Frequently Asked Questions About Trademarks | JMR Law Group
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Frequently Asked Questions

  • Renewing your trademark ensures that you won’t lose it. If you do not renew your trademark, it will expire, along with much of your ability to legally protect your brand.

    At best, this may require you to submit a new trademark application; at worst, it may allow a competitor to begin using your mark.

    One of the best perks of having a registered trademark is that you can continue to renew it indefinitely. So really the only question is why wouldn't you renew your trademark?

  • A specimen is an example of how the trademark is used. Examples of acceptable specimens include:

    • tags/labels affixed to goods
    • advertisements for services

    A trademark specimen is a sample of how you actually use your trademark in commerce with the goods or services you identified in your application or registration.It’s proof of what consumers see in the marketplace.

    For example, if you are applying for a trademark for a product, your specimen might be a photograph showing your trademark on a label or hangtag attached to your product. If you are applying for a trademark for a service, your specimen might be a brochure or advertisement that shows your trademark in connection with the services you offer.

    The United States Patent and Trademark Office (USPTO) requires a specimen to register your trademark with a use-in-commerce filing basis. If you are planning to file a trademark application, it is important to provide an appropriate specimen that accurately reflects how you are using your trademark in commerce. A U.S.-licensed attorney can help you prepare your application accurately and provide crucial legal advice.

  • Effective July 2019, if you are a foreign-domiciled trademark applicant, registrant, or party to Trademark Trial and Appeal Board (TTAB) proceedings, you must be represented at the United States Patent and Trademark Office (USPTO) by a licensed U.S. Attorney. U.S. regulations specify that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO. At JMR Law Group, Jason Rhodes is a licensed U.S. attorney under Washington State bar number 31883 with over 20 years of trademark experience.

    Non-U.S.-licensed attorneys and non-attorneys do not meet this criteria and cannot represent you in a trademark matter at the USPTO. The USPTO takes the unauthorized practice of trademark law very seriously. Your trademark submission can be rejected, or the legal validity of your trademark registration could be jeopardized, if you take advice or receive assistance from someone who is not authorized to practice law before the USPTO.

    If you are a trademark applicant, registrant, or party domiciled in the United States or its territories, you are not required to hire a U.S.-licensed attorney to represent you at the USPTO. However, it is still strongly recommended that you hire a licensed U.S. attorney who focuses on trademark law. An experienced, licensed U.S. trademark attorney can provide crucial legal advice, conduct trademark clearance searches, help you enforce and maintain your trademark rights, and represent you at the TTAB.

  • Section 8 and Section 9 renewals are two separate filings that are combined into a single filing due every ninth and tenth year anniversary of the registration (presuming it is still in use).

    A Section 8 renewal is a declaration of use or excusable nonuse of the trademark in commerce, while a Section 9 renewal is an application to renew the trademark registration.

    A Section 8 declaration is a statement that your trademark is currently in use in commerce in connection with *all* the goods and/or services listed in your trademark registration. It must be filed between the fifth and sixth anniversaries of the registration, and between the ninth and tenth anniversaries of the registration, every ten years after if the mark is still being used.

    On the other hand, a Section 9 application is a written request to renew your registration. It must be filed every ten years after registration.

    When filing for renewal under Section 8 & 9, you must submit a combined declaration of use and/or excusable nonuse (Section 8) and application for renewal under Section 9 in a combined filing.

    I hope this helps!

  • A Section 15 declaration of incontestability is a signed statement that the owner claims incontestable rights in a trademark and continuous use of the trademark for five years. Following the filing of a Section 15 declaration, the trademark becomes incontestable. Once a trademark is incontestable, various aspects of the registration cannot be challenged by third parties (such as the trademark’s validity).

    This declaration can only be filed for trademarks that are registered on the Principal Register.

    Requires statement that:

    (a) The trademark has been in continuous use in commerce for a period of five years after the date of registration (or the date of publication under 15 U.S.C. §1062(c)) with the goods or services listed in the registration and is still in use in commerce.

