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Trademark & Copyright

Unsure of where to start on your trademark application journey? Questioning whether you should trademark your brand name, logo, or even a phrase? Baroody Law will take time to learn about your brand and hear about your goals. We will advise you on the best route to provide maximum brand protection and security for the long-run.

Search & Registration

Common Law Search

A comprehensive Common Law Search involves utilizing numerous sources to see if a potential conflict can be found that would provide another brand priority over your proposed trademark that could eventually lead to trademark opposition or trademark cancellation.

Knockout Search

A USPTO Trademark Knockout Search has the mission of reviewing the USPTO Trademark database to determine if there are any obvious conflicts to the exact match of the proposed mark, conflicts to similar sounding marks, marks in a foreign language with the same translation, and conflicts to visually similar marks. Utilizing the Dupont Factors, which are used in the examination of trademarks by the USPTO, the goal is to give clients a good idea as to whether there will be issues by continuing with the chosen brand name or logo registration.

Due Diligence

Every client registering a trademark through Baroody Law receives a thorough trademark search as apart of the flat rate service provided. Trademark searches are not gimmicks, they are a matter of due diligence. This is why it is the firm's strategy to ensure everyone has a good idea of the benefits and risks before proceeding forward to trademark registration.

Trademark Classifications

Prior to submitting your USPTO trademark registration, a determination will be made as to the appropriate international classification of your goods or service. A trademark class is the specific category telling the USPTO how your trademark is being used and protected. To make the appropriate determination, it is imperative that Baroody Law understands your good or service at a high level. In some instances, to obtain the appropriate classification, a decision will be made to go for a Teas Standard application rather than Teas Plus.

Use in Commerce

During the trademark application process you will also be asked to furnish evidence of how your trademark is being used in commerce. If you state that your trademark is not being used yet, then the trademark application will be filed with intent to use 1(b). However, if you provide appropriate evidence in combination with Baroody Law's own internal investigation and searching to collect evidence of use, a 1(a) application will be filed. The advantage of using the trademark in commerce is your common law priority date is sooner, the process will not result in a notice of allowances to file an allegation of use, and ultimately, you can have your trademark registered faster.

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Trademark Refusals

Non-Substantive Trademark Refusal

A Non-Substantive Trademark Refusal may occur because a disclaimer was not initially stated in the application but is now alleged to be needed, an individual's name was trademarked without having the appropriate documentation provided, a substitute specimen is needed, the entity of the owner needs to be clarified, or perhaps the good or service needs to be better defined. These reasons are often relatively straightforward for a trademark lawyer to overcome.

Substantive Trademark Refusal

If you received a USPTO notice of non-final office action letter with a refusal for reasons such as prior filed application having priority, likelihood of confusion, merely descriptive, geographically deceptively misdescriptive, or a failure to function as a trademark, you have a substantive refusal. It is not impossible to overcome a substantive refusal. However, without the assistance of a trademark attorney, this task can be even more difficult. In some instances, it may even be cheaper for you to rebrand rather than proceed with a response to office action argument as to why the USPTO trademark examiner was incorrect in their non-final refusal findings. This is a discussion Baroody Law can have with you during an initial consult.

Response to Office Action

When you hire Baroody Law to conduct your initial trademark application and filing, a response to office action letter will be provided free of charge to non-substantive responses. Substantive refusals incur a similar fee for any client, regardless of whether or not they are existing or new. These refusals take time to conduct research and to create a valid argument (if an argument for overcoming a substantive refusal exists). Baroody Law can respond to the office action for you and monitor the status to determine if the response receives favorable, subsequent action or not. However, each case is different and must be evaluated accordingly to determine the best options for each individual's given situation.

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Maintenance & Enforcement

Allegation of Use

If your trademark application was filed with a 1(b) intent to use status, you will be issued a notice of allowances and be required to provide an allegation of use within six months after the date listed in the notice. Baroody Law can help you with the allegation of use and in ensuring the specimens submitted with the allegation of use to prove use in commerce are appropriate to meet USPTO specifications.

Section 8 Declaration & Section 9 Renewal

A Section 8 Declaration of Use must be filed between the 5th and 6th year of your trademark registration. If you do not file the declaration and you miss the grace period extended for six months with an additional USPTO filing fee, your trademark registration will be cancelled. The same is true for failure to renew under Section 9 and filing the combined Section 8 and Section 9 forms between the 9th and 10th year of registration. Baroody Law can help make sure the appropriate maintenance documents are completed so that your trademark registration stays active.

Trademark Enforcement

While trademark cease and desist letters are often at the top of clients' minds when enforcing their rights under a trademark registration, it is also important to consider the possibility of filing a trademark opposition or trademark cancellation with the Trademark Trial and Appeal Board. If someone is registering a similar trademark or has received registration for a similar trademark or a trademark that may result in the dilution of your brand, this may be a great remedy. Baroody Law can discuss available options if you believe trademark infringement is currently occurring.

Customs & Amazon Registry

In the event you also want to ensure infringing products do not enter the US, Baroody Law will assist with the US Customs Registration process and will help if enforcement is needed. Additionally, guiding clients through the Amazon brand registry process is another way to eliminate infringing and diluting trademarks to an existing trademark registration.

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International Trade

Infringing Imports

From issues with importing goods to unfair trade practices, Baroody Law can help. We can assists with trademark and copyright issues, including protecting trademarks and copyrights from infringing imports by filing a complaint with the International Trade Commission.

Exclusion Orders

Baroody Law can help with appealing to the Court of International Trade for a denied protest by U.S. Customs related to an exclusion order.

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Schedule a free consultation to discuss how Baroody Law can assist you

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