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    Best Trademark Protection Law Firm In New York

    Imagine that you and your family have spent several years starting a business, creating a clever name and logo, and have found your business niche. Imagine that you finally have enough income that can be invested into nice business cards and delivery materials, all stamped with your logo. Then one day while visiting a neighboring state, you stumble across a storefront with the exact same business name, with similar products for sale. What is your next step moving forward? Who is in the wrong? Keep reading to learn more.

    AV Martindale-Hubbell Preeminent Top Rated New York Trademark Attorney
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    BBB Accredited A+ New York Trademark Attorney

    Why Are Trademarks Important?

    Understanding how trademarks work is critical to your business, especially when it comes to competing against other businesses on the market. If you are facing or have faced a situation like this, you have likely experienced trademark infringement.

    Before you contact the nearest New York intellectual property attorney to pursue legal action, it is important to understand what infringement is so that you are aware when it has actually occurred.

    When you own a business, having a thorough understanding of trademarks and how they work is critical to your success when competing against similar businesses on the market.

    What Is a Trademark?

    According to the United States Patent and Trademark Office, “[a] trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. . . .

    Elena Cottam | Federal Trademark Protection

    Some examples include: brand names, slogans, and logos. The term ‘trademark’ is often used in a general sense to refer to both trademarks and service marks.” Though it is not legally required to register your trademark, it is highly recommended so that your brand has utmost protection from infringement or other trademark offenses.

    Both federal and state law prohibit deceptive and misleading advertising. If you have a registered trademark, then the legal system will be on your side. We will discuss this in more detail below.

    Let’s face it, to say the marketplace is crowded is an understatement. Trademark law prevents businesses from misleading consumers by disallowing use of the same or similar business names and other identifiers. If I want to buy a Coca-Cola at the store, then I can rest assured that the can that actually says Coca-Cola is from Coca-Cola and not some mediocre knock-off. Customers viewing a trademark immediately recognize who they are actually buying from, which also helps to preserve the reputation of the business and discourage consumers from finding an alternative.

    Trademarks prevent marketplace confusion by giving customers the ability to protect themselves from wasting money on a product they do not like. For this reason, consumers tend to return to the brands that work well for them. For example, let’s imagine that you are a marathon runner and you love using Brooks running shoes. In fact, you keep going back every few months to buy a new pair because they fit so well. Without trademark law, you would run the risk of buying a product from a different company every time you purchase another pair, even though they all bear the Brooks name and logo. Furthermore, confused consumers would not know where to return defective products. With trademark law protecting business brands, consumers may trust that what they are buying is from the brand they expect.

    Your brand name is the first thing potential consumers will see while searching on the internet or scrolling through their social media. By having a unique brand, unshared by others competing against you in the market, you can facilitate higher traffic on your social media and websites, which in turn leads to higher rankings in search engines and even greater traffic. Without trademark laws, it would be extremely difficult for businesses to form a strong presence online. For example, during the internet boom around the year 2000, the domain name peta.org was originally taken by an organization called “People Eating Tasty Animals,” instead of “People for the Ethical Treatment of Animals” (PETA). Today, the domain name links to the actual PETA organization; however, it would still link to “People Eating Tasty Animals” had there not been trademark laws.

    Amazon owns a lot of stuff, especially with the recent purchase of Whole Foods, but it’s most valuable asset by far is its brand, which is valued for 2018 at about $150.8 million. As your business and brand grows, so will the trademark value of your business’s brand. Your trademark can be purchased, sold, licensed, franchised, or even used as a security interest to obtain more money for your business. Additionally, trademarks are able to be leveraged in that they can make it easier for a company to expand beyond its core business into another realm. For example, Apple expanded from computers to personal music devices, Kellogg’s expanded from cereal to breakfast bars, and Amazon expanded from a delivery service to tablets. While each of these businesses could have started from the ground up, their name is ultimately what allowed them to expand their business successfully.

    The United States Patent and Trademark Office charges anywhere from a mere $225 to $400 to obtain trademark registration. When you stop and consider the value of protecting your brand and the risks avoided by registering your trademark, the administrative fee becomes even more miniscule. After your trademark is registered, maintaining registration will only cost a few hundred dollars every ten years. As long as the trademark is being used in commerce, you will be allowed to renew it each time for this relatively low price.

