. However, both registered and unregistered marks are protected under the Lanham Act.
Unregistered trademarks are protected under common law through the tort of “passing off,” which prevents a business from misrepresenting their goods or services as those of another. Common law trademark rights are acquired automatically without formal registration with USPTO when trademarks are used in commerce within a specific geographical area. To establish a violation under Lanham Act, the plantiff must demonstrate that they have a legally protectable mark and that the defendant's use of the mark can potentially cause brand confusion.
The Lanham Act provides for trademark assignment under Section 10, stating that; “A registered mark or a mark for which an application to register has been filed shall be assignable with the goodwill of the business in which the mark is used.” (source)
A trademark registration is valid for 10 years and can be renewed for an additional 10 years. To claim that the mark is now incontestable, a Section 15 declaration must be filled once the mark has been continuous use in commerce for a period of 5 years after the date of registration. (source)
Lanham Act, codified as Title 15 of the United States Code, contains 45 sections. Each section provides inclusive guidelines for registering and protecting trademarks. It is not mandatory for businesses domiciled in the US or its territories to have a trademark lawyer in Miami, Florida.\ However, it is strongly recommended for those seeking trademark registration. (source)
Trademark Registration and Protection
Trademark Searches For new registrations, it is important to ensure the distinctiveness of your mark. To do this, trademark lawyers in Miami, Florida, utilize databases such as USPTO and state trademark registries to identify registered and pending trademarks, as well as similar marks in use.
Application To register a trademark with the U.S. Patent and Trademark Office (USPTO), you will need to fill out and submit a trademark application. You can do this online, through the USPTO Trademark Center, an online trademark filing service, a trademark lawyer in Miami, Florida, or by submitting a paper application.
Prosecution Trademark prosecution is the process where a trademark lawyer in Miami, Florida, works with trademark office officials to complete the necessary steps for registering a trademark. This process can happen before or after a trademark is registered and can be done both within the country and internationally.
Infringement They send cease-and-desist letters to the infringing party to stop unauthorized use. If necessary, they represent clients in court to enforce trademark rights. Attorneys also assist in negotiating settlements or licensing agreements to resolve disputes.
How a Trademark is Challenged? New trademark registrations are published by the USPTO in the Trademark Official Gazette (TMOG). This publication serves as a public notice for a 30-day period during which anyone who might feel they might be harmed by the registration of a trademark can file a “notice of opposition." The notice of opposition is a formal legal proceeding before the Trademark Trial and Appeal Board (TTAB) where an opposing party can argue that the registration should not be granted, typically with the assistance of a trademark lawyer in Miami, Florida. If no opposition is filed within a 30-day period, the trademark can proceed to the next level of registration process. If the opposition is filled, the case is heard by the TTAB, and the outcome will determine whether the trademark will be registered or not. You might be wondering: Is it possible to take an unofficial way to settle the conflict once a notice for opposition has been received by the TTAB? The answer is yes! While the TTAB typically handles formal proceedings, it encourages settlement discussions and offers alternative dispute resolution options. Here's how it works:
Parties can engage in direct negotiations to reach a mutually agreeable settlement without the need for formal hearings or a decision from the TTAB.
The TTAB offers a voluntary mediation program where a neutral mediator helps facilitate a settlement between the parties.
If the parties reach an agreement through negotiation or mediation, they can submit a stipulation of dismissal or a consent agreement to the TTAB, which may lead to the case being concluded without a formal ruling.
Conclusion According to the USPO regulations, an attorney who is an active member in the good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO. Non-US licensed attorneys do not meet this criteria and cannot represent you in a trademark matter. This is why it is important to make sure you hire an eligible trademark lawyer in Miami, Florida. Consider taking assistance or hiring from Miami Patents as they fulfill all the standards set forth by the governing bodies. Visit their website to explore their services.
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