Connecticut Trademark Lawyer Blog

For Connecticut companies, filing a trademark application with the United States Patent and Trademark Office is the first step in protecting a company's valuable Connecticut trademarks and brand names.

In the United States, the trademark application is usually filed on one of two bases: (1) use in commerce or (2) intent-to use (ITU). For companies that have not yet used the trademark, an ITU application allows marketing and creative departments to file for a trademark registration during the product development process. This important feature of United States trademark law permits companies to obtain an important priority filing date and preserve whatever rights they may later obtain through use.

Regardless of the filing basis, every trademark application is first assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements. Upon review, the Examiner has the right to initially refuse the application on various legal and factual grounds. If the trademark examiner finds inadequacies in the application, she will issue an office action that details the reasons for the initial refusal of registration or request for additional, corrective information. Such grounds for refusal may include the following:

- a likelihood of confusion with a previously registered trademark
- the applied for mark is merely descriptive of the products;
- the applied for mark is primarily, merely a surname;

and/or several other factual and legal grounds as to why registration should not issue

If your trademark application has been initially refused registration, it is recommended that you hire an experienced Connecticut trademark attorney to prepare a response to the Office Action. Please call me for a free consultation at (203) 244-4264.

Think registering a trademark is a fast and simple? Think again!

According to the United States Patent and Trademark Office, the trademark registration process consists of 17 distinct steps prior to a trademark application being approved for registration and a certificate of trademark registration issuing. Despite this fact, many "trademark companies" (non-lawyers) and trademark lawyers alike would have potential clients believe that it is relatively easy to obtain a United States trademark registration.

Here are some of the trademark registration steps as described by the USPTO:

- identify your trademark format
- identify the goods and/or services for which you seek protection
- search the USPTO database for identical trademarks
- identify the proper basis for filing
- prepare and file the trademark application
- await results of review of the application by the U.S. Trademark Office

Once the U.S. Trademark Office examines the application, it is possible that it will initially refuse the registration based on one of several procedural or substantive grounds. Knowing U.S. trademark law could be the difference between successfully overcoming the refusal to register and having your trademark registration refused.

The complexity of the trademark registration process is one of several reasons why It is important to speak with a qualified Connecticut trademark attorney prior to adopting a trademark for use with your products and services. By doing so, a Connecticut business can save time and money, and avoid risks to its business due to ignorance of trademark laws.

To the casual business owner, it would seem that registering a trademark in Connecticut for a new product or service is simple. Nothing could be further than the truth.

Many companies do not know how to properly clear a trademark for use and registration in association with their products. The failure to do so can result in major risks to the business, including claims of trademark infringement and resulting monetary damages. Here are two important rules to remember:

Rule #1: A Business Name Search is Not a Trademark Search

A Connecticut business name search is not the same as a trademark availability search. If I have a business that I want to call "Pepsee, Inc." for beverages, chances are that the name would be available for a business name registration if there is not an identical "hit" on the search results. If I think that this pleasant fact now entitles me to operate a beverage company called "Pepsee," perhaps I should think again. Therefore, secretary of state business name searches, while a good place to start, are of very little value.

Rule #2. Always Rely on the Opinion of a Qualified Connecticut Trademark Attorney

The failure to have a Connecticut trademark attorney conduct a full trademark search of the United States Patent and Trademark Office records, state trademark office records, and common law listings prior to filing a trademark application is one of the most common mistakes that Connecticut business owners make. While understandable, it is important to learn this valuable lesson to avoid unpleasant legal consequences.

Remember, trademark law is a specialized area that requires skill and knowledge. If your brand name is important to you, then make a small investment in a trademark lawyer to make sure that you get it right the first time.