Registering a Trademark? Hire an Experienced Trademark Attorney

The responsibilities of a trademark attorney include advising on the adoption and selection of new trademarks; filing and prosecuting applications to register trademarks; advising on the use and registration of trademarks; handling trademark oppositions, revocations, invalidations and assignments; and advising on trademark infringement matters. Because patents, trademarks and copyrights all fall under the broad area of intellectual property law, if you plan on obtaining a trademark, patent or copyright it is in your best interest to consult with a qualified trademark attorney, patent attorney or copyright lawyer to help you properly file for protection of your intellectual property. If you plan on licensing someone else's copyright, trademark, patent or other form of intellectual property, a trademark attorney can assure that everyone's legal rights are protected under intellectual property law.

Find a trademark attorney that's right for you and your situation. Because registering a trademark requires extensive knowledge of trademark law and procedures it is highly recommended that you use the trademark services of a trademark attorney. A trademark attorney can advise you on many aspects of your trademark filing and on trademark services.

A trademark attorney should be used when choosing a product name trademark or a trademark slogan. Ideally, your trademark attorney would order a trademark search report. Your trademark attorney should then counsel you on the results of the trademark search and whether it is safe to proceed with using the proposed mark. He should also counsel you on any questions you may have, such as how to get a trademark, the cost to register a trademark and how to trademark a logo or trademark slogan. In summary, a trademark attorney will be able to counsel you on all facets of registering a trademark and trademark filing. You may be able to learn about trademark cost, trademark searching, an online trademark search, and the steps to get a trademark by reviewing our trademark articles.

Additionally, a trademark attorney can advise you on how to handle certain situations such as receiving a cease and desist letter. A cease and desist letter is written when a party believes their trademark is being infringed upon. A cease and desist letter must be evaluated by a trademark attorney who will provide you with trademark assistance.

Yet how should you choose a trademark attorney? To begin with, never pick your trademark attorney based solely upon a lawyer referral service or advertising. Lawyer referral services generally do not evaluate the abilities of the attorneys in their listings, but simply accept any attorney willing to pay the membership dues of that referral service. The referral service then refers clients to these "trademark attorneys" on a rotating basis. Usually It is almost always the attorney's own subjective determination that he or she is a "trademark attorney," yet this attorney may have little experience and knowledge of trademark law.

Advertising is also a poor method for finding a trademark lawyer. Many trademark lawyers who extensively advertise run their practices like factories, with impersonal service and an army of paralegals preparing your trademark application. Instead, try to find a trademark attorney who provides individual attention to your trademark matters, including every aspect of trademark searching and trademark filing.

If you like a certain phrase or logo but you aren't ready to use it, you may be able to reserve it for future use, which keeps someone else from taking it. You can acquire rights to the trademark by filing an "intent-to-use" (ITU) trademark registration application with the U.S. Patent and Trademark Office (USPTO) as long as someone else hasn't actually started using the trademark. However, even if you file an intent-to-use trademark application, the mark will not actually be registered until it is used in commerce.

A trademark attorney is often regulated as a profession in which case they must pass a series of examinations, comply with other requirements, and observe professional ethics and standards in order to maintain formal registration as a trademark attorney

Gust A. Lenglet has been an accountant and financial advisor for many years. He is President and CEO of HBS Financial Group, Ltd. and offers online tax filing through his many web sites. He is also an accomplished author in the tax, legal, and education fields.

Do You Need a Trademark?

Copyright (c) 2006 Elias Stassinos

Here's what you need to know about trademarks.

Even though all starting businesses need one or more business licenses and tax ids before legally starting business operations, another consideration when starting a business is the trademark of the business name, product or service. After reading this article you will know what is a trademark and whether you need to register one.

What is a Trademark?

A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs. This word, symbol or design identifies and distinguishes a company's products or services from products and services of another company. Note that a trademark of a product is the mark of the product itself or a mark associated with the offering of a product. Similarly, a trademark of a service is the mark in connection with the services.

Do I need to register a trademark?

