Trademark Lawyer for Startups

A business name registration (with a state or province, or through an LLC or corporation filing) is not a trademark registration. In California, for example, a fictitious business name filing creates a rebuttable presumption of the exclusive right to use the name, and any confusingly similar trade name, as a trade name in the county where the statement is filed, if the registrant is the first to file it there and is doing business under it (Cal. Bus. & Prof. Code § 14411). A federal registration on the Principal Register is prima facie evidence of your exclusive right to use the mark in commerce on or in connection with the goods and services specified in the certificate (15 U.S.C. § 1057(b)), and the registrant can sue over a confusingly similar use under 15 U.S.C. § 1114(1).

Yes. The USPTO allows intent-to-use applications for marks that have not yet been used in commerce. Under 15 U.S.C. § 1057(c), once the mark is registered on the Principal Register, the filing date counts as constructive use conferring nationwide priority, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants who have not abandoned their marks. You must submit proof of actual use in commerce before the registration will issue. The CIPO similarly allows applications before use.

Receiving a cease-and-desist after you have launched and built brand recognition is difficult because compliance now means a rebrand. The first step is evaluating whether the claim is legally valid: the sender must have prior rights, and your use must be likely to cause confusion with their mark (15 U.S.C. §§ 1114(1), 1125(a)(1)(A)). A trademark lawyer reviews the demand before you respond.

Domain availability and trademark availability are completely separate checks. A domain registrar searches whether the exact domain string is taken by another domain holder. A trademark clearance search examines the USPTO database and related registries for marks that are similar to yours in sound, appearance, or meaning and that are used in related goods or services. Many names that are available as domains are already trademarked in the industry the startup operates in.

A professional clearance search examines USPTO registered marks and pending applications, CIPO registered marks and pending applications, state trademark registrations, and common-law uses in the relevant product and service classes. The search compares your proposed mark against existing marks in terms of similarity: sound, appearance, meaning, and commercial impression. The result is a legal opinion on the likelihood of a refusal during examination and the likelihood of a conflict with an existing rights holder.

A trademark application can be filed within days of the clearance search being completed. The filing itself is a single business day of work once the goods-and-services description and specimen (if use-based) are prepared. After filing, the USPTO examines the application and, if it is a Principal Register application and is approved, publishes it for opposition before it can register. If the mark registers on the Principal Register, the filing date counts as nationwide constructive use of the mark for the registered goods or services, except against anyone who has not abandoned their mark and who, before that date, had used it, had filed a US application for it that is pending or registered, or had filed a foreign application giving a right of priority and then timely filed a US application that is pending or registered (15 U.S.C. § 1057(c)); the registration itself comes later.

If you are domiciled in the United States or its territories, you can file a trademark application yourself through the USPTO Trademark Center without legal representation; applicants domiciled elsewhere must be represented by a US-licensed attorney. The risk is in the examination process: an office action for likelihood of confusion, descriptiveness, or improper specimen requires a response with specific arguments within the period set in the Office action. A trademark lawyer builds the application to survive examination, not just to submit.

They are separate registrations but both can be valuable. The company name is typically filed in the business services or technology services class that matches the company's primary activity. Each product name is filed in the goods or services class that matches what the product does. If the company name and the product name are the same (common in early-stage startups), one filing can cover both. As the company grows and adds distinct product names, each product name with commercial traction warrants its own filing.

Common-law trademark rights arise from actual use of a mark in commerce in a specific geographic area. They are real rights and can be enforced, but the USPTO notes that you may only be able to enforce them in the areas where you use the mark if that use covers less than the entire country. A Principal Register certificate is prima facie evidence of the mark's validity, your ownership, and your exclusive right to use it in commerce for the goods or services specified in the certificate, subject to any conditions or limitations stated in it (15 U.S.C. § 1057(b)) and to any legal or equitable defense that could have been asserted if the mark had not been registered (15 U.S.C. § 1115(a)), and its filing date counts as nationwide constructive use, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants. Registration also allows recordation with U.S. Customs and Border Protection, which is open only to current registrations not on the Supplemental Register (19 C.F.R. § 133.1(a)); TTAB oppositions and cancellations, by contrast, are open to any person who believes they would be damaged by a registration (15 U.S.C. §§ 1063, 1064).

A first USPTO office action is not a final refusal; the examining attorney may make a refusal or requirement final only after reviewing your response. Unless the office action states otherwise, for an application under Section 1 or 44 you have three months from the issue date to respond, extendable once by three months on request and payment of a fee; for a Madrid (Section 66(a)) application, the period is six months (37 C.F.R. § 2.62(a)). You can respond with legal arguments, amendments to the application, or evidence. For a likelihood-of-confusion refusal, the response involves arguing that your mark is distinguishable from the cited mark or that the goods and services are not related. For a descriptiveness refusal, the response can argue that the mark is not merely descriptive, claim acquired distinctiveness, or seek the Supplemental Register if eligible; a Section 66(a) application is not eligible, and an application based on Section 1(b) becomes eligible only after an acceptable allegation of use (37 C.F.R. § 2.47). If the examiner issues a final refusal, you can request reconsideration or appeal to the Trademark Trial and Appeal Board (37 C.F.R. § 2.63(b)).