    In 1877, Quaker Oats registered “a figure of a man in ‘Quaker garb,’” with the U.S. Patent Office. Nearly 150 years later, this trademark (the first trademark for a breakfast cereal) is still valid. Like Quaker Oats’ “man in ‘Quaker garb,’ your business trademark will not expire so long as you renew its registration and continue to use it in commerce.

    Who Enforces Trademark Laws?

    Though trademarks originally developed under state common law, over time, the federal government also began to regulate trademark laws. Today, the federal government is the primary enforcer of trademark protection and registration. Amended in 1996, the 1946 Lanham Act is the main federal statute regarding trademark infringement.

    New York Trademark Protection Laws

    State-regulated trademarks in New York are governed by the New York General Business Law Article 24, Section 360. If you plan to remain exclusive to New York, state registration will be sufficient for your needs. However, getting a federally recognized trademark is a wiser choice that does not take much more work, as your brand will receive broader protection and numerous other benefits that are discussed below.

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    Top-Rated New York Trademark Lawyers

    Denton Peterson Dunn is an excellent law firm with experienced trademark litigation attorneys and infringement defense lawyers. Whether you need to register a trademark with the US Patent and Trademark Office, pursue legal action, or simply have your questions answered, contact our top-rated trademark law firm in New York today.

    Andre L. – New York
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    Olivia M. – Long Island
    “I highly recommend this law firm. I used them recently for a small business issue I was having. The attorney was very hands-on and walked me through the whole process. The consultation was very informative and Tim went out of his way to call me and keep me in the loop throughout the entire situation. Highly recommend!”

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    How to Acquire a Trademark In New York

    The process to register a trademark is straightforward and simple, and usually does not take more than a few hours. Completing the online application via the US Patent and Trademark Office’s website is the most efficient approach, and can be found at www.uspto.gov.

    Before starting your application process, however, it is vital to do extensive research on the Trademark Electronic Search System to ensure that your chosen business name has not already been registered by someone else. If the name is already taken, it is possible you could proceed anyway without concern, provided that your category of goods and services is different than theirs. Checking with an experienced business lawyer is a wise move, to keep yourself free of future infringement claims. The trick to trademark registration is keeping your description narrow enough for acceptance, but broad enough for utmost protection. Contact Denton Peterson, P.C. for assistance.

    Register With New York Experienced Trademark Attorneys

    Once you complete the registration application, you can expect a notification of acceptance or denial within six months or less.

    Elena Cottam | Trademark Refusal

    However, do not be fooled – though filing the application is easy enough, the complexities associated with gaining trademark protection is where the difficulty rears its head. For expert assistance and legal guidance filing your trademark application with the US Patent and Trademark Office, contact a trademark lawyer at Denton Peterson, P.C. today.

    How to Register a Trade Name or Trademark in New York

    As mentioned, registering your trademark federally with the US Patent and Trademark Office bears a lot more weight than a state registration, along with broader protection and the ability to pursue legal action in any court across the country. However, depending on your needs, you may find state registration to be more than sufficient for you.

    1. Before submitting your application, perform extensive research to ensure your chosen name is not already taken. Utilize the Trademark application page on the New York Department of State’s website to do so.
    2. Complete the application, including a written description of your business intention, the name of your business, and any samples necessary that will help you acquire the trademark. 
    3. Pay the $15 filing fee.
    4. Wait for the results of your application. Typical time frame is 2-3 weeks, although some cases can take longer. You can always check in with the Secretary of State to find out the status of your application.
    How To Register A Business Trademark In New York

    How Registering Your Trademark Helps You

    Trademark registration offers exceptional protection for your name, business, and brand. You may not want to put forth the effort to register, but rest assured that federal registration provides more strength for you to pursue legal action and protect your intellectual property, and to cover more geographical areas with your brand. To learn more about trademark registration and its benefits, or for assistance completing the application, contact a New York litigation attorney at Denton Peterson today.

    U.S. trademark protection is granted to the first person (or entity) who uses the mark, whether it be trademark or tradename, in the geographic area where the mark operates, regardless of whether it is actually registered. However, if your chosen mark is already registered by another company (even if you used the mark first) your registration with the U.S. Patent and Trademark Office will be rejected and you will need to find an attorney to help you get some sort of relief. For this reason, you want to register as soon as possible. In addition, five years after you register your trademark, it is possible for you to apply to have your trademark declared uncontestable. That declaration will make your exclusive use of the mark irrefutably established in court.

