Experienced Oregon Trademark Attorney
Whether you’re interested in registering a trademark, enforcing pre-existing trademark rights against an infringer or looking for guidance with respect to your trademark strategy, it’s important to get in touch with a skilled intellectual property attorney.
Yellow Dog Legal can help. Founding attorney Nicole Schaefer has worked with a range of Oregon clients to identify, register, maintain, enforce and monetize their valuable trademark assets. Call Yellow Dog Legal at 971-350-8516 or complete an intake form online to schedule a consultation.
Frequently Asked Questions (FAQs)
Q: Do I have to register my trademark in order to enforce it?
A: No, trademark rights are automatic upon actual use, assuming the trademark is valid and is not likely to cause confusion with an existing mark. Still, while there is no legal requirement to register a trademark, it’s useful and absolutely worthwhile to do so for the practical benefits afforded by registration.
Q: What are the benefits of trademark registration?
A: Trademark registration with the USPTO provides a number of advantages. The following is a non-exhaustive list:
- Presumption of trademark ownership
- Notice of the existence of the trademark to potential infringers (in other words, the infringer can’t argue that they “simply weren’t aware” of your trademark)
- Reduced evidentiary burden to prove ownership and date of ownership
- Acknowledgement that trademark does not cause a “likelihood of confusion” with existing marks
- Trademark becomes nationally enforceable
- Potential for foreign trademark registration
- Intent to Use (ITU) trademark registration is available
Accessing ITU trademark rights is among the most valuable functions of registering one’s trademark with the USPTO. ITU trademarks allow you to preliminarily assert trademark rights before the mark is actually used (or advertised) on the market. This can be extremely valuable for startups and other businesses that are launching a product/service in the future and want to protect the relevant trademarks but have not actually used or advertised the trademark yet, for strategic reasons.
For example, suppose that you are planning on launching a new software product in six months. Your team is still developing the product, so it’s not ready to be distributed to customers or advertised yet. However, you’re concerned that the name of the software product will be taken by someone else before you launch. ITU trademark registration essentially “reserves” your trademark for six months, within which time you must use or advertise it. If you need extra time, extensions are available.
Q: What is Trademark Nation?
A: Trademark Nation is Nicole’s special membership that gives members amazing perks! For example, if you join Trademark Nation, you essentially have your own personal Trademark Attorney! For a low monthly fee, you’ll get:
- Discounts on every service- Trademark Registrations, Trademark Searches, Cease and Desist Letters, etc.
- Unlimited emails and phone calls.
- Trademark monitoring.
- Automatic trademark renewals when the trademark is about to expire.
- And more!
Q: How do I evaluate whether my trademark is enforceable?
A: A trademark is enforceable if it performs the function of distinguishing the source of goods or services, and if it is sufficiently “distinctive.”
Not all marks are equally strong. The more inherently distinctive a trademark, the easier it is to enforce. Under US law, trademarks fall on a spectrum of distinctiveness from most distinctive to least distinctive as follows :
- Fanciful marks are inherently distinctive, and involve invented words that have no other meaning
- Arbitrary marks are highly distinctive, and involve existing words used in an entirely meaningless context
- Suggestive marks are moderately distinctive, and involve the use of words that imply certain qualities about the goods/services, but that do not specifically describe the goods/services
- Descriptive marks are generally not considered distinctive (and are therefore unenforceable) unless they have been used extensively in commerce — and for enough time — that consumers understand the mark as distinctive.
- Generic marks are always considered unenforceable, and involve the basic name of a good or service. A computer repair shop called, “Computer Repair Shop” would not have a protectable trademark for its name due to its generic character.
Q: How does the Trademark process work?
A: Yellow Dog Legal provides trademark services in a way that is most beneficial to clients. Nicole begins each trademark process by doing an exhaustive trademark search and opinion letter, which tells the client his or her risk in applying for a trademark. Then, with the client’s permission, Nicole moves on to the actual application.
Q: How long does the Trademark process take?
