Trademark Lawyer for Tech Companies

A domain name is a registration with a domain registrar that gives you the right to use a specific internet address. Registering a domain does not by itself make the name a trademark: a trademark is a name used to identify and distinguish goods or services and indicate their source (15 U.S.C. § 1127). A Principal Register certificate is prima facie evidence of the owner's exclusive right to use the mark in commerce for the goods or services specified in it (15 U.S.C. § 1057(b)). Whether a competitor's use of your product name under a different domain extension infringes depends on whether it is likely to cause confusion (15 U.S.C. § 1125(a)), whether or not your mark is registered. The two systems operate independently.

Yes. The USPTO allows intent-to-use applications for marks that have not yet been used in commerce. The application establishes a priority date before your first public use of the name, which is the most valuable protection a pre-launch product can obtain. You must submit proof of actual use in commerce before the registration will issue, but the priority date is locked in from the filing date. The Canadian CIPO similarly allows applications before use.

If you build a product around a name that is already trademarked in your industry, the trademark holder can send a cease-and-desist demanding that you stop using the name and rebrand. If a violation is established in court, 15 U.S.C. § 1117(a) lets the plaintiff recover the defendant's profits, damages, and costs, subject to the principles of equity. We recommend a clearance search before launch. A trademark lawyer can evaluate your options and advise on the least costly resolution.

The first step is evaluating whether the claim is legally valid before responding. The key questions are: does the sender have a registered trademark in your product category, is their mark actually confusingly similar to yours, and what is their priority date relative to your first use of the name? Not every cease-and-desist is a legally airtight demand. A trademark lawyer reviews the letter, assesses your position, and advises on a response that addresses the claim accurately without unnecessarily conceding rights or escalating the dispute.

A professional trademark clearance search for a tech company covers the USPTO registered marks and pending applications in the software, SaaS, cloud computing, and related technology classes, as well as common-law uses and state trademark registrations. The search compares your proposed product name to existing marks in terms of similarity of sound, appearance, meaning, and commercial impression. The result is a written opinion on the likelihood of a refusal during examination and the likelihood of a conflict with an existing rights holder in your market.

The USPTO refuses registration on the Principal Register of a mark that, when used on the goods or services, is merely descriptive of them (15 U.S.C. § 1052(e)(1)), unless it has become distinctive of the applicant's goods in commerce (15 U.S.C. § 1052(f)). A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services; a suggestive mark requires imagination, thought, or perception to reach a conclusion about the nature of the goods or services (TMEP §§ 1209.01(a), 1209.01(b)). A trademark attorney evaluates the specific name before filing and advises on whether it is registrable as-is or whether the application needs a different approach.

A competitor operating under a similar product name in the same market may raise a likelihood-of-confusion issue for both parties. Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)) applies to confusing use whether or not either party has registered. If you hold a Principal Register registration, you also have the registered-mark infringement claim (15 U.S.C. § 1114) and prima facie evidence of your exclusive right to use the mark (15 U.S.C. § 1057(b)). If the competitor has a registration, your options depend on your priority position and the grounds available for cancelling it (15 U.S.C. § 1064). A trademark lawyer assesses the relative rights of both parties and advises on the most practical resolution.

An intent-to-use application is a USPTO filing by a person who has a bona fide intention, under circumstances showing good faith, to use a trademark in commerce (15 U.S.C. § 1051(b)(1)), made before the product or service is in use. If the application registers on the principal register, its filing date counts as nationwide constructive use of the mark, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants who have not abandoned their marks. For tech startups, we recommend filing before the product is announced or launched. Before registration, the applicant must establish use in commerce through an acceptable amendment to allege use or statement of use (15 U.S.C. § 1051(c), (d)). After a notice of allowance, the verified statement of use, with specimens, is due within six months; timely extension requests, with the required fee and a verified statement of continued bona fide intention to use the mark, can extend that period, extensions after the first also require good cause, and the total period cannot exceed three years from the notice of allowance (15 U.S.C. § 1051(d)).

I can file the application as soon as the clearance search is complete. A knockout search takes 2 to 5 business days; a full search with a written opinion takes 5 to 10 business days. If the application registers on the principal register, its filing date counts as nationwide constructive use of the mark, subject to the exceptions in 15 U.S.C. § 1057(c) for earlier users and applicants who have not abandoned their marks. Registration follows USPTO examination. For a pre-launch startup, we recommend filing before the product is publicly announced.

No. A US trademark registration does not itself create a Canadian registration. In Abitron Austria GmbH v. Hetronic International, Inc. (2023), the Supreme Court held that the Lanham Act's infringement provisions, 15 U.S.C. §§ 1114(1)(a) and 1125(a)(1), extend only to claims where the claimed infringing use in commerce is domestic. In Canada, subject to sections 21, 32 and 67 of the Trademarks Act, registration of a trademark with the CIPO, unless shown to be invalid, gives the owner the exclusive right to use it throughout Canada in respect of the registered goods or services (s. 19). I file US and Canadian applications at the same time; Canadian examiner's reports, oppositions, and section 45 proceedings are handled through a licensed Canadian trademark agent.