How Can I Obtain An Illinois State Trademark Registration? Trademark rights in the United States are based on use in the United States (this is not limited to Federal, as State trademarks exist, and “common law” use can qualify as a “poor-man's” trademark). To be eligible to seek a federal trademark registration, you have to be using your trademark or service mark with respect to interstate commerce.  While often there is a low threshold to prove interstate usage in commerce, it is also sometimes the case that your business simply does not extend beyond your home state.  In those instances, it is perfectly fine to seek a state trademark registration, so long as you are aware of the limitations of the same.  Each individual state in the United States has its own trademark register.  This article will focus on and deal with state trademark registration in Illinois, as that is where our office is located.  

After you Obtain a Federal Trademark Registration, can you Lose your Rights? Given the importance of trademark rights to every business, whether small or large, many business owners are keenly aware that obtaining a federal trademark registration is an essential goal of their business.  Similarly, whether they try to file on their own, use a non-lawyer DIY service, or seek the assistance of an experienced trademark practitioner attorney, many business owners have been successful in obtaining a federal trademark registration.  However, assuming that the job is done, and that these rights are permanent, many never ask the question of what, if anything can cause them to lose those rights.  Contrary to popular belief, owning a registered trademark isn’t the end of the story. Federal trademark rights can be lost if they aren’t properly maintained or protected, potentially leaving your brand vulnerable. Indeed, a trademark can last a very long time, but only if you stay vigilant and diligent in keeping up with the USPTO's requirements.   This article is meant to assist those business owners who were too shy to ask that important question "After you Obtain a Federal Trademark Registration, can you Lose your Rights?" We will outline the critical ways in which you could lose your federal trademark rights after registration and how to avoid these pitfalls. Stay informed to keep your trademark secure and protect your business identity.

What Are Trademarks and How Do They Work? Trademarks are a vital part of protecting your business's identity and ensuring its recognition in the marketplace. Whether you're starting a new business or looking to safeguard the reputation of an established one, understanding trademarks can help you...

How Can I Check the Status of My Trademark Application? The process of applying for a United States Federal Trademark registration takes a very long time.  After you file the application, the USPTO Trademark Office takes 12+ months to do its work to examine the application, publish it for opposition, and issue a final decision.  It takes several months for it even to be assigned to an examiner attorney at the USPTO, and of course, if there are any Office Actions or other hiccups, you will need to take additional steps to keep the application viable.  With such a long delay, and with so many technical details and steps that can arise, it is very important to monitor the status of your pending application, so as to ensure that you do not miss a deadline.  You see, the USPTO does not issue any refunds, and if you want to make the most of the money you are spending, you do not want your application to be abandoned due to a simple timing mistake.  The purpose of this short article will be to explain how you can keep apprised about the status of your pending application, so that you do not miss any important deadlines.

What in the World is the Difference between a Trademark and a Service Mark? Imagine that you are a small or medium business owner who has decided to take the big step to protect your brand's identity, by seeking to obtain a federal trademark registration.  You are immediately confronted with all sorts of terminology and rules that seem like a foreign language to you.  What do you do?  One of the first stumbling blocks that most people go through is when confronted with a choice between whether their brand needs a "Trademark" or a "Service Mark."   While these terms are very closely related, they serve slightly different purposes, and should be used correctly.   Understanding the distinction between trademarks and service marks can help ensure your brand is protected in the right way.  The purpose of this article is to help you in that quest.

How Long Will It Take to Register My Trademark? Nowadays, most entrepreneurs and business owners are already aware of the value of a trademark registration for their brand.  When making that all-important decision to protect their valuable brand with a trademark registration, the most often asked question is, "How long will it take?" The most important thing to know is that the mere filing of an application to register your trademark is not the end of the process, but rather the first step in that process.  While securing trademark registration is a smart move for long-term business success, the process involves several stages that require time, and it is important for business owners to understand the process. While there are several factors that will influence how long the process takes, this article will endeavor to provide some clarity and understanding of the various parts of that process. 

