Mariya Ortynska is a licensed New York trademark attorney committed to helping businesses protect their trademarks and copyrights.
Her primary services include trademark searches, trademark filings, responding to Office Actions, representing clients before the USPTO, and ongoing trademark maintenance.
Clients appreciate Mariya’s thorough explanations of the trademark process and her deep knowledge of trademark protection both nationally and internationally.
She is an active member of leading international trademark organizations, including the International Trademark Association (INTA) and the European Trademark Association. Mariya is also a frequent speaker on trademark protection, intellectual property in blockchain, AI, and other emerging technologies.
Flat Fees – Transparent & Predictable Pricing
Ortynska Law operates on a flat-fee basis, ensuring that clients receive a clear cost estimate upfront. This approach allows businesses to plan their budgets effectively without unexpected legal expenses for IP services.
Clear and Comprehensive Answers
Ortynska Law provides clear, straightforward explanations, breaking down complex IP and legal concepts into your language so you can move forward without complications.
Extensive Background in Global Trademark Portfolio Management
Mariya Ortynska, a New York trademark attorney, has managed trademark portfolios for over 240 international applicants and handled trademark matters across 80+ countries. Her IP expertise ensures strategic protection and efficient management of trademarks worldwide.
Areas of Practice
Trademarks
• Availability Searches • Prosecution of Applications before the U.S. Patent and Trademark Office • Registration Renewals • Strategic brand consulting in the U.S. and worldwide • Trademark Watching • Infringement disputes • Online and domain name enforcement
Copyrights
• Applications and Registrations before the U.S. Copyright Office • Strategic copyright counselling • Infringement disputes and online enforcement
Trade Secrets
• Trade Secret Roadmaps • Consulting on Trade Secrets
International IP
• Consulting on Global Trademark Portfolio • Protection • Madrid Protocol Filings
IP Transactions
• IP Licensing and Assignment • IP Due Diligence • Software Agreements
Artificial Intelligence
• Consultation on IP issues involving artificial intelligence • Generative AI Contracts
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Frequently Asked Questions
What happens if I do not register a trademark?
If you do not register a trademark, the same or a similar sign can be registered by others: unfair applicants who track down marks that can be registered as trademarks in order to block your business; competitors; dissatisfied former partners and employees of your business and third parties who have chosen the same trademark for their business.
In these cases, you will need to assess what your chances of fighting for your mark are, what your budget is, and the timeframe for such a challenge. There are cases where businesses decide to fight, spend sometimes 5 figures or more on such actions, and a lot of time (sometimes years). And in other cases, businesses decide to change the name, reprint packaging, change the trademark name, domain, website, and spend a budget on rebranding. Each of these options is costly and time-consuming, and the risks of such situations could be minimized by filing a timely trademark application.
When do I need to register a trademark?
Preferably, it is worth conducting a trademark search before launching a company or product to understand whether there are any risks of using and registering a trademark, and, if there are no such risks, then apply for trademark registration.
Sometimes business owners and managers postpone registration for later, for example, “when we expand”, “when we reach a quarterly plan”, and think “who needs my trademark and who will register it bypassing me”. But in fact, the USPTO receives about 1300 applications a day, so there is quite a high risk that someone may file a similar application while you are you’re in the process of developing your growth and achievements.
If you already have a business, use a trademark and have not yet registered it, you should start filing as soon as possible, especially if you have a website, run social media, have an offline business (such as a restaurant that uses a sign), pitch your product to investors, or participate in trade shows.
What to register first: LLC or trademark?
As a rule, if you plan to conduct your business from a business entity (corporation or LLC), then the trademark is registered in the name of the company. If you do not already have a registered LLC or corporation, it is recommended that you contact a trademark attorney prior to registering an LLC who will check the company name against the trademark registry at both the federal and state levels, as well as similar business entity names, and give further recommendations, including the LLC name. And as soon as you register the LLC, you can apply for registration of your trademark with the already registered company.
What should I do if a trademark is registered in my name as an individual, but the entity was registered later?
You will be able to transfer the rights to such trademark to the company you have registered. Such actions are subject to amendments to the register. Moreover, if the trademark owner is an LLC and later you change the organizational form of the entity (for instance, to corporation), you will be able to make the appropriate changes in the trademark register regarding the owner of such trademark.
What if I registered a trademark in my name as an individual and later changed my last name?
You can always make changes to the trademark register regarding yourself as the trademark owner: your first name, last name, and address.