Trademark registration is not required but it will help you in case the use of the mark is challenged. You can establish rights in a mark based on legitimate use of the mark. "Legitimate use" in general means that the name, mark or symbol used in connection with a bona fide offering of goods or services within a specified geographical region. Thus, if, for a period of time, you use the mark to sell toys in the Los Angeles Metropolitan Area, you acquire rights to the mark selling toys in that particular area. Or, if you do business nationwide, you acquire rights to the use of the mark, nationwide.

You can establish rights to a trademark if you register the trademark at the federal or state level. That will establish that you are commonly known by the registered trademark. If it is a name, you can establish that you are commonly know by that trademark name if you register a corporate name as a corporation or the trade name as a "doing business as" ("DBA"). In addition, registering a trademark provides constructive notice to the public, and a presumption that you are the owner or the mark and you use it in connection with the goods and/or services listed in the registration.

Federal trademark registration allows you to to bring an action concerning the mark in federal court. The trademark registration is also a basis for registration in other countries. You can also file with the U.S. Customs Service to prevent importation of infringing foreign goods. Keep in mind, however, that you any time you claim rights in a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim, regardless of whether you have filed an application with the United States Patent and Trademark Office. However, you may use the federal registration symbol "?" only after the United States Patent and Trademark Office actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration.

How do I file a Trademark Application?

If you hire a trademark attorney, you normally fill out a secure online trademark application form. I recommend hiring an attorney because if you prepare and submit an application, you must comply with all requirements of the trademark statute and rules. If you choose to appoint an attorney to represent your interests before the United States Patent and Trademark Office, the United States Patent and Trademark Office will correspond only with your attorney.




Elias Stassinos, Esquire is a trademark and incorporation attorney that has assisted thousands of small business owners and entrepreneurs launch their first business enterprise. Attorney Elias Stassinos, Esquire is also a corporate legal counsel for businessnameusa.com online legal filing service .

US Trademark Searches

Trademarks are names, phrases, logos or images used to uniquely identify your company and your products and services. Because trademarks are used in businesses, there are rights you can claim to protect your company, and there are governing bodies that regulate the use of your trademark. In the United States of America, the governing body called United States Patent and Trademark Office (USPTO) is the governing body that makes your trademark and patented product unique. They guarantee that no other company can carry the same name, logo or product without proper approval from you.

Before any company is given approval for a trademark application, the USPTO scrutinizes the application, making sure that the trademark filing is unique and is in no way identical to any existing trademarks. Their primary task is to reject an application if there is the slightest possibility that any copyright infringement is or can be violated. In fact, a few years ago, a 17 year old boy named Mike Rowe registered and operated the web site www.mikerowesoft.com.

When the software giant, Microsoft, discovered this, they filed to move that the site be shut down immediately. The courts granted in favor of Microsoft, stating that it would be damaging and confusing to the software company. Another well-publicized lawsuit over a URL address was between World Wildlife Foundation with the site www.wwf.org and the World Wrestling Federation bearing the site address www.wwf.com. The former sued the latter to drop the URL address stating that the practices of the former are detrimental to the image of the wildlife foundation. The World Wildlife Foundation was granted favor by the courts and World Wrestling Federation had to change their name to World Wrestling Entertainment and refrain from using the acronyms WWF.

Trademark Search provides detailed information on Trademark Search, Free Trademark Searches, Online Trademark Searches, US Trademark Searches and more. Trademark Search is affiliated with Free Patent Searches.

How Do You Get a Trademark?

While some individuals choose to hire attorneys to walk them through the process of applying for a trademark, others choose to use a trademark research firm, which can cost thousands of dollars less. It is important to remember when hiring someone to do your research that they not only search through Federal and State trademark records for name similarities, but also Common-Law listings.

Many people are under the impression that they can perform their own comprehensive search utilizing the help of search engines, in addition to the United States Patent and Trademark Office (herein referred to as the USPTO). While it is a good idea to become familiar with the USPTO website, individuals sometimes believe that the data they collect from this website is truly representative of the trademarked names which are currently being used. The USPTO?s website is never a thorough way to search the name you?re hoping to trademark! The website is not updated regularly, and in addition to this, you can ONLY search Federal trademark records on the USPTO, NOT State trademark records OR Common-Law records!