A: Nicole is able to complete the search and opinion letter part of the Trademark process within 2-5 days. The actual application takes about 6-9 months. After application, within 3-4 months, Nicole will know whether the client has received an Office Action (basically meaning the trademark application has been rejected). Upon successful rebuttal or re-submition of the trademark application, the process should take another 3-5 months. Then the client receives their Certificate!
Q: What is an Office Action?
A: An Office Action is a notice by the USPTO that an application has been rejected by an examiner for one of two reasons. The first is Administrative and this is easy and quick to resolve. The second reason is Substantive and this requires a memo from the Attorney to fight. *Please note this is a considered a separate matter from the initial trademark process and requires separate payment (if it is a substantive office action).
Q: What constitutes trademark infringement?
A: Trademark infringement fundamentally relies on the fact that the defendant-infringer’s mark has created a “likelihood of consumer confusion” with respect to the source of their goods or services.
Whether the alleged infringement has caused a “likelihood of consumer confusion” is a fact-dependent analysis that depends on a number of different factors, including but not limited to: the similarity in goods/services between the plaintiff and the defendant, the strength of the original trademark that has supposedly been infringed, evidence of actual confusion, the similarity of the supposedly infringing trademark to the original trademark, and the intent of the defendant in adopting a similar trademark.
Q: What happens if someone is infringing on my trademark?
A: Great question! If you choose, Nicole can write a Cease and Desist Letter to the infringer and get them to stop. If you’d like to be protected against all infringers automatically, check out Nicole’s Trademark Nation Membership!
Q: What if someone wants to fight for their right to a trademark against me?
A: Then something happens called a TTAB proceeding. It is essentially a prosecution over trademarks.
Q: What qualifies as valid “trademark” material?
A: According to the USPTO, a trademark covers words, names, symbols, sounds and colors that distinguish goods and services from those manufactured or sold by others. Simply put, a trademark is meant to indicate the source of goods/services. When shoe-shopping customers see a “swoosh” logo on a pair of sneakers, for example, they can identify that the sneakers are designed and manufactured by Nike. The “swoosh” logo is clearly a valid and enforceable trademark.
Q: What is trademark dilution?
A: Trademark dilution is an interesting trademark law concept that shares some similarities to infringement, even though it operates as a distinct claim.
Trademark dilution doesn’t require that you show that another party has used a mark that causes “likelihood of confusion.” Instead, dilution claims are based on the idea that the defendant’s mark is sufficiently similar to a “famous” mark, and as such, has reduced or is likely to reduce the public’s perception of that famous mark as unique and distinguishing.
For example, a new shoe brand called “Mike-y” might not necessarily be infringing, but it arguably dilutes Nike’s brand, either by blurring the lines between the brands or by tarnishing the Nike brand.
Q: Are trademark rights granted for a limited period of time or are they enforceable for an unlimited term?
A: Trademark rights — unlike copyrights and patent rights — are not granted for a limited period of time. If you have registered your trademark with the USPTO, you are entitled to enforce your trademark rights for an unlimited term.
This does not eliminate your responsibility concerning the trademark, however. In order to continue to use a trademark, you will have to submit relevant trademark maintenance and renewal documentation on a regular basis (i.e., every six to ten years) as required by the USPTO.
Failure to timely file these maintenance and renewal documents will cause the trademark registration to be permanently cancelled and it cannot be reinstated. As such, it’s worth hiring a detail-oriented trademark attorney as strategic IP counsel. They will keep track of your trademark rights and renew them as necessary.
Q: Can the owner of a registered trademark be sued by a common law rights-holder?
A: Yes, though USPTO registration gives the trademark presumptive validity, a common law trademark rights-holder (meaning a party who has actually used their trademark in commerce but has not registered it) can bring a claim against the trademark rights-holder to stop them from infringing.
This may seem like a rather strange and unintuitive outcome, particularly given that the registered trademark also gives constructive notice to others about the existence of the trademark. In truth, however, it’s quite sensible.
If you have actually used your trademark and therefore obtained a common law right to said trademark, then your rights may pre-date that of the individual/business that registered their trademark with the USPTO. You might not even be aware that someone has violated your common law trademark rights until they federally register. Once you become aware of their registration, it’s important to police your trademark rights and bring suit against the infringer.