    (b) There has been no final legal decision adverse to the owner’s claim of ownership of the trademark, or to the owner’s right to register the trademark or to keep the registration.

    (c) There is no pending legal proceeding involving the trademark in the USPTO or in a court of law

  • A trademark registration legally protects your brand and prevents other businesses from copying or using your business name, logo, phrase, or symbol. A registration lasts for the life of the mark’s use, with the proper maintenance and renewals in place for the relevant jurisdiction(s).

  • People hire a trademark attorney when starting a business because a trademark attorney can help them navigate the complex legal process of clearing and registering a trademark. An experienced trademark attorney will conduct appropriate trademark clearance before (ideally) a business begins using a new trademark/brand to determine the risks associated with the potential use of that new company name or brand; including the risks around possible infringement of existing third party trademark rights. If the trademark is a safe candidate for use, the trademark attorney will file the application(s) and also provide legal advice throughout the registration process; which typically includes assistance with responding to refusals (“Office Actions”) that a USPTO examining attorney may issue. In our experience, we have never adopted a trademark application that was filed by an individual/business that was not flawed on some level; creating additional expense or the need to file a new application, or both. According to studies and our experience, trademark attorneys significantly increase the likelihood of successfully registering a trademark.

    The USPTO encourages hiring a trademark attorney for many of these reasons as well.

    In short, hiring an experienced trademark attorney gives business owners significant advantages over business owners tackling the trademark clearance and application/registration process on their own.

  • Yes. The United States Patent and Trademark Office (USPTO) requires all foreign domiciled applicants, registrants, and parties to a Trademark Trial and Appeal Board (“TTAB”) proceedings, you must be represented at the USPTO by an attorney who is licensed to practice law in the United States. The reason why your attorney must be licensed to practice law in the United States is that only an attorney who is an active member in good standing of the bar of the highest court of any U.S. state or territory can represent you in a trademark application, registration, or TTAB proceeding at the USPTO. Non-U.S.-licensed attorneys and non-attorneys do not meet this criteria and cannot represent you in a trademark matter at the USPTO. Non-U.S.-licensed attorneys and non-attorneys may give you inaccurate information and legal advice about your trademark rights and the registration process in the United States. This could jeopardize the legal validity of your application or registration, prolong the time it takes for your application- or registration-related submission to be examined, or cause your application to be rejected or abandoned

  • JMR Law Group has extensive experience with high-profile global brand names in many different areas of trademark law. Some of our areas of expertise include Brand Management, Brand Enforcement, Counterfeiting, Litigation, Rebranding, Due Diligence, IP Counsel and Management, and Domain Names.

    We've worked on brand identity and domain-related matters for clients such as Apple, Morgan Stanley, Goldman Sachs, Merrill Lynch, and Teachers Without Borders, among many others.

    We have the experience and skill for all your trademark registration needs, and we take the guesswork out of the process.

  • Renewals tend to be simpler and can take approximately 6 months.

    In general, registration can take 12-18 months. If you are launching a new product or creating a new business, you may wish to file the trademark application but choose to delay use of your mark (and thereby delay registration of the mark) for approximately 3-4 years from the date of application.

    Registering a trademark is a complex process with many different stages involved. After the initial application is filed, it may take the USPTO around 6 months to review your paperwork. However, that is only the first stage of the trademark application process, which may involve challenges by other trademark owners, issues raised by the USPTO ("office actions"), etc.

    The process can be greatly expedited by hiring JMR Law Group as your legal team! With our substantial experience in trademark applications, you’ll be able to avoid any missteps in the process that might lead to longer wait times, and even potentially needing to reapply.