It is imperative to search Federal and State trademark records AND Common-Law records because it is the only way to ensure that your search was done in a comprehensive manner. Federal and State trademarks records are looking at businesses that have either a federally registered trademark, or those who have registered a state trademark. When these records are searched, any federal or state trademarks that are either pending or registered will be visible to the researcher. Common-Law records examine those businesses who are in business but not have necessarily filed for a Federal or a State trademark. When Common-Law records are searched, thousands upon thousands of newspaper articles, city business listings, periodicals, incorporation listings, DBAs, LLCs, etc. are examined for any name similarities. Although such businesses do not have a trademark, they might have "first-use rights" to the name. This could mean that they still have ownership over the name within their trade area AND the capacity to take legal recourse if they determine that your name and business is the same, or similar.

If the research proves clear, the next step is to prepare and file the application. This can be done by anyone; however, the USPTO is very particular about how the application is prepared, so it's best to leave it to professionals.

Three Steps -- Federal & State trademark search, US National Common-Law search and Application Preparation & Filing ? and the Trademark could be YOURS!

Marit Lee is a Researcher for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Marit directly at 800.550.1520.

To Successfully Enforce Your Patent Do Not Let Form Triumph Over Substance While Writing The Patent

Chemical and pharmaceutical companies protect their investment in research and development and the future of the companies by securing patents on their inventions. Patents help you resist competition. Success or failure of the company often depends on the strength of the patent. The words in the patent document must meet rigid formality requirements under the patent laws. Even if the invention covered by the patent is a fantastic one, the court will throw out the patent if it violates any one of the formality requirements.

The patent document is normally divided into several sections, for example, one section describing the background of the invention, another section describing the invention as a summary, another section describing the drawings of your invention, yet another section describing in detail how to make and use the invention, and a final section that lists various aspects of your invention in numbered sentences, typically from 1 to 20. These numbered sentences or claims form the most important section of the patent.

It is the claims that define the invention. When a competitor wants to design around your invention, he will look to the language of the claims. When you sue someone for infringing your invention, the court will look at the claims in your patent. It is clear that the claims are of paramount importance.

The patent contains independent claims and dependent claims. Dependent claims will refer back to an earlier claim. Independent claims do not refer back to any other claim. For example, dependent claim 2 will refer back to independent claim 1. When dependent claims refer back to other claims, they should meet certain rigid formality requirements, one of which is that the dependent claim cannot be broader in scope than the claim it refers back to. Thus, for example, if claim 1 describes a drug in acid form or its salt form, claim 2 can describe the drug in salt form. However, if claim 1 describes only the acid form, claim 2 cannot describe the salt form. If it so describes, then claim 2 will be broader than claim 1, which is forbidden under the patent laws.

In a recently concluded battle between pharmaceutical giant Pfizer Inc. and generic drug maker Ranbaxy Laboratories, the generic drug maker was able to knock out a patent that covered the blockbuster drug Lipitor. The patent claim that Pfizer asserted against Ranbaxy was held invalid by the high court. Here, Pfizer asserted claim 6 describing a calcium salt of the drug against the opponent. Claim 6 referred back to claim 2 which described an acid form of the drug but not the salt form. The high court held that claim 6 cannot properly refer back to claim 2. The harsh result faced by Pfizer is somewhat surprising because it was believed by many that a court would not look at the form over substance, just as the lower court did. The lower court was reluctant to find fault with the patent claim.

The high court opinion emphasizes the fact that filing a winning patent requires careful consideration of various legal concepts including the intricate formality requirements of the patent law. Copyright 2006

Dr. Xavier Pillai specializes in patent law matters involving chemistry, pharmaceuticals, biotechnology, and polymers; see http://www.leydig.com/Attorneys/AttorneyDetail.aspx?AttorneyID=160.

WikiPatents Enables Community Patent Review

"Bad patents" cost infringers--and, ultimately, all consumers--millions, if not billions, of dollars every year. Yet, "good patents" often go unrecognized. Until now, there has been no web site encouraging large-scale, organized public comment to clarify the true merits and value of U.S. patents.

