Trademark Registration

Trademark Office Action

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 17 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.

Our Trademark Law Services Include, but are not limited to:

    • Drafting and responding to cease-and-desist letters
    • Drafting and negotiating trademark license agreements
  • Initiating lawsuits in State and Federal courts to enforce your trademark rights
  • Defending against trademark infringement, trademark dilution, and unfair competition claims in State and Federal courts
  • Litigating breach of trademark license agreements.

Path to Trademark Registration

  • 1

    Trademark Selection: a discussion about the strength of your proposed trademarks. Gauged on the following scale: Fanciful (Strongest), Arbitrary, Suggestive, Descriptive, and Generic (weakest/no protection).

  • 2

    Trademark Search and Opinion Letter: Evaluates the strength of your mark after the initial trademark consultation through a search of the USPTO trademark docket to determine if any already applied-for or registered trademarks would block your trademark application, then issue you a letter describing those results.

  • 3

    File the Trademark Application: We work closely with all our clients to ensure that the proper forms are completed, the correct date of first use is listed, the class of goods or services are appropriate, there is no need to add any disclaimers, and whether it is best to file the application as a use-based trademark application or as an intent-to-use application.

  • 4

    You may receive a Trademark Office Action: issued by a USPTO Examining Attorney who, in reviewing your application, has taken issue with the applied-for-mark. Common trademark office actions include: the mark lacks sufficient distinctiveness, the mark is merely functional, the mark is generic, the mark is likely to be confused with another registered mark, and more. Your Response is your opportunity to respond to the Examining Attorney’s objections and convince them to approve your mark for registration.

  • 5

    Formal Trademark Registration – Hooray! 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.

Protecting and Enforcing Your Trademark Rights

Saper Law helps you enforce your Trademark rights against competitors by drafting demand letters or cease and desist letters. A Trademark Demand or Cease and Desist Letter is a pre-suit attempt at getting a third party to stop infringing or unfairly competing against your trademark rights. Trademark rights are assessed on a use it or lose it basis, so we advise our clients to use monitoring services to keep up to date with any threats against their trademark rights. Once notified about a potential trademark infringement or unfair competition issue, contact us right away so that we can start enforcing your rights. If that does not work, then the situation may progress into State or Federal Trademark Litigation.

You must do these things to maintain your registration:

  • Continue to use your trademark in interstate commerce.
  • File your registration maintenance documents with the USPTO, and pay the required fees, at the required times.
  • Keep your correspondence information updated.

Failure to use you trademark in interstate commerce, and/or failure to submit your maintenance documents and fees by the deadline, may lead to the cancellation or expiration of your trademark. 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.

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Trademark Lawsuits Handled by Saper Law

In trademark litigation, the three main claims are trademark infringement, unfair competition, and trademark dilution. Saper Law 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.