Best Trademark Law Firms in NYC are the ones in your budget
You can choose to splurge or save, but protecting your trademark is a must when staring and running a business. So if registering and protecting your trademark is not in your budget yet – better make adjustments. And we promise that our services won’t break the bank.
The Fairchild Law firm is one of the best trademark law firms for trademark services in NYC. The founder of our boutique firm has years of intellectual property attorney experience, including consulting clients on trademarks and registering them with the United States Patent & Trademark Office.
Fairchild Law can save you time and money for your trademark protection.
What is a trademark?
A trademark is a word, slogan, design, or a combination associated with your business. More specifically, it identifies the source of good or services.
A trademark can also be the name of your product.
Here are a few famous trademarks:
- Coca-Cola, Pepsi. Dr. Pepper
- Nike, Adidas, Puma
- Apple, Microsoft
Trademarks can also be sound or smell
Trademarks help you distinguish your company, goods and services from those other companies.
Your business has a reputation. People associate your business, good or bad, based on that reputation. Among trademark professionals, we call all that “goodwill.”
Trademarks must have some level of public reputation attached to them. So, if your business has not opened yet, or you have not launched that product line yet, then establishing a trademark will be difficult.
It could be the title of the business (for me, that’s Fairchild Law, LLC).
A trademark is not necessarily your business entity name on file in your state’s capital. It can be, but usually is not. Oftentimes, you might see the phrase “DBA” or “doing business as” in connection with the state filings. The DBA refers to the trademark.
A “Service mark” identifies the source of services. This is usually used interchangeably with trademark. In fact, Fairchild Law is actually more of a service mark.
A website domain name registration is not the same thing as a trademark, but it can overlap. A domain name can function as a trademark as long it identifies the source.
For example, Amazon.com is the web address, but it also appears as a logo on their website.
Selecting your trademark
As a trademark attorney, I can provide legal advice for people selecting their trademarks.
This is a very important decision. Making a mistake could have costly implications and might kill your business before it starts.
Selecting a strong trademark
You want to select a strong trademark. The following is the scale of strength for a trademark.
- Generic
This does not identify source. This is the weakest and uses common names to describe (ice cream or pizza) - Descriptive
something about it (Yummy Ice Cream $.99 Pizza) - Suggestive Marks
These suggest quality or characteristic – Heaven’s Freezer (for ice cream) or Heaven’s Grandma (for Pizza)
This can be a good trademark but requires a lot of advertising. My favorite – Seventh Generation for paper products, the idea is that it’s made in environmentally sustainable way that will not harm the seventh generation - Arbitrary
These are inherently distinctive with no association with the goods and services.
Great examples: Apple Computers, Gap Clothing - Fanciful.
These are invented words.
Great examples: Xerox, Cisco
Likelihood of Confusion
The important test for a trademark is “likelihood of confusion”. This is measured between your trademark and those of someone else.
Likelihood of confusion has two aspects
- mark is similar – look alike, have similar commercial impressions, etc…
- goods and services are related
They do not need to be identical, just similar and related. Are consumers likely to believe that they come from the same source?
Avoid someone else’s trademark
You can have an identical trademark to someone else’s so long as it’s in an unrelated different industry. The standard is whether customers would be confused.
Hot Pete’s New York Pizza
Hot Pete’s Radiator Maintenance and Installation
Customers won’t be confused that “Hot Pete” makes both pizzas and installs radiators. They aren’t competitors.
But whichever business you’re in, be sure to find the trade name of your competitors. If your business is a local operation with local customers, then this should be fairly straightforward.
However, if your business has customers around the country, then you need to find out how other trademarks are being used in other states. Or, watch out for counterfeit imports of your product.
This could be a lot of work. But it’s necessary to protect your business and not be sued for trademark infringement yourself. If you fail to do this, you might be accused of trademark infringement, if you lose, you might lose your inventory.
Trademark Registration
The Fairchild Law firm represents those who want to register a trademark based on your business trade.
What are the benefits of federal registration?
- Legal presumption that you own the mark – this is important as you will likely fight over who owns the trademark
- Public Notice – everyone knows that you own the trademark
- PTO Database list – this helps others avoid selecting similar mark; PTO will use your mark against another business trademark application
- Block counterfeit imports – after you record registration with custom and border protection
- Can sue in federal court
- Can apply for trademark protection in foreign countries
- Can use the (R) symbol
When can you apply for federal trademark registration?
To register your trademark with the United States Patent & Trademark Office, you need a date of first sale. If you don’t have it yet, then we can still apply to register a trademark, but I strongly advise clients to do that only if the product launch will happen within a year or two. Otherwise, the work for the trademark application is wasted.
Protect your trademark
If someone else is using it, contact a trademark attorney. It might be time to send a “Cease & Desist” letter, and if that doesn’t work, then time to sue.
Strong trademarks need policing, you might lose it. This happens if your trademark becomes the common every day name of the good or service. You must protect your trademark from becoming ‘generic’. This goes to the effectiveness of using the brand name in advertising.
A lot of great trade marks were once coined words but now are generic
- Margarine
- Linoleum
- Escalator
One of my favorites – Hoover.
In England, the word “Hoover” is used interchangeably with the “vacuum cleaner.” You can use it as a verb – hoovering or hoovered all over the floor.
Well, decades ago, there was a Hoover Vacuum Cleaner that failed to protect its brand name in England. It went generic.
The lesson – you need to hoover your advertising and any mess made by competitors. If someone is using your trademark inappropriately, stop it! Fix your advertising or if you have to pursue legal remedies, then do so.
Even “Google” could go generic. A lot of people use the word “google” as a verb to search for something online. However, Google wants you to use Google-brand search engine.
It’s up to Google to stop people from calling it “googling” – and it’s up to you to protect your trademark.