I Found My Trademark Registered by Someone Else for Different Goods or Services — Does That Create an Issue? The legal rules and laws surrounding the trademark process can be overwhelming and confusing if you are a small or medium business owner going through the process alone.  Trademark law can be very particular, precise, and unforgiving.  Like most areas of the law, ignorance of the law usually can hurt you (and is not a defense).  One of the most common dilemmas faced by small and medium business owners wishing to seek trademark protection for their brand is the existence of another brand or company that already has a registered trademark for the same or similar logo or name being sought.  While even a layperson will likely be able to tell that this is a problem (in the case when the goods/services of both companies are identical), the question become murkier when the existing trademark registration is not for an identical type of good/service as the trademark you want to seek to protect.   While the products or services associated with the trademark may not seem directly linked to your business, it’s important to understand the potential risks and legal implications. Here, we’ll break down the key considerations and steps you can take to protect your trademark and your business.

We are Canadian, But Want to Register our Trademark in the United States - Can We File for Federal Registration? Canada is the closest neighboring country to the United States, and many businesses operate on both sides of the border.  Very often, the US marketplace is a very attractive area of expansion for a Canadian sole proprietor or business entity.  If you're a Canadian citizen or business owner looking to expand into the U.S. market, protecting your brand is critical. One of the key steps is registering your trademark with the United States Patent and Trademark Office (USPTO). A federal trademark not only solidifies your brand's identity in the U.S. but also provides legal backing to prevent infringement. But, is it even possible as a non-US citizen and/or resident to file for a federal US trademark registration?  This guide will walk you through how Canadian citizens and companies can register a U.S. federal trademark.

What is the Supplemental Registry and is it Right for your Trademark? Filing a trademark is one of the most effective steps a business can take to protect its brand. However, not all trademarks qualify for the same level of recognition and protection under U.S. law. If your trademark doesn’t meet the strict requirements for the USPTO’s Principal Register, the Supplemental Register could be an alternative.  But what exactly is the Supplemental Register? How does it differ from its counterpart, the Principal Register, and is it the right choice for your business? The trademark process can be very confusing and challenging for business owners.  This article breaks down the advantages, limitations, and considerations relating to the Supplemental Register to help you make an informed decision. 

Understanding What is a Substantive Office Action Refusal, and How to Overcome It The process of applying for a US trademark registration can be frustrating and paved with potential setbacks at every phase of the process.  One such potential setback is receiving a non-final or preliminary refusal, known as an Office Action. When filing for a trademark registration with the United States Patent and Trademark Office (USPTO), receiving an Office Action can be both frustrating and intimidating. Non-lawyers who file by themselves or via a " do it yourself" website are more likely than not to encounter an Office Action refusal.  For many, that is the end of the process, as they discover that their cheap "do it yourself" service does not (and indeed cannot) help them with the Office Action, and most people simply do not understand what the Office Action is, what they nee to do, nor that there is a strict 3 month timeline to respond.  While Office Actions can be difficult to overcome, very often a well-drafted response can achieve just that, a reconsideration of the refusal, and approval of the application to the next phase.  This article will help to give an introduction to substantive Office Actions, and the way in which to approach a response.

What Can Be Done to Help the Trademark Application Process Go As Smoothly As Possible? While the process to obtain a trademark registration at the USPTO is an important step in protecting your business's intellectual property and building up your brand as a valuable asset, the process itself can be overwhelming and frustrating for those unfamiliar with it.  The application process itself can be very costly, and if the application is not successful, the money spent is non-refundable.  Likewise, given that the process takes over a year, it can be frustrating to be using your trademark for that entire time before finding out there is a material problem which prevents you from obtaining a trademark registration (or which may even force you to re-brand).  As daunting as the process may seem, various preparations can help make the road to registration less bumpy.  By taking the right steps and avoiding common mistakes, you can make the trademark application process smoother and less stressful. Here's what you need to know.

What are the Registration and Renewal Requirements for a US Trademark? If you are a business owner in the United States, you probably already know that a US Trademark Registration is a very valuable asset that can protect your company's brand, and/or products and services.  A US Trademark Registration can help set you apart from competitors, and provides nationwide recognition and protection of your identity among consumers of your goods and services. Trademark registration gives your business the exclusive right to use your mark within your industry. This means no competitor can legally use a similar name, logo, or slogan that could confuse your customers. The exclusivity provided by a trademark strengthens your market position and builds customer trust.  But, knowing all the above, do you know what the process is to attain a Federal trademark registration?  More importantly, do you know the process to keep (ie. Renew) such a Federal trademark registration?  Very often, a lack of clarity or familiarity with either of these questions can cause a business owner to fail to attain a Federal trademark registration or lose one. The purpose of this short article is to provide an outline of the process and requirements. 