    Registering your business name or trademark secures a certain level of protection outside of the courtroom. Registering your trademark will also allow you to preliminarily enforce protection without actually filing a lawsuit against the infringer. For example, if someone used a Twitter name that was identical to your registered trademark, you can file a complaint with Twitter. In your complaint, you can say, “someone is illegally using my registered trademark in your system, please help me prevent them from continuing such unauthorized use.” Twitter will review your complaint along with your federal registration and respond according to the facts of your case. Usually, internet companies will side with the owners of the registered trademark. With its continuous expansion and evolution, the internet is sometimes the “Wild West.” Sometimes, litigation can be lengthy and insufficient to address your particular concern, and even when it works it’s terribly expensive, so it is critical for you to be able to resolve these kinds of disputes with internet companies to save precious time and money.

    By registering with the U.S. Patent and Trademark Office, you put others on constructive notice of your ownership of the trademark. Without a registered trademark, you would have to prove that someone who copied your mark had actual notice that the mark belonged to you before the infringement. With a registered trademark, however, you will not have to prove actual notice because registering your trademark and its existence in the U.S. Patent and Trademark Office’s database is notice enough.

    Under 15 U.S.C. 1125(a), you do not have to have a registered federal trademark in order to bring a lawsuit in federal court; however, registering your trademark will automatically allow you to bring your claim in federal court, if you so choose. Bringing your registered trademark infringement claim in federal court will help your case, because one of the several main factors considered by federal courts when assessing and weighing evidence is whether the trademark is registered with the U.S. Patent and Trademark Office.

    Furthermore, bringing your claim in federal court will offer advantages such as easy performance of discovery across state lines, experienced federal judges on the bench, and more established intellectual property presence. Bringing an infringement claim related to your registered trademark in federal court could also allow you to obtain monetary remedies such as infringer’s profits, damages, costs, and possibly even treble (triple) damages and attorneys’ fees. In other words, you are probably going to get more money out of an infringer with a registered trademark than you will with an unregistered trademark.

    Generally, intellectual property (like trademarks or patents) is territorial and must be filed in each country where protection is sought. In other words, your registered trademark might mean nothing in Paraguay or the Netherlands. However, by filing just one trademark registration application with U.S. Patent and Trademark Office, you can concurrently seek protection in up to 84 countries. While the protection you have in foreign countries will likely not be as strong as that in the U.S., this is an efficient and effective tool for obtaining broad protection of your property rights.

    What Constitutes As A New York Trademark Infringement?

    After discussing the foundational aspects of trademark law and the importance of registration, it is time to come full circle and cover trademark infringement.
    Generally speaking, infringement occurs when someone uses another entity’s trademark in an unauthorized manner, in connection with similar goods and services, thus causing a “likelihood of confusion” among consumers.

    When an infringement case is brought to court, the judge will determine the likelihood of confusion by measuring several factors, including but not limited to:

    1. Strength of the trademark
    2. Similarity of the trademarks
    3. Similarity of products being marketed by the marks
    4. Proximity of the marks
    5. Similarity of marketing channels used by the marks
    6. Actual evidence of consumer confusion
    7. Intent of the defendant
    8. Style of the typical consumer
    What Constitutes As A New York Trademark Infringement?

    What remedies are there for trademark infringement or dilution?

    Fortunately, there are quite a few remedies for those dealing with trademark infringement or dilution. Depending on the resilience and knowledge of the legal team, plaintiffs can be entitled to injunctions, monetary relief for profits, and triple damages from the non-owner acting in bad faith.

    How do I avoid trademark infringement and dilution?

    It is critical to your success in the business world to take the time for thorough trademark research before committing to your chosen name and brand. This can be done by yourself, or by hiring a reputable New York trademark attorney. Hiring a professional to perform the trademark search will not only free up your time to focus on other aspects of growing your business and brand, but will ensure an even greater chance that you will not be the victim of infringement claims in the future. If you are already using a trademark that could be considered infringement, contact our attorneys today and we will help you determine the best steps moving forward.