How does a trademark differ from the name of a business entity?
A trademark is a certain mark that identifies your goods or services.
Consumers may not know the name of the company, but they know the brand. A number of widely known brands, such as Dove, Vaseline, Calve, Hellmann’s, Simple, Hourglass, Bed Head, and others, are owned by the same company, Unilever. So it is the trademark that clients remember and choose.
Just because you have registered a company and the registry does not contain the same name, does not mean that you cannot have conflicts with signs protected as trademarks. Business entity registries are usually limited to the state, and if the business entity name differs by one letter, the entity will usually be registered, unlike trademarks, where not only a similar trademark, but also a confusingly similar trademark may be considered an infringement. For instance, the trademark application for the “Sea Nymph” mark was refused in registration because it was confusingly similar to the previously registered mark “Nymph”.
That’s why you need to remember that checking the business entity register is not enough to ensure that you have no conflicts with your trademarks. Moreover, registering an entity does not protect you from the possibility that others may register the same name as a trademark.
How does a trademark differ from the name of a DBA?
DBA (doing business as) means a specific name that you use for your business entity operations. Many states allow you to register such a name. However, registering a DBA does not protect you from situations where someone will register such a name as a trademark.
Is the trademark registration federal or state level?
A trademark can be registered at both the federal and state levels. Most businesses that use or intend to use a trademark in more than one state or between the U.S. and a foreign country apply for a federal trademark registration. Such registration gives a presumption of trademark exclusive rights to nationwide use, allows you to register a trademark with US Customs to more effectively counteract counterfeiting at the customs border, and provides many other benefits.
However, some businesses that, for example, operate in only one state (single restaurant, state chain of laundromats) choose to register their trademark at the level of their state. Also, some industries cannot register their trademark at the federal level (for example, in the field of cannabis) and therefore choose to register the trademark in the state in which they use the trademark and where cannabis is legalized.
What should I do if I receive a refusal to register a trademark?
If you receive an Office Action from the USPTO, you should first review the grounds for such a refusal (e.g., similarity and identity with a previously registered trademark; descriptiveness; need for disclamation or clarifying the legal entity), and the deadlines for filing a response to such a refusal. As a rule, the deadline for responding to a refusal is 3 months and can be extended for another three months.
A trademark attorney will be able to analyze the grounds for refusal, offer you a strategy of actions in accordance with your situation. For example, if you have received a refusal on the grounds of similarity, a trademark attorney will analyze the conflict of trademarks, analyze the factors of similarity and identity (the so-called DuPont factors), and offer you a strategy accordingly.
More details can be found here: Trademark Office Action: What Does It Mean & How to Overcome It
Can I register a trademark if I do not use it yet?
Yes, you can register a trademark if you intend to use the trademark in commerce. In this case, when you receive the Notice of Allowance, you will need to submit a Statement of Use with a sample of the trademark use. If you have received the Notice of Allowance but have not yet started using the trademark, you can extend the period to file a Statement of Use up to 5 times. In total, you will have 36 months to submit such use. But of course, if you are already using the trademark, there is no point in extending this period.
How to find similar registered trademarks?
For this purpose, trademark searches are conducted. As a rule, searches are conducted for both registered and filed trademarks. There are different types of trademark searches. The search can be conducted only on the federal register, or, alternatively, there is a comprehensive search, which will include federal, state, and even common law trademarks (trademarks used without registration).
Trademark attorney Mariya Ortynska provides different types of searches among her services:
- By word and logo;
- By federal and state registers.
Mariya provides opinions with recommendations on the trademarking strategy, as well as recommendations on further use and risks of using the trademark.
As a result of the search, you will receive a search report with a list of trademarks, information on who they are registered or filed for registration, class, and list of goods and services, as well as registration status. You will also receive written recommendations from a trademark lawyer on further actions and, if needed, a phone or in-person consultation on the results of the trademark search.
More details can be found here: Why a Trademark Search Matters: Avoiding Costly Conflicts
What should I do if another person has filed for registration of my trademark?
If the search results show that the same or similar trademark is registered for related goods or services, your strategy may depend on:
- Whether the trademark is only filed for registration or already registered;
- Whether the trademark is identical or only similar;
- Whether the owner of the conflicting trademark already using it or has only declared their intention to use it;
- What is the date on which the conflicting trademark began to be used and the date of first use of your trademark;
- Geography of use of your trademark and the conflicting trademark;
- Other factors.
