Trademark Services
Ortynska Law offers comprehensive trademark services, including searches, filings, and responses to office actions. These trademark services are handled with precision, as Mariya Ortynska meticulously manages and tracks deadlines at every stage of registration and trademark renewals.
The firm’s approach to trademark services is thorough and business-oriented, offering clients practical solutions and tailored responses to their inquiries. Additionally, Mariya has in-depth knowledge of cutting-edge technologies that can impact brand protection, including contextual advertising, social media, blockchain, and artificial intelligence.
Trademark Search
Ortynska Law conducts both "knockout searches" and comprehensive trademark searches. Based on the search results, Mariya provides an informed opinion on risks that may arise if you proceed with filing a trademark application. If the search results indicate the need to modify your trademark or narrow the list of goods and services, Ortynska Law guides and support you throughout the process to enhance your chances of a successful outcome.
Trademark Filing
The firm's goal is not just to guide you through the filing process, but to align each step with your overall business objectives, protecting your brand effectively from the start. Mariya Ortynska possesses significant expertise in managing global brand portfolios and understand how to use international treaties (such as the Madrid Protocol) and conventions when they are helpful. Mariya meticulously tracks deadlines, reports all communications related to trademark prosecution, and provides consultations at every stage of the trademark registration process.
Office Action Response
Ortynska Law provides services for analyzing both Non-Final and Final Office Actions, as well as preparing responses to them. If necessary, Mariya Ortynska can also file a request for an extension to respond to an Office Action. The firm's responses are thorough, addressing all relevant issues raised by the USPTO. Additionally, Mariya Ortynska can consult you not only on the risks related to registration but also on potential infringement of third-party rights if you proceed with using the trademark.
Trademark Trial and Appeal Board (TTAB) Litigation
The firm's practice includes handling oppositions and cancellations before the TTAB. Ortynska Law guide you through the entire process and explore all available options, such as negotiating settlements. The goal is to provide strategic advice that best protects your trademark rights and aligns with your business objectives.
Trademark Maintenance and Renewal
Maintaining and renewing a trademark is crucial to preserving your brand's protection. The firm helps ensure that your trademark remains active by tracking renewal deadlines and handling all necessary filings. Mariya Ortynska provides guidance on maintaining the validity of your trademark by advising on continuous use and monitoring compliance with legal requirements. This service helps safeguard your intellectual property for the long term, protecting your rights in key markets.
Declaration of Incontestability
Ortynska Law handles the filing of declarations of incontestability (for federally registered trademarks that have been in continuous use for five years). Such status strengthens your trademark's position and protects it from being challenged on several grounds. Mariya Ortynska offers this effective mechanism as a part of your IP strategy and consults on related matters.
Trademark Watching
There are situations when other parties might try to register their trademarks similar to or identical to yours. As a part of your brand protection strategy, to prevent such registration Ortynska Law offers trademark watching, which works on the principle of an annual subscription. Monitoring such applications can help you react to them in time, either by negotiating with an applicant or filing an opposition. If similar or identical trademark applications are found, Ortynska Law provides you with a report including further recommendations and assists you in both the negotiation process and the opposition process if you are interested in further action.
Consulting on Global Trademark Portfolio Protection
Ortynska Law offers strategic consulting services focused on optimizing trademark filing budgets, aligning business strategy with the necessary steps of brand protection. Based on extensive experience of the application of Berne Convention and other international copyright laws Mariya Ortynska consults business on different copyright nuances.
Madrid Protocol Filings
Mariya has experience in international trademark applications, coordination of answering office actions, and filing and answering oppositions in different jurisdictions. Ortynska Law pays attention to all necessary steps during international trademark registration, international assignments, and maintenance as well.
Frequently Asked Questions
If you use a trade name of your product and a logo, it is better to protect both the word and the visual parts. The trademark strategy of many companies is to register the word part and the logo separately. In this case, if someone uses your logo for related goods or services, but with a different verbal part, it may be considered trademark infringement.
