trademark now franchise later

Trademark Services

trademark now franchise later

As a business owner, safeguarding your brand is crucial to your company’s success. Registration, management, and maintenance of your trademark are essential steps to keep your business competitive and secure. We offer a comprehensive range of trademark services to ensure peace of mind and security in your operations.
By utilizing these trademark services, you can guarantee the security and success of your brand, giving you a competitive edge in the marketplace.

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Table of Contents

TRADEMARK REGISTRATION
TRADEMARK DISPUTE
TRADEMARK PROTECTION
FREQUENTLY ASKED QUESTIONS

Trademark Searches

Trademark searches are strongly recommended and help entrepreneurs and small and medium-sized enterprises (SMEs) determine if it makes sense to launch a brand for use with a specific product or service line. There are only benefits to having a trademark search conducted. Trademark rights are territorial. Understanding the risks associated with the use of a word, slogan, or design with a specific good or service allows entrepreneurs and small and medium-sized enterprises (SMEs) to continue with their advertising and marketing campaigns or to pivot and transition towards the use of a new word, slogan, or design that does not have a potential lawsuit tied to its use and promotion in United States commerce. Be sure to schedule a consultation with our experienced trademark attorneys to determine how best to protect your brand and trademark portfolio.

Trademark Application Preparation

Our attorneys have over thirty-five years combined experience preparing and submitting trademark applications with the United States Patent and Trademark Office. The strength of a proposed trademark or service mark is dependent upon the word, slogan, or design chosen. Trademark owners must understand the importance of creating a strong trademark or service mark. Failing to understand the elements that make up a strong trademark can result in unnecessary attacks on your trademark applications and registrations. The right time to prepare and submit your trademark application is always before you have invested time and money into advertising and marketing a word, slogan, or design with a specific good or service line. You can take steps to correct your failure to protect and register your trademark by having an experienced trademark attorney prepare and submit your trademark application. The United States has different trademark filing bases. The most used bases are
explained below.

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USPTO

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Intent to Use Filing Basis:

It takes time to source products, locate reliable manufacturers, and for you to create a business and marketing plan that supports your product or service launch. The United States rewards entrepreneurs and small and medium-sized enterprises (SMEs) by allowing the submission of trademark applications that do not have proof of commercialization of the identified product or service line. If you have not yet launched your product or service line, you are still able to submit a trademark application. The filing date of your trademark application gives you a priority date that is applied against other trademark applicants who wish to apply and eventually register an identical or similar trademark intended to be used with goods or services that compete with your proposed product or service line. Be sure to schedule a consultation with our experienced trademark attorneys to determine how best to protect your brand and trademark portfolio.

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In Use Filing Basis:

The in-use filing basis is selected when you have been using a word, slogan, or design with a product or service line in the United States. It is not uncommon for a company to be stopped from registering a word, slogan, or design because another entrepreneur, small and medium-sized enterprises (SMEs), or fortune 500 company registered an identical or similar trademark. For example, Company A has been manufacturing oil lubricants for a five-year period and Company A’s product packaging shows use of a specific word, slogan, and or design. Company A has been selling across state lines but is just now taking steps to create an e-commerce website to take more control over the sale of its most successful product. Although late, Company A files a trademark application to protect and register its trademark with the United States Patent and Trademark Office. Company A is found unable to register its trademark because of an earlier filed trademark application or because an identical or confusingly similar mark is already registered. Whether you have been selling or advertising your goods/services for a week or a five-year period, be sure to schedule a consultation with our experienced trademark attorneys to determine how best to protect your brand and trademark portfolio. Best practice: file your trademark application(s) early.

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Foreign Filing Basis:

Entrepreneurs, small and medium-sized enterprises (SMEs), and fortune 500 companies are also able to seek trademark protection by asserting their ownership of a foreign trademark application under Section 44(d) or foreign trademark registration under Section 44(e). Schedule a consultation with our experienced trademark attorneys to determine if it makes sense to reference your foreign trademark registration or foreign trademark application in your soon to be filed United States trademark application.