A trademark lawyer can analyze the relevant factors and formulate a strategy for further actions, such as negotiations with the owner of the conflicting trademark, filing an opposition against the registration of the conflicting trademark, cancellation actions, or expungement proceedings.
What should I do if I receive a claim/notification from another person that they have registered my trademark?
First of all, it is necessary to understand the status of the trademark at issue (registered, filed for registration, in use). There are cases when individuals submit such a claim without registration or using inaccurate information.
Trademark attorney Mariya Ortynska will be able to help with checking the status of the trademark at issue and preparing a strategy for further action.
For how many years is a trademark issued?
A trademark is registered for 10 years and can be renewed every 10 years. The number of renewals is unlimited. It is also worth remembering that, in addition to renewal, you need to use the trademark and file the proof of use. After the trademark is registered, such filing is done between 5 and 6 years, and then every 10 years. You can file a combined application for renewal and a Declaration of Use.
How long does it take to register a trademark?
As this process consists of multiple steps, it usually takes from 12 to 18 months to register a trademark. If someone files an opposition to your trademark, such a filing may slow down or overturn the registration process.
Is it possible to obtain an international trademark?
A trademark is territorial in nature. This means that a trademark registered in the United States is valid only in the United States. Therefore, if you want to have a protected trademark in Canada or Mexico, you must register the trademark in these countries accordingly. There are different ways of trademarking worldwide:
– By registering separate trademarks in the countries of interest;
– By filing an international application under the Madrid Protocol with the declaration of the relevant countries;
– By filing regional applications, for example, an EU trademark.
More details can be found here: Registering Trademarks Internationally: Practical Insights from a Trademark Attorney
Mariya Ortynska is a seasoned trademark attorney with wide experience in international trademark registration, who can assist you with each type of filing outside of the U.S.
How much does a trademark attorney near me typically charge?
The cost of trademarking usually consists of state fees and, if you decide to work with a trademark attorney, the fees for the attorney’s services.
The state application fee is $350 for each class of the International Classification. For instance, if you are planning to register a trademark for clothing (dresses, suits, jeans, T-shirts, hats), then this is all covered by one class, and the state fee will be $350. If you have software that functions both as a mobile application and as a web service, then your activity will fall under two classes and will cost $700.
Additional costs may be incurred if your trademark is not yet in use and you only intend to use it. In this case, after you receive a Notice of Allowance, in order to obtain a trademark registration certificate, you will need to file a Statement of Use and pay a fee of $150 per class.
The services of a trademark attorney usually consist of a trademark search, preparation and filing of an application, and preparation and drafting of a trademark use declaration. Additionally, if you have received an Office Action, a trademark attorney will be able to analyze the grounds for refusal, choose a refusal strategy, and prepare a response to the Office Action.
Trademark attorney Mariya Ortynska works on trademark matters on a flat fee basis. This means that you will receive a calculation of future costs for specific services upfront, and with that, your budgeting gets clear and predictable.
What are the benefits of working with a trademark attorney to register a trademark?
Although trademarking can be done on your own, working with a trademark attorney has many advantages:
– A professional approach. A trademark attorney works with conducting searches, preparing trademark applications, responding to previous refusals on a daily basis, keeping abreast of changes in legislation and practice, attending relevant seminars and conferences where they discuss professional issues of trademark law development.
– Saving costs. Starting from January 18, 2025, a $100 surcharge for each class will be introduced if you provide incomplete or incorrect information. Since a trademark attorney works with trademarks on a daily basis, working with an attorney reduces the risk of mistakes and, accordingly, additional costs.
– Meeting deadlines. Timing is important when trademarking. If you miss the deadline for responding to a refusal, filing a declaration of use, or extending the trademark registration period, the trademark may be abandoned. In some cases, the deadlines can be restored, but not in all cases. As a rule, a lawyer carefully maintains the trademark register and makes sure that all deadlines are met.
– Developing a strategy in accordance with your business plans. A trademark lawyer with understanding of your business strategy can advise you on the best way to file a trademark: verbal, logo, word + logo; when to file a 3d or sound trademark; how to minimize the risks of the Office Action, and, if there is one, how to overcome it.
– Saving time. You can spend days reading legislation, explanations on how to properly apply for trademark registration, and how to analyze the eligibility for registration of your trademark, while you can spend this time developing your business and brand.