However, in some cases, it is better to register a combined trademark with a logo. Based on the results of the trademark search and the use of the trademark, a trademark attorney will be able to advise you on the trademark filing strategy.
If you have registered a trademark for certain goods and services in two classes, you can add more classes only by filing a new trademark with the relevant goods and services. In addition, if you want to add new goods or services within a registered class, you can do so only by filing a new trademark application.
To assess trademark infringement, you first need to determine what trademark rights you have (for example, whether it is registered in the federal or the state register, or whether it is common law rights), for what goods and/or services it is registered or has common law protection. If another person uses the same trademark for related goods or services and it leads to a likelihood of confusion, it may be trademark infringement. It is better to contact a trademark attorney to evaluate your case before taking any action.
A reasonable step in this case is to send a cease-and-desist letter demanding that the infringement be stopped. A cease-and-desist letter can be an effective tool to stop infringement without litigation. However, before sending such letter, it is necessary to assess the possible actions of the person using a similar trademark. In some cases, sending a cease-and-desist letter may provoke this person to cancellation proceedings of your trademark or to filing a lawsuit.
It is better to consult with a trademark infringement attorney regarding infringement issues. In general, if you register a domain and display a trademark registered by another person on your website, this may be an infringement:
- If you offer related goods or services on your website that are the same as the owner of a prior registered trademark, this may constitute trademark infringement;
- If you offer other goods and services on your website, the answer to this question depends on whether there is a likelihood of confusion. There is a multi-factor test for likelihood of confusion and a trademark attorney will help you identify the potential risks of a trademark infringement claim.
If you have not responded to the Office Action (as a rule, there is a 3-month deadline for filing a response) and have not extended the deadline for filing a response, your trademark will be abandoned. If you have received a Notice of Abandonment, you have the opportunity to revive your trademark application by filing a corresponding petition. Such a petition can be filed under the following conditions:
- It is filed no later than two months after receiving the Notice of Abandonment
- The delay in responding to the Office Action was unintentional.
If you did not receive the Notice of Abandonment, you can file a petition within two months of finding out about the abandonment. However, this can be done no later than 6 months from the date of abandonment.
You might also be interested: Don’t Lose Your Trademark: How to Fix an Abandoned Application
Trademark renewal shall be done every 10 years, between the 9th and 10th years from the date of registration. In case you fail to do so, you will have the opportunity to renew the trademark during the grace period, which is six months after the end of the standard renewal period. Please keep in mind that renewal during the grace period results in paying an increased fee.
Besides from renewal, you also should file a declaration of use along with the specimen to prove that your trademark is in active use. The first maintenance filing is due between the fifth and sixth year following registration. A six-month grace period is available as well, but late filings will also incur an increased fee. The next declaration of use filings shall take place between the 9th and 10th years after registration, and then every 10 years thereafter. Since these future maintenance deadlines align with renewal periods, both can be handled at the same time by filing a combined declaration.
Trademark attorney can help you assess your trademark portfolio and ensure no important deadlines are missed.
You might also be interested: Trademark Renewal and Maintenance: How to Keep Your Trademark Active
A Letter of Protest is a tool that can be used by any person to contact the United States Patent and Trademark Office (USPTO) and provide arguments and evidence that a trademark cannot be registered. For example, if another person has a similar trademark filed or registered, they may send a letter of protest. Just because a letter of protest is sent and accepted by the USPTO does not mean that you have to respond. If the letter of protest meets all the requirements, it will be forwarded to the examiner, who may take it into account when issuing a provisional refusal. If the examiner does not agree with the arguments in the letter of protest, they will not issue a provisional refusal on this basis.
Therefore, in your situation, you need to monitor the application, prepare for a possible provisional refusal, and, if you receive it, respond to it.
In case you want to assign your trademark to another party, you need to have an assignment agreement in writing between you (the assignor) and the other party (the assignee). Such assignment needs to be recorded with the USPTO. The government fee for trademark assignment is $40 for one trademark, and additionally $25 for each trademark in the assignment procedure made.