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WIPO

Madrid Protocol Applications:

The United States is a member country of the Madrid System which allows the expansion of your trademark portfolio through the filing of a Madrid Protocol Application. Madrid Protocol Applications allow you to select several countries of interest upon filing, the limitation being that the country selected must be a member country. Each country has different examination guidelines and fees. Nevertheless, the Madrid System is a centralized system that makes it easier to monitor your trademark registration efforts on a global scale. Trademarks are territorial. Absent your filing, using, and registering your trademark where you commercialize, advertise, and sell your goods and services, you leave your trademarks subject to use and even registration by unaffiliated and unauthorized third parties around the world. There are up to 130 member countries that participate in the Madrid System.
If a country of interest is not a member country, trademark owners are able to protect their brands in nonmember countries by registering their trademarks with the nonmember countries trademark office.
If you are interested in protecting your trademarks outside the United States, be sure to schedule a consultation with our experienced trademark attorneys to determine how to protect your trademark portfolio.

Trademark Services
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Trademark Office Actions

After you have filed a trademark application, it will be assigned to a trademark examining attorney. Your application will be reviewed in due course and the trademark examining attorney will decide to allow your application to proceed to publication or he/she will issue a trademark office action. Trademark Office Actions issue when there are issues raised that need to be addressed before the trademark examining attorney can allow your application to proceed to publication. Office actions can raise a variety of issues, some that can be resolved by a phone call, and others that require the preparation of legal arguments. It is imperative that you work with an experienced trademark attorney so that you can minimize refusals and successfully navigate the trademark application process.

Statement of Use Filings

The United States Patent and Trademark Office issues trademark registrations once the products and or services listed in your trademark applications(s) are sold and advertised under the applied for trademark in the United States. Use outside of the United States of a word, logo or slogan does not result in the issuance of a trademark registration subject to a few minor exceptions, like the successful filing of Madrid Protocol designating the United States. There are over 45 classes, or categories that cover all goods and services that can be protected in the United States. Proof that you are selling the goods listed in your trademark application could include a photograph of the identified product line bearing the mark; (2) the product packaging, tag or label for the goods showing use of the mark; or (3) a point of-sale display showing the mark directly associated with the items listed in your trademark application. If you sell your product online, your website or a third-party re-seller website could meet the use requirements if there is an add to basket feature that allows consumers to purchase product online. The website you rely upon must show the mark in association with a picture or textual description of the goods listed in your application.

Proof for services show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. Be sure to schedule a consultation with our experienced trademark attorneys to determine what proof is needed to meet the statement of use filing requirements for the goods and or services listed in your trademark application.

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Trademark Change of Ownership

Things happen. If you recently applied for a trademark and or have active trademark registrations and need to sell or transfer your trademark portfolio, it is important to have the sale and or transfer memorialized in a writing and then recorded with the United States Assignments Recordation Branch (ARB). There are many reasons why trademark owners may need to transfer ownership or change the name on their application or registration. Be sure to schedule a consultation with our experienced trademark attorneys to determine what kind of trademark assignment document needs to be prepared.

Trademark Licensing

Trademark owners can give others the right and opportunity to license their valuable intellectual property through trademark license agreements. Trademark owners need to control and monitor how licensees use their intellectual property. The reputation and quality of your products and services are tied to your trademark. If you are interested in licensing your trademark to another company or individual, or you yourself are interested in obtaining a license to use someone else’s trademark, our team has prepared and negotiated the terms of numerous trademark licensing agreements domestically and abroad. Be sure to schedule a consultation with our experienced trademark attorneys to discuss the pros and cons of entering into a licensing agreement with another entrepreneur, small and midsize entity (SME), or fortune 500 company.

Trademark Litigation

Your work is not done once you are granted your federal trademark registration certificate from the United States Patent and Trademark Office. It is now your responsibility to monitor activity by third parties and ensure that no individual or company is infringing upon your federally registered trademark. If you suspect someone is using your trademark with similar or identical products or services, the time it takes for you to challenge their usage can be used against you. You should take immediate steps to shut down unauthorized uses to ensure that consumers are not confused into believing that you sponsor or endorse the activity engaged in by that individual or company’s activities.

trademark now franchise later

On the flip side, if you find yourself being accused of infringing upon another company or individual’s trademark, the steps that follow your receipt of a demand letter can make or break your defense. We have experience representing both Plaintiffs and Defendants in trademark proceedings before state and federal courts. Our attorneys can assess the strengths and weaknesses of your position to determine the extent of your liability if any and will act in the best interests of you, your company, and your family.
Litigation can be stressful, and we make a point to explain the time and commitment required of you in bringing or defending a trademark infringement lawsuit. Schedule a consultation with our experienced trademark litigators today.

