Welcome to the Kazi Law Firm! We are a boutique law firm steeped in Texas tradition personifying the warmth and congeniality consistent with southern hospitality. We believe in preserving integrity and professionalism with true Texan charm, staying true to our roots, while providing essential, affordable legal services to all. Located just north of Dallas, Texas in the rapidly growing suburb of Frisco; the Kazi Law Firm concentrates on contracts drafting and review, wills & estate planning, real estate law, landlord, tenant, mediation, and general business law needs.
Given the fast-paced, technology-driven, and competitive world that we live in today, I thought discussing the basics of trademark law would be beneficial. As a small business owner, you may have received a threatening letter accusing you of trademark infringement. You may be asked to immediately discontinue the use of your name or logo. Let’s talk a little more about the wonderful world of trademark law.
The “mark” that a business uses in the course of conducting its business includes the business name, logo, and slogan. When these marks are registered with the United States Patent and Trademark Office, they are called trademarks. Registering a trademark gives business protection for its use in the United States. This means that other parties are not allowed to use a business’s trademarks when they are conducting business.
Not all marks can be trademarked. Some marks are descriptive in nature and unable to be protected through the trademark process. When there are marks that are protectable and that are being used by two different businesses, however, the question will come down to which business’s use of the mark will prevail.
A trademark or a new brand name does not have to be entirely unique. It just needs to be unique in your industry.
It is still possible for two different businesses to have similar names are marks. For example, Delta Faucets and Delta Airlines have obviously similar names. However, the question is determined by the potential for the confusion of consumers. If two similar marks are used in different industries that are located in different markets, confusion is unlikely. On the other hand, if two businesses that are using similar marks are operating in markets that overlap, priority will be an issue.
The guiding principle of trademarks is to avoid consumer confusion. If there is little likelihood that the customers of the accusing business will be confused by your use of a similar mark, there is very little chance that there will be a trademark issue. Courts look at several factors, including whether or not consumers are likely to be confused by two businesses that operate in the same industry.
Remember, if you are using a business name that is the same as another company in your industry, caution is warranted. If you are instead using a name that is the same as another company’s name that offers completely different services or products, there is probably not a trademark issue.
Consumers are less likely to be confused if your business and the one that is claiming that you infringed its trademark are operating in different geographical markets. For instance, traditional businesses that were located in different states that shared the same names in the past could continue to operate because they weren’t competing for the same consumers. However, the internet has complicated the analysis. If your business and the other business are both online, you may have overlapping markets. In that case, you will need to carefully analyze the other applicable factors.
Before applying to register a mark, a business should ideally conduct a thorough search of its market to make certain that another business hasn’t already been using it. However, people sometimes do register marks that were already in use by other businesses.
If you began using the name before the other company registered it, you will be able to continue using it. However, you will only be able to use it in the market in which you were using the mark when the other company registered the name. The other company that has registered the trademark will have priority for its use in all other markets and can stop you from using it in new locations. This means that you should register your trademarks regardless of how long you have been using them.
If the other business registered the mark prior to your first use of it, there is an issue. When a company registers a mark, other businesses are considered to have constructive notice that the mark cannot be used.
When in doubt, contact an experienced trademark attorney to assist you in searching and applying for a trademark. You don’t want to be on the receiving end of a cease and desist letter for trademark infringement.
I built my law practice on the premise of being a life raft in a sea of sharks. I want to be an advocate for those that have been wronged and are too intimidated to seek help. My firm is here to explore your options, guide you through your legal journey, and give you that safe space to ask questions! There’s no such thing as a stupid question…Only the ones you don’t ask. So, my question to my clients is not “do you have any questions?” But rather “what questions do you have?”
As always, the Kazi Law Firm is standing by to help you in your time of need. Don’t hesitate to contact us today. We specialize in real estate law, landlord-tenant disputes, immigration, and wills & estate planning. Family is at the core of our practice. Just as we treat our family with respect and understanding, we treat yours. Come join the Kazi Law Firm family today!
Why swim alone in shark-infested waters when you don’t need to?
When you apply to be licensed as a corporation or LLC, the Secretary of State’s Office will confirm that your business’s proposed name is not already in use in your state. State laws vary about how different similar names of businesses can be, though they should be distinguishable. If it is too similar, then the license could be denied. If you are approved, the name of your business is protected under state law. It is critical to remember that although another LLC or corporation will be prohibited from using your business’s name, a sole proprietorship or partnership still may be able to use it. The name may also be taken by businesses in other states. As a business owner, you may be satisfied with the protection of your brand at the state-level, but if you are concerned that you may have issues with businesses out of state displaying the same name, then you should look into further protection. The Kazi Law Firm, PLLC can explain the benefits of having these protections in place and if you decide to protect your business name or brand across the United States, a federal trademark will be the most beneficial.
A trademark is a phrase, word, logo, design, or symbol (or any combination thereof) that distinguishes a business over their competitors. Trademarks essentially act as a business’ identity. The inherent purpose of trademark law is to prevent consumer confusion and protect the business owner’s intellectual property. There are of course limits on what can serve as a mark. Generic names, common everyday phrases, phrases used for non-business purposes, etc. cannot be trademarked. Trademarks are granted federally by the US Patent and Trademark Office (USPTO) and the protection extends from the federal to the state level as well. When a trademark is granted, the owner has the exclusive rights to its use and can prevent anyone else from stealing it or using it in their course of business. You may choose to not trademark your business name, but it is prudent to conduct a search on the USPTO database to ensure that nobody else has filed a trademark for the same business name (in the same industry) in order to prevent trademark infringement.
Please note: The trademark process generally takes 6 to 9 months from the initial filing
date with the USPTO.
1. Search – If you have decided to file for a federal trademark, it is not only prudent, but vital that you conduct a thorough search. This search does not consist of a broad Google search, but is an elaborate and extensive search into the proposed mark and variations of it to dictate whether it is already used in commerce.
a. If your proposed mark is shown to conflict with another and is likely to be denied, the Kazi Law Firm will assist you in refining your mark to be stronger and more distinctive.
2. Examination – This step takes the bulk of time in the trademark process and usually takes 3 to 4 months. During this critical review, the USPTO examining attorney determines whether the likelihood of confusion exists with another registered trademark. The attorney is looking for additional issues, such as whether corrections are necessary on the application, whether the mark is largely descriptive, geographic, common, etc.
a. If the examining attorney finds no issues with the application and proposed mark, you will be approved for publication.
b. However, if there is a problem notated on the application, you will be issued a Non-Final Office Action, to which you must respond.
3. Non-Final Office Action – You must respond within 6 months of receipt. It is in your best interest to respond as soon as possible, as to not further delay the trademark process.
a. Once you submit your response, the examining attorney will review the new information, which usually takes about 3 to 4 weeks. He/she will then determine whether you will be published.
4. Publication – Once you are approved for publication, your proposed mark will be published for opposition for 30 days. Essentially, this publication puts the world on notice that if an owner of another mark feels your mark will damage their existing mark, this is their opportunity to formally object by filing an opposition proceeding.
a. If no one files an opposition proceeding, your mark will be registered.
5. Registration – FINAL step in the process. You have officially registered your trademark.
a. Now it is your responsibility to maintain your mark by renewing your registration as required by law.
i. Trademarks are generally valid for 10 years
ii. Must be renewed between the 9th and 10th year following your registration date and each successive 10 year period thereafter
Please contact the Kazi Law Firm, PLLC for your trademark needs. Let us protect your
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