WikiPatents.com, officially launched August 28, 2006, addresses these problems. WikiPatents' goal is to strengthen the patent system by clarifying whether a patent really protects a new idea and how much that idea is worth. The United States Patent & Trademark Office is very effective at reviewing patents given its limited time and resources. WikiPatents provides patent examiners at the Patent Office and the entire patent community another powerful resource that will add reliability, clarity, and efficiency to the patent process.

WikiPatents is a free-access web site and database containing millions of patents that allows the interested public to discuss, rate, and vote on published patents and, soon, pending patent applications. Most notably, users can add prior art references (publications that closely relate to and predate the patented technology), as well as comment and vote on the relevancy of prior art. Users can also comment and vote on patent value, licensing, technical, and other issues for each patent.

WikiPatents seeks to become the crossroads where patent examiners, inventors, investors, patent attorneys, and litigants join to discuss the merits of patents and patent applications.

Peter Johnson and Kevin Hermansen are co-founders of www.WikiPatents.com - Community Patent Review, a new free-access web site and database that enables public commentary on published patents

Publish Your Patent Application? ... or Not.

Infringement and Provisional Damages

There is no action for infringement of your patent until it actually issues. However, through publication of your application, it may be possible to obtain provisional damages for the time between publication of the application and the issuance of the patent. Once your patent issues, infringement can give rise to treble damages and an award of attorney fees. During the phase from publication to issuance, only reasonable royalty damages can be awarded. Furthermore, a claim must survive and be substantially identical from publication to the issued patent.

Provisional damages require notice. Notice is achieved by both publication and provision of actual notice. Thus, you still have the burden of detecting infringement and of providing notice of your application to the alleged infringer.

Why You Should Consider Early Publication

An inventor can accelerate the publication process by filing a request for early publication. This can be done at any time and should result in publication within four months of the request. There are two logical times to file such a request: 1) when you first file your application--to gain the maximum published time available, and 2) when you believe an infringement may be taking place. In this latter case, where you have actual evidence of infringement, you can then file a petition to "make special" and hope that the Patent Office will accept the petition and begin examination of your patent application within six months. That way, you will possibly get the benefit of provisional damages, with the patent issuing shortly thereafter with higher damage awards available.

Benefits of Non-Publication

Non-publication keeps 'em guessing. When a patent is filed, the inventor-applicant is entitled, and should, claim "Patent Pending" status. "Patent Pending" means that an application is on file with the Patent Office and is in the patent process. The inventor should mark his product "Patent Pending" and claim such status in any written material related to the invention. So long as the patent application is secret, competitors do not know what the inventor has disclosed or the breadth of the invention being claimed. Once a patent application publishes, competitors can at least determine the maximum scope that is disclosed in the application. However, while they will see the claims presented in the application, competitors still do not know the breadth of the invention claims that might eventually issue in the patent.

The Hazards of Requesting Non-Publication

Until the American Inventors Protection Act of 1999 (effective November 29, 2000), United States patents were kept in secrecy until they issued. Subsequent to the AIPA, inventors can elect to keep their application secret, but only if they will not file in a foreign country or file an application under a multilateral international agreement, such as the Patent Cooperation Treaty. If an inventor later files such a foreign or international application, it can lead to abandonment of the U.S. application unless the non-publication request is rescinded before 45 days after filing the foreign or international application. Thus, extreme caution is recommended before considering non-publication.

C2006, Williamson Intellectual Property Law, LLC; all rights reserved, world-wide. This article, and/or the reading thereof, shall not be construed as offering, containing or receiving of legal advice, and shall not create any attorney-client relationship or privilege. If you are considering protecting your intellectual property, you should consult with an attorney of your choice.

For more information, please visit http://www.trwiplaw.com.

Thomas R. (Terry) Williamson III, Ph.D., Registered Patent Attorney Williamson Intellectual Property Law, LLC 1870 The Exchange, Suite 100 Atlanta, GA 30339 770-777-0977 http://www.trwiplaw.com

An intellectual property law firm providing a full range of services for patent searches, preparation and filing patent applications, trademark searches, preparation and filing trademark and service mark applications, preparation and filing

Technology Asset Services Announces New Patented Technology Solderite Products.