How to Register Your Musical Group or Band Name as a Trademark If you are a musician, band member, or musical content creator, you know that your stage or performance stage name is just as important as your songs or music.  Your band name or stage name under which you perform is your professional identity and the way in which you stand out from other performers and establish your valuable reputation and following.  After you have poured your heart, sweat and tears into your music, it would be foolish not to undertake the same effort and dedication to building and protecting your band or stage name. Trademarking your musical group's name gives you exclusive rights to its use, ensuring no one can cash in on your hard-earned reputation. While the trademark process is highly technical and can be confusing, we will attempt to give you an introduction to the process and what you absolutely need to know in order to register and protect your band name or stage name.

Is My US Trademark Registration Valid Outside the US? Taking the important step to protect your company's brand or brands by filing a US trademark application to attain federal registration is a great strategy.  However, once you have attained your US trademark, what happens when your business grows, and you start using your trademarks to sell the same products or services in another country?  That is a common question that our firm is asked all the time.  With the advent of the internet and e-commerce, the world is a smaller and interconnected place.  However, trademark registration is still very much linked to the jurisdiction of the registration.  This article will try to answer the question and provide the details to help business owners know their options when it comes to expansion to a new jurisdiction or country.

What is the Difference Between a "Knock Out" Search and a "Full" or "Comprehensive" Search for my Trademark? You have decided to take the very important step of applying for a federal trademark application at the USPTO to protect your valuable Brand.  Congratulations!  While searching what the steps are to file an application, you have no doubt seen references to a "Knock Out" style search as well as a "Comprehensive Search" or "Full Search." You likely have questions - what is the difference?  More importantly - "Do I really NEED one...or both?" This article is intended to help you determine the answers to these questions.  As a starting point, both types of searches are completely optional.  While the USPTO does not require either search prior to filing an application for a trademark, it is always a good idea to do a search, as that can help determine whether you will encounter problems with prior filed trademarks that could derail your application.  Thus, choosing to do a search before filing can help you avoid future headaches and costs, as well as maximize the chances of a successful application process.  But that still doesn't answer the question - which type of search is best for you? Here is a break-down of the options.  (the ultimate decision is for you to make, after understanding these options)

What Happens Next, After You File a Federal Trademark Application?   You’ve just taken the very important and wise step to protect your brand by having submitted your federal trademark application to the United States Patent and Trademark Office (USPTO). Congratulations! But what happens next? The trademark registration process can feel complex, overwhelming, and confusing,  especially for first-time applicants. Here’s a step-by-step guide to help you understand what to expect after filing your application.

What Proof Do I Need to Register My Trademark? Whether you are filing a trademark application seeking to register a trademark for the provision of services or the sale of goods, you will need to prove use of the trademark to attain a registration. Depending on whether your application is based on an "already in use" or "intent-to-use" basis, the timing of that proof will vary, but the substantive guidelines on what qualifies as proper proof will be similar. Having a grasp of the various guidelines for appropriately proving use to satisfy the USPTO requirements is an essential step that can maximize the chances of a successful application process.  This article will serve as an introduction on this topic, to help understand the ways you can prove use to satisfy USPTO requirements. 

Are you Ready for the USPTO Trademark Fee Increases Coming in 2025? What you Need to Know. If you're a business owner, entrepreneur, or anyone navigating the trademark registration process, it’s time to take note. The United States Patent and Trademark Office (USPTO) has announced important updates to its fee structure, effective January 18, 2025. These changes include higher filing fees, along with some notable shifts in the way filings are processed. Here's a breakdown of what you need to know to stay prepared.