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At Alcoba Law we have “Trademark Now Franchise Later”, a program for Entrepreneurs that will allow you to receive the support you need.

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Trademark Services

TTAB

Trademark Opposition Proceedings

Trademark owners file opposition proceedings with the United States Trademark and Appeal Board when they see words, slogans, and or designs that they believe damage or harm their registered and or soon to be registered trademark rights. Opposition proceedings are usually filed during the thirty-day
publication period once a trademark application filed by another is published in the Official Gazette.
Trademark owners can request an extension of time to oppose a pending trademark application. Extensions are typically filed when more time is needed to evaluate the use by the third party or when the trademark owner believes they can amicably resolve the matter before launching a full blown trademark opposition proceeding against the trademark applicant.
Our team is equipped to bring and defend trademark opposition proceedings. The initiation and defense of a trademark opposition proceeding requires at a minimum, an analysis of the strength of the marks, identifying the dates the marks were used in commerce; and a comparison of the goods and or services
advertised and promoted by the marks at issue. Each trademark case is different. Schedule a consultation with our experienced trademark attorneys today if you believe your trademark will be harmed by another’s pending trademark application or if you find yourself listed as a defendant in a trademark opposition proceeding.

Trademark Cancellation Proceedings

Trademark Cancellation proceedings are filed when a challenger, typically a trademark owner of a registered or pending trademark application, was not able to object and file a trademark opposition proceeding against another individual or company’s trademark application. The time to file the trademark opposition proceeding is limited to a thirty-day period triggered by the Notice of Publication issued by the United States Patent and Trademark Office. There are a variety of reasons why you as a trademark owner may not have been able to file a trademark opposition proceeding. A common reason is that the trademark owner was not even aware that another individual or company had filed a federal trademark application. Unlike trademark opposition proceedings which can only be filed during the publication stage of a pending trademark application, trademark cancellation proceedings may be filed at any time. “Any person who believes that he would be damaged by the registration of a mark” may, upon payment of the prescribed fee, file a petition to cancel the registration, but the petition to cancel may only be filed after the application filed matures into a federal registration. Schedule a consultation with our experienced trademark attorneys if you believe your trademark rights will be harmed by the continued registration of a registered trademark or if you find yourself listed as a defendant in a trademark cancellation proceeding.

Trademark Reexamination Proceedings

Trademark owners may request the cancellation of some or all goods or services in a registration when there are reasons to believe that the trademark that registered was not used in the United States with the goods or services on or before a particular relevant date. Reexamination proceedings must be filed within the first five years after registration. Any goods or services that are cancelled because of these proceedings will no longer be covered by the trademark registration. A common reason you may be interested in filing a reexamination proceeding is because your own application is being prevented from proceeding to the next step in the examination process because that registered trademark is identified as confusingly similar to your own trademark application. By eliminating those goods or services in the registered trademark that were never commercialized, you may be able to overcome the alleged likelihood of confusion raised by your assigned examining attorney. Schedule a consultation with our experienced trademark attorneys now if you are interested in filing a trademark reexamination proceeding or if you find yourself listed as a defendant in a trademark reexamination proceeding.

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Intent to Use Filing Basis

Trademark Expungement Proceedings

You are now able to request the cancellation of some or all the goods or services in a registration because a trademark registration owner never used the trademark in commerce with those goods or services. Trademark expungement proceedings must be requested between three and ten years after the registration date. You will be allowed up till December 27, 2023, to initiate this type of proceeding against any registration at least three years old, regardless of the ten-year limit. The United States Patent and Trademark Office created expungement proceedings to clean up the trademark registrar and remove fraudulently obtained trademarks. Schedule a consultation with our experienced trademark attorneys today if you are interested in filing a trademark expungement proceeding or if you find yourself listed as a defendant in a trademark expungement proceeding.

