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Trademark Law

Your company's name or your products' or services' names define you and your place in the market. The greater the exposure within the market, the greater the likelihood someone will attempt to use your trademark for a profit. This is why trademark protection is essential to your business. Caseiro Burke knows the importance of trademarks and trademark protection. As experienced trademark attorneys we offer a full range of global trademark law services including:

  • Trademark Search and Clearance
  • US Prosecution and Maintenance
  • Foreign Trademark Prosecution including Madrid Protocol
  • Oppositions and Cancellations before the US Trademark Trial and Appeal Board
  • Trademark Licensing and Assignments
  • National and International Watch Service
  • Representation in Trademark and Domain Name Disputes

What is a trademark?

A trademark is any word, symbol or representation used to distinguish the source of particular goods or services from those of another. Trademarks are limited to commercial use and can also be limited by geographic scope and industry.  Trademark registrations can be granted at both the federal and state level, depending on the scope and level of protection you desire for your mark. Trademark rights, however, are established and maintained through usage.

What is federal trademark registration?

If you are selling your goods or services in multiple states and/or outside the US, federal trademark registration is preferable. Federal trademark registration provides you with the presumption of an exclusive right to use the trademark for the particular goods or services throughout the country.  Federal registration also provides:

  • The right to use the symbol ® to put those on notice of your federal registration, which can serve as a deterrent.
  • Use as a basis for foreign trademark registration.

Can I register my trademark in another country?

Yes, and you should if you are selling your goods or services in a foreign market. US trademark registration only provides trademark protection in the United States. Fortunately, the United States is one of approximately 90 contracting countries included in an international treaty known as the Madrid Protocol. Though you can file in individual countries, which would require the services of foreign agents, filing a Madrid Protocol application is easier and can be completed by a single agent.

Can I license my trademarks?

Yes. Caseiro Burke works with licensors and licensees to prepare and negotiate trademark license agreements. A trademark gives its owner the right to exclude others from making, using, selling or importing products or services using the same or a similar trademark. The trademark owner may transfer some or all of those rights to others, either by assignment or license. The trademark owner may also grant a license authorizing activity that would otherwise be infringing. For example, a licensee may be granted a license permitting use of the trademark for the described goods or services in exchange for some form of consideration, such as a royalty.

Caseiro Burke's trademark attorneys have experience working with individuals and companies preparing and negotiating licensing agreements for all intellectual property, including trademarks. These can be extremely technical agreements and should not be done without an experienced attorney. If you are considering licensing your trademark(s) or need assistance negotiating a license, give Caseiro Burke a call.

What is trademark infringement?

Trademark infringement exists through the unauthorized use of the same or similar trademark of another for the same or similar goods in a way that is likely to cause confusion for relevant consumers. The party asserting infringement must show that it is:

  • The owner of a valid and legally protectable mark; and
  • The infringer's use of the mark to identify goods or services results in a likelihood of confusion.

The trademark does not necessarily have to be registered to file a lawsuit for trademark infringement. Defenses to trademark infringement lawsuits include, in addition to differences between the trademark(s) and/or the products, laches, estoppel, unclean hands, fair use and collateral use. These defenses can be complex and require an experienced attorney to assess whether they are viable defenses.

It is becoming more common for small businesses to receive cease and desist letters attempting to stop trademark usages. Before simply giving up on your trademark(s), it is important that you contact an experienced intellectual property attorney to determine the viability of the alleged infringement.

If you believe your trademark(s) are being infringed or someone has threatened to take legal action, give Caseiro Burke a call.