Trademark Registration

Trademark Licensing

Trademark Litigation

Daliah Saper, Principal Attorney at Saper Law Offices discusses how to obtain a trademark to protect your business. 

A trademark is one of your business' most important assets. That's why it's important to take measures to protect that trademark on a national level. 
The steps to do so involve first a trademark search of the United States Patent and Trademark register to insure that another business has not already trademarked something confusingly similar to the brand that you are seeking to trademark. 

Assuming the search comes back positive, meaning there are no obvious problems, we will then prepare the application.  Working with you to craft the description of goods and services and the class that is most appropriate for the products and services you are selling. 

We will then submit the application electronically; where it will then get reviewed by a lawyer who works for the United States Patent and Trademark Office. 

After some correspondence the mark will hopefully move forward to what's called publication and then ultimately you will have, again if there are no oppositions by a third party, a certificate that affords you that circle r which means you have trademark protection throughout the United States. 

The entire process can take up to a year, but your rights will always revert back to the earliest of your use or the filing of the application. 

If you have any other questions or more specific inquiries regarding how the process will impact your business, just give us a call. 

312 -- 527 -- 4100
saperlaw.com

Daliah Saper, Principal Attorney at Saper Law Offices discusses how to obtain a trademark to protect your business.

A trademark is one of your business' most important assets. That's why it's important to take measures to protect that trademark on a national level.
The steps to do so involve first a trademark search of the United States Patent and Trademark register to insure that another business has not already trademarked something confusingly similar to the brand that you are seeking to trademark.

Assuming the search comes back positive, meaning there are no obvious problems, we will then prepare the application. Working with you to craft the description of goods and services and the class that is most appropriate for the products and services you are selling.

We will then submit the application electronically; where it will then get reviewed by a lawyer who works for the United States Patent and Trademark Office.

After some correspondence the mark will hopefully move forward to what's called publication and then ultimately you will have, again if there are no oppositions by a third party, a certificate that affords you that circle r which means you have trademark protection throughout the United States.

The entire process can take up to a year, but your rights will always revert back to the earliest of your use or the filing of the application.

If you have any other questions or more specific inquiries regarding how the process will impact your business, just give us a call.

312 -- 527 -- 4100
saperlaw.com

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Daliah Saper, Saper Law - Protecting Your Trademark

We are located in Chicago, but we represent trademark clients throughout the world.

Saper Law has 18 years of experience in all aspects of trademark registration, protection, and enforcement. Saper Law has successfully registered hundreds of trademarks and has litigated nearly two-hundred intellectual property cases in State and Federal Court. We have helped clients like software companies, web-based businesses, pharmaceutical companies, restaurants, fashion designers, magazine publications, education providers, artists, and a wide range of consumer products with their trademark needs.

Trademark Registration Process

The first step to getting a trademark registration is deciding whether the trademark you want to use is a good one. Strong trademarks are made-up words (for example, Lululemon). Weak or unenforcable trademarks are generic words (for example, PEN for pens). In between, are arbitrary, suggestive and descriptive trademarks. Confused? Don’t worry. It’s our job to explain this all to you!

After the initial trademark consultation, we will conduct a search of the USPTO trademark docket. The purpose of our search is to see if any already applied-for or registered trademarks would block your trademark application. We tell you our results in the form of a comprehensive trademark search report.

If the trademark search report is positive and we believe your trademark has a good chance of making it through to registration, we will begin preparing the trademark application for filing. As part of that process, we will advise you on whether or not you should file the trademark application on an intent to use basis or a use basis. Then we will determine the proper trademark class of goods. We will help you craft the most appropriate description of your trademark’s goods and services. Finally, we will add any appropriate trademark disclaimers.

Once you submit the trademark application to the USPTO, an attorney that works for the government will review your trademark application. If there are no issues, she will move it forward to publication and ultimately registration. Alternatively, a trademark examiner may issue a trademark office action if they believe there is a technical or substantive reason to stop your mark from getting registered. Common trademark office actions include, but are not limited to: your mark being too confusingly similar with an existing application or registration, the mark lacking sufficient distinctiveness, being merely functional, generic, or it potentially being confused with another registered mark. Your Trademark Office Action Response is your opportunity to respond to the Examining Attorney’s objections and convince them to approve your mark for registration.

Once the examining attorney has reviewed the application and any office actions are resolved, the examining attorney will publish the mark for opposition. There is not opposed, or the applicant ultimately prevails in an opposition, the registration certificate will be issued—unless the application was filed based on a bona fide intention to use the mark in commerce, in which case a “Notice of Allowance” will be issued permitting the applicant time in which to submit evidence of use.  If the applicant loses the opposition, its application will be deemed abandoned.

This happens once the trademark has cleared the USPTO trademark examiner’s review. If the trademark has not been used yet, the trademark examiner will issue a Notice of Allowance. From there, Saper Law works closely with the client to file a trademark statement of use.

Once you own a trademark registration, you must do a few important things to maintain that registration and keep it alive. First, you must use your trademark in commerce. Additionally, you must file certain documents at regular intervals to show that you’re continuing to use your trademark. If you don’t file these documents before the deadline, your registration will be canceled or will expire, or your extension of protection to the U.S. will be invalidated. Saper Law can help with keeping track of important deadlines for your maintenance documents and filing those at the appropriate times.

Benefits of Working With an Experienced Trademark Attorney

There are several advantages to working with a Saper Law trademark attorney. Trademark law can be complex and having an experienced attorney on your side can help ensure that your trademark is properly protected. Here are some of the benefits of working with a Saper Law trademark lawyer:

  1. Experience and knowledge. A trademark lawyer will have a deep understanding of the law and how it applies to your situation. This can be invaluable in ensuring that your trademark is properly registered and protected.
  2. Protection. A trademark attorney can help you protect your trademark from infringement. They can also help you enforce your rights if someone does infringe on your trademark.
  3. Peace of mind. Working with a trademark lawyer in Chicago, Illinois can give you peace of mind, knowing that you have an expert on your side who is looking out for your interests.

If you are considering trademark registration, be sure to contact the experienced Trademark Attorneys at Saper Law Offices in Chicago, Illinois.

Trademark Lawsuits Handled by Saper Law

In trademark litigation, the three main claims are trademark infrigment, unfair competition, and trademark dilution. Saper can assist you with bringing or defending against these claims.

In Federal Court, Saper Law has litigated nearly two hundred intellectual property & technology cases. Similarly, Saper Law has extensive experience in litigating State Trademark and Unfair Competition Cases. Here are just a few examples of the types of cases we’ve handled before:

  • Represented a retailer and achieved a favorable settlement in federal litigation involving trademark and trade dress infringement, patent infringement, and counterfeiting claims.
  • Evaluated a proposed settlement to trademark infringement litigation on behalf of a client interested in purchasing the company that was subject to the infringement claims.
  • Counseled a furniture manufacturer in responding to a cease-and-desist letter alleging trademark infringement.
  • Responded to a threat of an opposition proceeding involving pharmaceutical trademark and resolved the matter favorably for our client.
  • Enforced a client’s trademark rights in preventing a former employee from using a similar trademark in starting a competing company.
  • Assisted a fashion designer in evaluating the strength of trademark rights and instances of possible trademark infringement.
  • Filed and prosecuted a portfolio of trademark applications and prepared trademark assignment agreements for a software company.
  • Succeeded in an opposition proceeding against a former band member seeking federal registration of the band name through the use of falsified specimens.
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