    “Likelihood of Confusion” Factors

    As mentioned above, the factors used by courts to determine “likelihood of confusion” among consumers are not limited to the list shown. While it is true they are the most commonly weighed factors, the federal court system evaluates a multitude of other factors to determine if the unauthorized use created actual confusion for consumers.

    The factors used by courts are so widespread and unique to each case that it is difficult to say from a legal standpoint how an infringement case will progress. The circumstances surrounding each case have a direct influence on the judge’s decision, and every claim is different. While the use of an identical mark with a similar product is a cut and dry infringement, using a similar term with a completely different product would not hold up as a valid infringement claim. The majority of cases fall somewhere in between the ends of the spectrum, with plenty of gray area and complexities. Your best chance at winning an infringement claim is to assemble a reputable, experienced legal team that can argue your case strategically and confidently.

    The nature of your mark will have a direct influence on its performance in the market and in turn will influence the legal protection it is entitled in the courtroom.

    In evaluating the strength of the mark, courts will consider both conceptual and commercial strength. Conceptual strength refers to how distinctive and unique the mark is. The more fanciful a mark is (e.g., Exxon, Kodak, and Xerox), the greater the probability of the mark being a strong mark that deserves protection. When a mark is not unique (e.g., Apple, Lotus, Sun) and commonly used across multiple services, it is considered weak. Commercial strength, on the other hand, is determined based on a business’ number of sales, advertising expenses, and scope of advertising. For example, even though Apple’s mark might be considered weak in terms of conceptual strength, it is likely still strong for determining “likelihood of confusion” because of its commercial strength.

    Similarity of the marks is measured by sight, sound, and meaning. It is not sufficient for a business using a similar mark to change around a few letters or a few colors if the mark still sounds and looks the same.

    Similarity of products and services does not necessarily mean that the products are in the same broad industry, but that the products under each business might be connected in the mind of the average consumer. If the products are in fact competing within the same industry, then this factor weighs in favor of “likelihood of confusion.” If the products are somewhat related, but are not competitive, then this factor will not be relevant. If the products do not relate at all, then this factor weighs against finding a “likelihood of confusion.”

    When two parties are operating in completely different markets and have little possibility expanding and bridging that gap, the courts will weigh this factor against finding a “likelihood of confusion.” However, this factor is losing weight as businesses target broad groups of consumers over social media and internet advertisements.

    Courts generally measure similarity of the marks through the lens of how they are encountered by consumers in the marketplace. Evidence of similar marketing channels includes the mediums by which the parties advertise (billboards, internet ads, commercials, etc.) and where each business’ products are found online or in stores.

    Courts rely heavily on direct evidence of actual confusion in determining whether there is a “likelihood of confusion.” However, such evidence is only sufficient if it also suggests increased confusion rather than mere past confusion that has since settled. If a plaintiff presents significant evidence of actual confusion that extends over a substantial period of time, then this factor will weigh in favor of finding a “likelihood of confusion.”

    If non-owner/defendant parties were not aware of the plaintiff’s mark, then they can always argue that they acted in good faith, and this factor will weigh in their favor. However, if the plaintiff can provide evidence that the defendant knew about the mark and acted with intent, then his factor will weigh in favor of finding a “likelihood of confusion.”

    Courts have frequently found that sophisticated buyers are less likely to be confused by similar marks. In many cases, the courts have held that consumers of more expensive goods and services make such decisions to purchase with a higher degree of care. For example, a consumer purchasing a car or computer will be a more sophisticated customer than a consumer who purchases a burger and fries.
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    What Is Trademark Dilution?

    Trademark dilution occurs by blurring or tarnishment, and is commonly lumped together with infringement, as two of the most commonly seen offenses involving tradenames. Simply put, dilution occurs when the original mark is blurred or tarnished by the unauthorized use of a newer, similar mark. Both infringement and dilution claims involve one entity exploiting the mark of another, but the difference lies in the reaction of the consumer. In most New York trademark infringement claims, there are two similar marks from different entities that represent similar things, which is ultimately confusing to consumers. For legal assistance regarding dilution claims, consult with Denton Peterson, P.C.

