New York City Trademark Attorney
Modern American trademark law is often traced back to Medieval England and a landmark law passed by King Henry III that said bakers must mark their loaves of bread with their own distinctive mark. This allowed inspectors to identify the origin of loaves that made people sick.
While modern trademarks are still an indicator of origin, they’ve also become a source of value, especially for massive consumer brands like Nike and McDonald’s. In a large city like New York, trademarks can quickly convey information and attract customers. Walk down any street in Manhattan, and you’ll see trademarks being used to lure in potential customers. Given the scale of commercialism in the Big Apple, it should come as no surprise that New York City trademark attorneys tend to keep quite busy.
What is a Trademark?
Traditionally, a trademark has been a symbol, word, slogan, or design. But more recently, the definition of a trademark has been expanded to include sounds, animations, fragrances, and even trade dress. The idea of a trademark is now generally regarded as anything that can identify an entity and the goods it produces. The term “service mark” is often used to refer to services rather than goods, but service marks are considered a type of trademark.
Trademarks are essentially shorthand for differentiating products and services in the marketplace. A trademark also offers legal protection for a company and guards against counterfeiting. Because a trademark can represent a certain level of quality or uniqueness, companies can be quite aggressive in protecting their trademark, and rightfully so.
Consider the New York City cliché of a fake Rolex. These counterfeit watches not only scam unsuspecting tourists passing through Midtown, but they also damage the Rolex brand. People may be less willing to buy a real Rolex watch if they are concerned that it’s fake. Or, people might appreciate the novelty of a fake Rolex from New York City and not bother buying the actual thing.
What Can be Trademarked?
Broadly speaking, anything that can be used to identify a company and its goods or services can be trademarked.
High-profile cases involving the trademarking of common phrases have led to a misconception that a trademark means the legal ownership of a word or phrase and the ability to restrict its use. However, trademarking does not grant exclusive rights to a word or phrase. It only offers protection with respect to how a mark is used in relation to specific goods or services. For example, the phrase “Just Do It” is a Nike trademark, but that doesn’t prevent anyone from saying it. That said, a local restaurant would not be able to use the phrase “Just Do It” in its official marketing because it’s a famous trademark with a broad scope of protection.
Non-famous trademarks have a much more limited scope of protection. For example, if a local retailer uses a pink elephant for its logo, it would not prevent a law firm, auto repair, or other non-retailer from also using a pink elephant.
When it comes to creating a trademark, a common misconception is that it should indicate a company’s products or services. However, uniquely identifiable trademarks are easier to protect and can be more effective. From a marketing standpoint, some of the most famous trademarks, like Starbucks or Adidas, have very little or nothing to do with the products these companies sell.
A trademark does not have to be registered in order to be owned. If your company wants to establish its own trademark, it simply needs to start using it in association with the goods or services it provides. While this can establish trademark rights, those rights are somewhat limited, and they typically only apply to a local area where the goods and services are being provided. Enterprises that want broad, national protection of their trademark must register it with the US Patent and Trademark Office (USPTO).
Many companies will opt for registration as their business scales up operations. This can happen much sooner than you might think. For example, if a retail company establishes an e-commerce platform and offers nationwide shipping, that company may want to register its trademark for national protection.
Types of Trademarks
Trademarks are associated with symbols like “TM,” “SM,” and ®. Brands use these symbols to indicate a trademark claim on a particular term or design. “TM” can be used to establish a trademark for goods, while “SM” can be used to establish a service mark. Both these symbols can be used without registration and still establish legal protections. The ® symbol can only be used once a trademark has been registered with the USPTO. Trademark symbols can be anywhere around the term or design being claimed. However, it’s standard practice to use symbols as a subscript or a superscript just to the right of the trademark.
Companies will continually use trademark symbols to reinforce their brand identity and associated products. To keep a registration active, the USPTO requires trademark owners to periodically file a signed statement noting that the trademark is still in use. The first filing must occur between the fifth and sixth years after initial registration. The next filing must happen between the ninth and 10th years after filing. Subsequent filings must happen every 10 years after that. If owners don’t file periodic renewal applications, their registrations expire.
New York Trademark Laws
New York City trademark attorneys focus on an area of intellectual property law that’s meant to protect people from fraudulent products and services. But trademark law is also tailored to encourage the creation of high-quality goods and services that are worthy of a brand’s trademark.
At the federal level, trademark law falls under Congress’ ability to regulate interstate commerce. This means goods and services must be provided across state lines for a trademark to qualify for federal protection. Companies that are only providing goods and services in New York can still file an Intent to Use application with the USPTO.
If accepted, this application reserves the right to use a trademark as soon as goods and services are provided across state lines. The company can file a Statement of Use application with the trademark office that includes a sample of the trademark being used in interstate commerce, the date at which interstate commerce started, and a description of the services or goods affiliated with the mark. If this application is accepted, the USPTO will issue a registration certificate indicating exclusive federal rights for the trademark.
New York State trademark law is substantially consistent with federal trademark law. However, New York registration law allows for enhanced damages and attorneys’ fees to be awarded in some circumstances. If a New York State court finds trademark infringement, remedies could include injunctive relief, destruction of the fraudulent or counterfeit products, and awarding of damages in situations involving a willing attempt to confuse or deceive consumers. If infringing parties are found to have acted in bad faith, a court could potentially award up to three times the damages and reasonable attorneys’ fees.
Other notable distinctions related to New York trademark law include the following:
- Trade dress. New York federal courts have held that trade dress infringement can occur without a showing of secondary meaning or an effort of the owners to make a deliberate connection between the trademark dress and the mind of the average consumer.
- Unfair Competition. New York recognizes unfair competition claims related to trademarks when one party markets another party’s products under the first party’s trademark — a practice referred to as “palming off.” The state also recognizes claims involving a party misappropriating the abilities, investment, or labor of another party.
Let Our Team of New York City Trademark Attorneys Protect Your Intellectual Property
New York City: As the old saying goes, if you can make it there, you can make it anywhere. Because that old saying largely holds true, companies in the Big Apple should consider registering any trademarks as soon as possible.
At Fridman Law Firm, our New York City team of trademark attorneys is well-versed when it comes to conducting a comprehensive trademark clearance search, reviewing USPTO records of registered trademarks, completing various trademark applications, and complying with any deadlines related to protection. If you would like to learn more about our trademark expertise, reach out online or call our office in New York City at 212-262-9823 to arrange a consultation.
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