Trademarks Registration And Infringement Litigation; Counterfeiting Litigation
As part of our intellectual property (IP) practice, Houston Harbaugh, P.C., assists entities in Pittsburgh and throughout Pennsylvania with the trademark application and registration process and with enforcement and protection of trademark rights. We apply for and prosecute Trademark applications in the USPTO (United States Patent and Trademark Office). We take a proactive approach, anticipating potential issues before they arise to avoid unnecessary delays or denials in the registration process. As experienced litigators, we are well positioned to represent clients in trademark infringement lawsuits and in the growing area of counterfeiting litigation in federal courts. There has been a proliferation of mass tort litigation in counterfeiting claims with these primarily Federal Court claims spanning the full range of IP claims for patent infringement, trademark infringement, Lanham Act violations, counterfeiting and knock-off claims and mass business tort claims against Amazon and Alibaba sellers in particular. Our IP department is well prepared to file, prosecute or defend these trademark and counterfeiting mass claims.
What Is a Trademark?
A trademark or service mark includes words, names or symbols (or any combination of them) that are used or intended to be used to identify and distinguish goods or services from different sellers and to indicate the source of those goods and services. A Trademark is meant to be an identifier of the “source” of a product. It is meant to tell the consumer that he or she is buying Ketchup from Heinz® or a personal computer from Apple®. It give a consumer reassurance that the purchase is from the real deal manufacturer and is not a generic or imitation product. Patents generally protect “inventions” in products, software, mechanical ideas and the like. Trademarks protect a word, name, phrase or symbol being used to identify “source” of manufacturer or sale of a product. Copyrights protect the “expression” of any idea like in a book, movie or poem. Each of these is a distinctive type of Intellectual Property (IP).
Trademarks generally fall into one of a few categories and marks must meet certain requirements to qualify for trademark status and protection. To qualify for trademark registration, status and protection, a mark must be at least suggestive, fanciful or arbitrary in character and nature. If a mark is merely “descriptive” it may not qualify for trademark protection. If the mark is considered “generic” it is never meant to get trademark protection. Here are more detailed descriptions of the the types and classifications or marks:
- Fanciful marks (those with no dictionary or other known meaning) or Arbitrary marks (actual words with a known meaning that has no relationship with the goods or services protected) are inherently distinctive and the strongest and easiest to protect;
- Suggestive marks (those that suggest, but do not describe qualities or a connection to the goods or services) are generally registrable and considered strong marks;
- Descriptive marks (words or designs that describe the goods or services) are considered weaker and more difficult to protect or register;
- Generic marks (common, everyday words for concepts or names for goods or services) are never meant to be registrable or enforceable.
How Do You Register a Trademark?
As part of our intellectual property services, we work with our clients to determine whether a desired mark is registrable, and if so, we help them prepare, file and obtain their respective marks through the USPTO.
In particular, in order to determine whether a particular mark is available and protectable, we conduct a thorough search of the internet and the Trademark Electronic Search System (“TESS”), which is intended to determine whether any other person or entity currently owns (or has applied to own) a registered mark that is identical or substantially similar to the mark sought by our client. We can also partner with outside agencies to do a more detailed worldwide search for us of the mark or something similar.
We also search the USPTO’s goods and services manual to determine the classes of goods or services to which the proposed mark relates. We then prepare and file an electronic application for review by the USPTO.
The Trademark Application Process
During the application process in the USPTO, we also respond to USPTO office actions issued by trademark examiners in the USPTO, in order to try to overcome issues that an examiner may find with respect to the desired mark.
For example, an examiner may refuse registration on the grounds that there is a likelihood of confusion between the desired mark and a pending application or existing mark owned by another party.
As another example, an examiner may determine that the desired mark is weak, i.e., descriptive of the goods or services, which would make the desired mark difficult for the client to use and protect against potential infringers.
Trademark Trials and Appeals
We also represent our clients in matters before the Trademark Trial and Appeal Board (“TTAB”), which has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.
The Benefits of Federal Registration of a Trademark
Federal registration of a mark is not required; however, owning a federal registration provides certain advantages, including a legal presumption of the ownership of the mark and the exclusive right to use the mark nationwide, public notice of ownership of the mark, and the ability to bring an action concerning the mark in federal court.
Trademark Infringement and Counterfeiting Litigation
In addition to prosecuting trademarks for our clients, the attorneys at Houston Harbaugh, P.C., also represent our clients in litigation matters involving trademarks. We have represented various clients as both plaintiffs and defendants in trademark infringement cases in federal court and we are involved in the growing number of counterfeiting cases being brought in Federal Courts under patent, trademark, copyright and other IP categories.
We have represented manufacturers and sellers in both initiating litigation or defending litigation in the Trademark arena, We have represented small businesses who have been attacked by large corporations for claims of trademark infringement or counterfeiting. We have defended franchisees that was being sued for trademark infringement and for alleged violations of the franchise agreement, and we have represented companies in both initiating and defending the proliferating number of counterfeiting claims being brought related to selling of products on giant internet marketplaces like Amazon, Alibaba and others.
In another matter, we represented a trademark owner that sued a competing entity for using and trading on a name that was identical to our client’s mark. Our client obtained a consent order from the defendants that they would not use the mark in any capacity and also recovered a favorable settlement. We also represented a client in a TTAB proceeding where another user contested the client’s right to use the trademark.
Protect Your Brand. Talk To Us About Trademark Representation.
Houston Harbaugh is a trusted name in intellectual property representation. Our trademark attorneys help clients navigate intellectual property including trademarks and copyrights by providing them with the knowledge and information needed to make informed decisions. For more information, call 412-281-5060 and ask for our intellectual property department or send our intellectual property attorneys an e-mail by completing the contact form on this website.