How can I Effectively Protect my Brand's Trademark Worldwide? Whether your business is just starting out or has been growing for some time, it is inevitable that, at some point, you will want to know how you can protect your valuable brand identity and reputation beyond your current operations.  Such concern is important whether you plan on eventually expanding your operations or customer base, as well as to protect your brand identity from copycats.  A trademark registration with the United States Patent and Trademark Office will protect your brand within the entire US, but what if that is not enough...what if your aspirations are global in nature?  Two common questions that are often asked of trademark attorneys are "Is there such a thing as worldwide trademark protection?" and "How can I effectively protect my brand worldwide?"  While there is no such thing as a "global" or "worldwide" trademark registration, that does not mean that a business owner does not have options to secure the protection of their valuable trademarks internationally.  This article shall serve as an introduction to that process.

What is the USPTO, and what does it have to do with your quest to attain a Trademark? Small and medium-sized business owners have likely heard that registering their brand as a US trademark is an important step in the process and that a trademark can be the most valuable asset of a company.  However, they likely do not know the ins and outs of the process to attain a trademark and may feel intimidated by a process that seems, at first blush, very technical and daunting.  It does not help that unfamiliar terminology and acronyms are used by resources and attorneys alike, which confuses people.  In addition to legal jargon pertaining to trademarks, one of the most common sources of confusion is when business owners hear about the USPTO.  That acronym stands for the United States Patent and Trademark Office, a governmental entity in charge of both Patents and Trademarks. But for those seeking trademarks, you do not need to be scared off nor concerned about the patent side of things.  The patent side of the USPTO and the trademark side function separately and thus a trademark applicant need only be concerned with the USPTO's Trademark Office.  The USPTO oversees the examination and registration and thus can be a vital ally for entrepreneurs, startups, and small business owners looking to protect their intellectual property.

How Long Does a Trademark Last? If you are an entrepreneur, small/medium business owner, content creator, or founder, you likely know that your "brand" is one of the most important assets that needs to be protected.  You have probably heard about trademarks, and know that the process is undertaken via the Trademark side of the USPTO, and that, though technical in nature, it can be undertaken without an attorney.  But, do you know how long a trademark lasts?  More importantly, do you know what if anything needs to be done by you to keep that trademark registration valid?  If the answer is "I don't know" - don't worry, because most people do not know the answer.  If you would like to find out, this article will assist you. 

Public Art is not Public Domain!  (Copyright Implications of Street Arts and Murals)

Options on How to Extend Your Trademark Protection to Other Countries The world has become a much smaller place.  With the advent of the internet and other methods of communication, it is becoming more common for businesses to operate or sell products in multiple countries. For small businesses,...

How E-Commerce Merchants Can Qualify for the Amazon Brand Registry E-commerce has become one of the fastest-growing industries over the last decade.  Consumers are more likely to order items online from the comfort of their homes more so than in prior years.  While the number of e-commerce platforms and marketplaces has grown steadily, the most popular and famous platform and marketplace,  Amazon, has become more or less a household name. From a website selling books, Amazon has now become one of the leading e-commerce platforms for selling any and all types of products online. For an e-commerce merchant, getting their brand on the Amazon Registry and marketplace can be very lucrative (since each year, several billions of dollars in revenue are generated from sales via Amazon). While being on the Amazon Brand Registry is not a guarantee of success, it can catapult merchants in the right direction.  Therefore, it is unsurprising that many merchants desire to get their brands listed on Amazon.  However, the process of getting accepted into the Brand Registry can be confusing, frustrating, and time-consuming for small business owners and e-commerce merchants. This article will explain the process and provide insights into how a trademark attorney can make all the difference in helping you get started with the Amazon Brand Registry.

How to Transfer Ownership of a Trademark when You Re-Brand or Sell your Business Whether you are a large company or a small company, your US trademark is one of your most valuable assets. It represents your brand's identity and distinguishes your products or services from those of your competitors. But what happens when you need to transfer ownership of your trademark? Since a US trademark is registered, it needs to be treated differently from other company assets. Whether you're selling your business, undergoing a rebranding, or simply reorganizing your company structure, a trademark assignment (ie. recording a properly executed trademark assignment with the USPTO) is a legal process that ensures the new owner's rights in the trademark are made of record. In this article, our goal is to identify the key steps involved in a trademark assignment process, highlighting the legal requirements and best practices to ensure a smooth transition.