Please note that in the U.S. so-called “naked assignments” are prohibited. It means that any assignment shall include the goodwill of the business connected with the use. Goodwill essentially means reputation, customer loyalty and recognition. The transferring of goodwill shall be done in fact in order to comply with goodwill requirements.
You can find more information on trademark assignment in the article: Trademark Assignment in the U.S.: Key Rules and Hidden Pitfalls
Yes, trademark does not need to be the same as the name of your company. Some companies use and register their company name as a trademark, while others have trademarks that are different from the name of the legal entity. There are companies that register multiple names as trademarks: both name of legal entities and the names of their main products.
When it comes to suspension letter, you are not obliged to respond to it. You may expect the communication from the examiner, who, in the meanwhile, will independently monitor the status of a conflicting trademark application. However, proactive approach might be more beneficial in this situation. You can monitor conflicting applications and registrations and inform the examiner on the status changes yourself or provide the examiner with argumentation on the absence of grounds for trademark suspension.
During a consultation with a trademark attorney you may get an effective strategy in your particular case.
You might also be interested: Navigating Trademark Suspensions from the USPTO
If you found a similar registered trademark, you have several options. The simplest and often cost-effective way is to change the trademark. However, there are other ways, and a trademark lawyer will be able to tailor them to your situation and implement them. For example, if a registered trademark has not been used for three or more years from the date of registration, you can initiate trademark cancellation proceeding.
You might also be interested: Why a Trademark Search Matters: Avoiding Costly Conflicts
Descriptive trademarks cannot be registered in the principal register, but can be registered in a supplemental one. If you have received a provisional refusal on the grounds of descriptiveness, you have several strategies for responding:
- Provide reasoning that the trademark is not descriptive, but only suggestive. A trademark attorney will help you assess the chances and prepare arguments accordingly;
- Amend trademark from principal register to supplemental register. If your trademark will be registered in the supplemental register, then even if third parties will file a similar trademark for registration, your trademark will be opposed to it. If, after five years of usage, your descriptive trademark acquired distinctiveness, then you will be able to register it in a principal register.
If a slogan has the functions of a trademark, you can register it as a trademark. If you want to register a slogan, it is advisable to:
- Assess whether it meets the functions of a trademark. If the slogan is only informational, i.e. carries certain information, the trademark registration will be refused. For example, the registration of the slogan “I ♥ DC” was refused because this slogan is widely used over a long period of time by many manufacturers, showing enthusiasm or attitude towards Washington, D.C. Using “I ♥ DC” on clothing and souvenirs will not be perceived by consumers as an indicator of the source of goods;
- Conduct trademark search;
- If the search results do not reveal any trademarks that may be an obstacle to registration, then apply for registration of the slogan. It is advisable to register it separately, and not together with the main trademark or logo.
If you have received a Notice of Opposition, contact a trademark attorney to help you develop a strategy. As a rule, you have forty days to file a response, so it is advisable to contact a trademark attorney as soon as you receive the Notice of Opposition. After analyzing the opposition, the attorney will be able to advise you on further actions, such as withdrawing your application; negotiating with the person who filed the opposition to resolve the conflict and have them withdraw the opposition; filing a response; filing a counterclaim if there are appropriate grounds.
Incontestability of a trademark is a status which can be acquired by filing Declaration of Incontestability. It means that there are fewer grounds to contest the validity of the trademark. For instance, such a trademark cannot be contested on the grounds of descriptiveness and priority.
To file such declaration, the trademark shall meet several requirements. The main requirement is that the trademark was continuously used in commerce for five consecutive years after the trademark registration. For example, a trademark was used for four years after registration. Later the product concept was changed and the owner temporarily withdrew all products under this trademark for three months. In such case, in a year the owner will no longer be able to file a declaration of incontestability, as the five-year period has been interrupted. From then on, the five-year period will be calculated anew after the resumption of production of the original products under the same trademark.
You might also be interested: The Power of Incontestability: Strengthening Your U.S. Trademark