    “Famous” Prerequisite

    It is important to remember that dilution claims are only valid when the original mark has been determined to be famous. This is a decision made solely by the courts through a number of factors, including:

    1. The duration, extent, and geographical reach of the mark’s advertising and sales
    2. Actual recognition of the mark
    3. Whether or not the mark is registered with the US Patent and Trademark Office
    4. No “niche” fame
    5. The degree of distinctiveness between the two marks

    An important point to note here that trademark dilution claims being brought to the New York state courts do not require the original mark to be famous in order for the claim to be valid. But, if federal courts determine the original mark is, in fact, famous, the dilution claim can be brought against another entity for any unauthorized use that ultimately dilutes the distinctive quality of the original. This is also known as “blurring” or “tarnishment”.

    Dilution Lawsuit

    Blurring

    Dilution by blurring is what happens when the distinctiveness of the original famous mark is impaired (or blurred) by association with a similar trademark or tradename. Once a claim has been brought to court, the judge will decide if blurring has actually occurred by analyzing the situation surrounding the offense. The factors used include:

    1. The degree of similarity between the mark or trade name and the original trademark
    2. The degree of the famous mark’s inherent or acquired distinctiveness
    3. The extent to which the owner of the famous trademark is engaged in substantially exclusive use of the mark
    4. The degree of recognition of the original famous mark
    5. If the user of the trademark intended to create an association with the original
    6. Any actual association (intended or consequential) between the new trademark and the original

    Tarnishment

    Similar to blurring, dilution by tarnishment occurs when a famous trademark’s reputation is harmed (or tarnished) by association with a similar mark or name. Though trademark tarnishment can be accomplished in a variety of ways, such as linking the mark to sex, drugs, crime, or low quality goods, the ultimate result is that the original trademark is degraded. Consumers then associate the original entity with the new trademark, thus decreasing the overall value of the mark. Contact Denton Peterson for any questions regarding trademark tarnishment.

    Defenses Against Trademark Infringement or Dilution Claims

    Rest assured that if you are the victim of trademark infringement or dilution, a reputable legal team can put up a strong defense for your case! Ultimately, having a knowledgeable, confident trademark attorney on your side is critical for the success of your trademark. Remember that any claim brought by the plaintiff requires evidence to be shown, and the defendant will also have an opportunity to provide evidence challenging the plaintiff’s claims. Continue reading to learn more about which claims a defendant should challenge.

    Does the Defendant have prior rights?

    • Are the Plaintiff’s rights limited geographically?
    • Is the Plaintiff’s mark not actually distinctive and therefore not protected?
    • Has the mark been abandoned by the trademark owner through non-use or losing trademark significance?
    • Is the Plaintiff’s mark functional?

    Even though the Plaintiff ultimately bears the burden of proving a likelihood for confusion or dilution in court, a Defendant can counter by presenting an argument that confusion or dilution is actually unlikely.

    In trademark law, fair use is much narrower than it is in copyright law. Fair use by a non-owner of a mark can fall under one of two categories: nominative fair use and descriptive fair use. To qualify as fair use under either category, the non-owner must first act in good faith. In nominative fair use, a non-owner references a trademark in order to identify the actual goods and services that the trademark holder identifies with the mark.

    Generally, nominative fair use is permissible when (1) the service or product in question is not otherwise identifiable without using the actual mark, (2) only so much of the mark as is reasonably necessary to identify the service or product is used, and (3) use of the mark does not suggest any kind of endorsement by the owner of the trademark. Descriptive fair use allows another’s use of an owner’s trademark in order to describe the user’s services or products.

    In determining whether a non-owner’s use of a trademark is a parody, courts typically examine the extent to which the non-owner effectively differentiates the original product or service from the claimed parody as well as how much they Involve humor, satire, or ridicule of the plaintiff or its goods or services. The idea here is that if the use is clearly a parody, then it is unlikely to cause confusion or dilution among consumers.

    This statutory provision applies only when the parody is a fair use, where the non-owner is not using the mark as a designation of source for its own goods and services.

    A non-owner is likely to prevail in a trademark infringement or dilution claim if it can show that its activities involve artistic or expressive work, that using the owner’s mark is relevant to the work, and that the mark is not explicitly misleading to consumers.

    Contact Our Trademark Lawyers Today

    Call us today to learn more about how a New York Trademark attorney can help your business





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