Lead Free Soldering Solution for Printed Circuit Board Assembly.

Technology Asset Services announced today a cost effective solution for manufacturers implementing lead free solder into PCB Assembly. The Solderite? product line has been developed for hand soldering stations. The new patented technology employed by the Solderite? products provide the manufacturer a cost effective solution to lead free solder implementation.

The Solderite? products are specifically designed to help manufactures faced with RoHS Compliance. The implementation of lead free solder has generated a need for soldering tools to withstand the higher temperatures and the corrosive nature of lead free solder. The use of hand soldering is often performed in the final stages of assembly. The product is at its highest value point. The necessity of securing equipment designed to implement RoHS Compliance is of growing concern.

The new Solderite? products address RoHS Compliance by providing substantial changes in the design of the soldering station. The three foremost properties of any soldering station are: Power, Temperature Control, and Soldering Tip. The patented technology and design of the power supply and temperature sensing in these new products produce the fastest temperature recovery time on the market. Specially designed electroplated soldering tips ensure quality soldering and extended tip life.

The tip replacement and cost of lead free soldering has increased the soldering cost to manufactures. The corrosive nature of lead free solder combined with higher temperature has on average cut the tip life of standard soldering tips in half. The manufactures cost has doubled in tip replacement. Standard soldering tips average fifteen to twenty five dollars per tip. The average lifespan of lead soldering tips in an industrial environment averages one week. Manufacturers commissioning several solder stations are faced with significant cost increase when implementing RoHS Compliance.

Solderite? soldering stations have underwent strict testing, from lab, contract manufacturing, and lead free soldering training centers. The tip life has averaged a two to one rate compared to standard soldering tips. The tip replacement cost of the Solderite tips did not exceed the cost of standard soldering tips.

For more information on Solderite Products, including Distribution and Representation opportunities contact Ken Fry or visit http://www.solderite.com/

Technology Asset Services provides solutions for Printed Circuit Board Assembly, and Semi Conductor Industries.

Ken Fry CTO Technology Asset Services, Inc. 515 Hanover Dr. Allen TX. 75002

Trademark a Name - How to Register a Trademark

So, you finally settled on the perfect name for your product or service - it describes the business without being overly descriptive, it tells your customers exactly what you want them to know and it's catchy. That's fantastic! Finding just the right name is vitally important to the success of any product line or service.

Is it required that I register my trademark?

No, not at all. However, registering your trademark, specifically your Federal trademark, does provide you with several advantages:

• The right to use the circle-R symbol as notice to the public about your Federal trademark
• The exclusive rights to the name within your industry across the country
• Establishing brand identity

But what if someone else already came up with that name?

While the name may be unique and distinctive to you, there is a possibility that another party already has prior trademark or common-law rights to the name for your industry. Before you invest time, money and effort into your name, do some research. The first places to check are right at your fingertips - the World Wide Web - and they're free!

Preliminary Search Sites:

• The Trademarks section on the USPTO Web Site
• Your Secretary of State to see if they have a searchable database of names. You can find a listing of all states here
• Major search engines - put your product name in quotes to find exact matches; use keywords with your product name to find relevant hits
• Yellow pages

However, please be aware that this is merely scratching the surface of what's out there. Only comprehensive research will tell you if the name is truly available. But, these links are free & a great place to start, so try them first. If the name appears to be available, then you can move on to getting comprehensive research done by a private company or an attorney.

Ok, so the name is clear; now what?

To register your trademark, you have 2 options - file for a Federal or a State trademark. If you are only going to sell your product or services in 1 state, then a State trademark is the way to go. The trademark form can be acquired through the Secretary of State (see link above). If you are OR will be selling your products or services in at least 2 states, then you're able to file for a Federal trademark. The form can be completed online at the USPTO (see link above).

While anyone has the ability to go online to access these forms,it's strongly recommended to hire a private company or an attorney for the preparation and/or filing of the trademark application.To ensure a successful filing, it's best to leave it in the hands of those with experience.

You found the perfect name - now, make sure it's truly yours!

Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.