  • The USPTO's current fee schedule (will open in a new tab)

  • With a filing for an “in use” trademark, you must be able to show that the mark is already being used in commerce. Section 1(a) filings are for trademarks that are already being used in commerce. You are required to be using the mark in ALL of the goods and services listed in your application. If you file a Section 1(a) trademark claim and you aren’t using the mark currently, others can file a trademark cancellation against your registration.

    Section 1(b) filings are for Intent to Use. What distinguishes Intent to Use filings from In Use filings is an additional step that is included in the process. If your application for Intent to Use is approved after going through the filing process, it isn’t immediately registered. You will receive a Notice of Allowance from the examining attorney. You will need to provide a specimen within six months which shows your goods or services in commerce. There is the option to file for extensions of time, and each extension will grant you six more months of grace to produce your specimens. However, you are limited to five requests for extended time. After your mark is officially being used in commerce, you will deliver the specimen with a Statement of Use. If the specimen is accepted, then your application moves on to registration.

  • Absolutely! We have helped clients file in over 150 countries. Contact us

  • Copyright and trademark are both forms of intellectual property protection, but they serve different purposes and protect different types of assets. Here are the key differences between copyright and trademark:

    1. Purpose of Protection:

    Copyright: Copyright protects original works of authorship, fixed in a tangible medium of expression, such as literary, artistic, musical, and dramatic works. This includes books, music, paintings, movies, and computer software. Copyright protects the expression of ideas, not the ideas themselves.

    Trademark: Trademark protection is for symbols, names, phrases, logos, and even colors and sound, that distinguish goods or services from those of others in the marketplace. Trademarks are used to protect brands and to prevent consumer confusion.

    2. Nature of Protection:

    Copyright: Copyright provides exclusive rights to the creator or owner of the work to reproduce, distribute, perform, display, and create derivative works based on the original work. These rights typically last for the life of the author plus 70 years.

    Trademark: Trademark protection provides exclusive rights to use a specific mark (e.g., logo, name, symbol) in connection with specific goods or services. Trademark protection can be renewed indefinitely, as long as the mark is in use and maintained in the United States.

    Use requirements are less stringent or not required in most of their jurisdictions.

    3. Registration Requirement:

    Copyright: Copyright protection is automatic upon the creation of a qualifying work. However, registering a copyright with the U.S. Copyright Office (or equivalent offices in other countries) provides certain legal advantages, such as the ability to sue for statutory damages; which is significant.

    Trademark: While trademark rights can be established through use in commerce, registration with the United States Patent and Trademark Office (USPTO) or a similar intellectual property office in other countries is recommended and provides stronger legal protection.

    Typically, registration grants exclusive rights to use the mark nationwide and serves as public notice of ownership.

    4. Duration of Protection:

    Copyright:

    Generally, copyright protection lasts for the length of the author’s life plus another 70 years.

    For a joint work prepared by two or more authors, copyright protection lasts for the length of the life of the last surviving joint author plus another 70 years.

    For works made for hire and anonymous and pseudonymous works, the duration of copyright is 95 years from first publication or 120 years from creation, whichever is shorter (unless the author’s identity is later revealed in Copyright Office records, in which case the term becomes the author’s life plus 70 years).

    For works that had already secured statutory copyright protection before January 1, 1978, see this Copyright Circularfrom the United States Copyright Office. When the term of protection for a copyrighted work expires, the work enters into the public domain.

    Trademark: Trademark protection can last indefinitely as long as the mark is actively used in commerce (in the United States) and the owner continues to renew the registration. Use requirements vary in other jurisdictions.

    5. Scope of Protection:

    Copyright: Copyright protection covers the specific expression of ideas in a work but does not prevent others from independently creating similar works with different expressions.

    Trademark: Trademark protection prevents others from using a similar mark (or a confusingly similar one) in connection with related goods or services, even if they did not directly copy the mark. In summary, copyright protects creative works from being copied or used without permission, while trademarks protect brands and their associated symbols, names, and slogans from being used by others in a way that might confuse consumers. Both forms of protection are valuable for different types of intellectual property.

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