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Miscellaneous

Trademark Portfolio Management

Trademark Portfolio Management

If you have pending and registered trademarks, have our team of experienced trademark attorneys manage your portfolio. The registration date of your trademark controls the maintenance and renewal deadlines. Failure to meet your maintenance and renewal deadlines can result in the inadvertent
cancellation of your trademark. Contact our trademark attorneys today if you would like us to take over and manage your trademark portfolio.

Trademark Renewals

To register your trademark, you were required to submit proof of your actual commercialization of the products and services listed in your trademark application. Upon doing so, you were issued your registration certificate. Trademarks do not last forever automatically. You need to meet your maintenance and renewal requirements and deadlines. Your vision for the brand may have changed since your registration date. It may become necessary to modify the goods and or services listed in the registration. If you are no longer using the trademark with the items listed in the registration, you may be best served by filing a new trademark. By hiring experienced trademark attorneys, you can properly submit your maintenance and renewal documents thereby reducing post registration office actions and trademark audits. Contact our trademark attorneys today if you would like us to assist you with your trademark’s renewal.

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Trademark Coexistence Agreements

If you believe your trademarked product and or service line can peacefully coexist without any resulting confusion in the marketplace with another company or individual’s trademarked product and or service line, we can draft, negotiate, and finalize the terms of a proposed coexistence agreement. There are several reasons why you may be interested in entering into a trademark coexistence agreement with another individual or company. Contact our trademark attorneys today if you would like our help drafting, negotiating, and finalizing a trademark

Trademark Enforcement

Once your trademark registers, it is imperative you pay attention to how your trademark is advertised and promoted by third parties. If you discover another company or individual is using your trademark without your permission, we are equipped to file infringement lawsuits and regularly prepare demand letters asserting your trademark rights to maintain the integrity of your product and service line being advertised and promoted under your brand. Our team of trademark attorneys work with brand owners daily regarding the importance of monitoring and enforcing their registered and pending trademark rights. Contact our trademark attorneys today when you discover another company or individual domestically and or abroad is using your trademark without a license and without your permission.
If you find yourself on the receiving end of a demand letter or trademark infringement lawsuit, our attorneys can assess the strengths and weaknesses of your position to determine the extent of your liability if any and will act in the best interests of you, your company, and your family.

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Amazon Brand Registry Consulting
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Amazon Brand Registry Consulting

Our team is available to help you protect your trademarks, copyrights, and patents, and the growth of your business through Amazon Brand Registry. We can help you navigate the Amazon Brand Registry registration process as we simultaneously prosecute your trademark, patent, and copyright applications with the United States Patent and Trademark Office and Copyright Office. Contact our intellectual property attorneys today to review your intellectual property portfolio to see what merits registration or reporting with Amazon Brand Registry.
Besides registering your trademarks with Amazon’s Brand Registry, we are able to report trademark, patent, and copyright infringement as well as the sale of counterfeit products that are damaging and hurting your federally protected intellectual property rights. Contact our intellectual property attorneys today if you believe your intellectual property is being harmed by another individual or company or if your account has been suspended because someone has filed a complaint claiming you are infringing or selling counterfeit products.
Amazon caters to brand owners and accepts trademarks that have been issued by government trademark offices in the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Turkey, Singapore, Spain, Saudi Arabia, the United Kingdom, Egypt, Sweden, Poland, Benelux, the European Union, and the United Arab Emirates. Our team of trademark attorneys can facilitate your trademark portfolio’s growth domestically and abroad. Contact our trademark attorneys today if you would like to receive a quote to register your brands domestically and or abroad.

Product Label Consulting

Many products sold in the United States have strict labeling requirements. Contact our trademark attorneys to ensure that your product packaging avoids misrepresentations and complies with various requirements imposed by the Food and Drug Administration (FDA) and Alcohol and Tobacco Tax and Trade Bureau (TTB). If you are commercializing and distributing food, cosmetics, vitamins, beer, wine, and distilled spirits, our attorneys can review your labels before your products come to market. Ensure you are compliant and schedule a consultation today.

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Don’t leave your brand’s future to chance. Contact a trademark lawyer today to learn more about how they can help you protect your brand and ensure its success.

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If you’re looking to register a trademark, it’s important to work with a qualified trademark attorney to ensure that your trademark is registered correctly.

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