Trademark Law

A trademark/Service Mark is a word, phrase, slogan, symbol, or design (or combination thereof) that distinguishes your products or services from others. Trademarks and Service Marks identify and distinguish the source of the goods or services. Marks are symbols of quality and goodwill that assure consumers that they will receive the same high-quality product or service this time as they did the last time.

At the Law Offices of Nikki Siesel PLLC, our lawyers have extensive experience helping clients learn about a wide range of intellectual property matters, including trademarks. We strive to provide comprehensive trademark services, from inception of the idea to applying for trademark protection and successfully resolving any disputes. A trademark or Service Mark is an invaluable attribute of your business. Protect it from the start by securing federal trademark protection. Contact the Law Offices of Nikki Siesel PLLC to begin the process.

You always want to include the ® symbol with your trademark once it is registered with the USPTO. This notifies third parties of your legal rights. It will deter third parties from using your trademark without authorization and it will dissuade others from adopting a similar trademark for related goods or services. It is also critical that you use a trademark term as an adjective to describe the goods or services and not as a noun or a verb. The objective is for the trademark term to become an indication of source for the goods and/or services. However, once a trademark becomes synonymous with the general class of goods or services, it runs the risk of becoming generic. Moreover, one’s intellectual property rights in the Mark may be lost.

You may use the "TM" (trademark) or "SM" (Service Mark) symbol at any time in connection with your goods or services. The symbols TM and SM indicate only that someone is claiming rights in a Mark, and nothing more. It does not mean a trademark application has been filed or that a trademark registration has been issued. Once you register your trademark you gain the right to use ® or "Registered Trademark" in conjunction with your Mark.

Our firm focuses on trademark law and other related areas of intellectual property, including domain name disputes and copyright registration. Our New York trademark attorneys have years of intellectual property experience, as well as connections across the globe to ensure protection of our clients' business interests. Whether you are starting your first business or your corporate enterprise has 50 Marks in its portfolio, we can provide comprehensive legal services to meet your needs.

Send us an e-mail or call our office at 914-949-9550 to schedule a free consultation with a New York trademark lawyer. We work with individuals and businesses throughout a variety of areas, including New York, Westchester County, Stamford, Connecticut, New Jersey, across the nation, and internationally.

• Trademark Changes being implemented in December 2021 & 2022
• New USPTO Proceedings: Expungement & Reexamination
• USPTO Adjusts Trademark Filing Fees Effective January 2, 2021
• How Trademark Rights May Be Impacted by Coronavirus Outbreak

• Who Should Be the Owner of a Trademark?
• The Importance of Naming the Proper Trademark Owner
• Joint Trademark Ownership
• Why It is Critical to Conduct a Clearance Search Prior to Registering a Trademark
• What is a Service Mark and How Can It Be Protected?
• What is Trade Dress and How Can It Be Protected?
• What is a Unitary Trademark?
• Protecting Your Trademark
• Can Abbreviations and Acronyms Be Protected Under U.S Trademark Law?
• Incontestable Trademarks
• Standard Character Marks (Word Marks) v. Special Format Marks (Design Marks)
• Simple Trademark Rules and Considerations
• Frequently Asked Questions
• Trademark Tips

• Filing Trademark Applications for Hemp After 2018 (Dec.) Farm Bill
• Update: Trademark Applications Involving Hemp/CBD Goods

• Examples of When Trademarks Can and Cannot Incorporate Geographic Terms
• The Importance of Selecting a Distinctive and an Inventive Trademark
• Disadvantages of Descriptive Trademarks
• Trademark Application Refusal Based on Descriptiveness & Deceptiveness
• Trademark Refusal for Failing to Function as a Trademark
• Overcoming a Merely Descriptive Refusal
• Factors to Be Considered When Determining If a Mark is Descriptive
• Generic Terms
• Merely Descriptive or Generic?
• USPTO Updates Policy (May 2022) For Generic Refusals
• How to Prevail on a Refusal Based on Ornamentation
• What is Acquired Distinctiveness & Secondary Meaning?
• Claiming Acquired Distinctiveness in Part
• Situations Where the Issue of Secondary Meaning Arises
• Using 'Other Evidence' to Show Acquired Distinctiveness
• Five Years of Use Can Demonstrate Distinctiveness
• Can Universal Symbols Function as Trademarks?
• Can You Use Your Name as a Trademark?
• Book Titles and Titles of Single Creative Works
• Names of Authors, Artists, Characters and Depictions of Characters
• When Will Acronyms Be Considered Merely Descriptive?
• Hashtags Have No Trademark Significance
• Beware of Using Trademarks as Hashtags
• The Functionality Doctrine of Trade Dress
• Celebrity Branding - Famous Names as Trademarks
• How Do Musical Artists Trademark Their Names?
• Using Secondary Source to Show a Mark Functions as a Trademark

• For the Purposes of Trademark Law What is Use in Commerce?
• Trademark Use Must Be Lawful Use in Commerce
• How Does an Applicant Prove a Bona Fide Intent to Use a Trademark
• Failing to Prove a Bona Fide Intent to Use Can Be Fatal
• Technical Trademark Use v. Use-Analogous-To-Trademark Use & Trade Name Use
• What Type of Use Will Qualify for Use Analogous to Trademark Use
• Use of Trademarks in Advertising
• Trademark Use by Trademark Applicant's Related Company
• Trademark Use on the Internet
• Internet Evidence and Trademark Prosecutions and Proceedings
• How to Avoid Fraud on the USPTO
• A Recent Precedential Fraud Finding
• Dates of Use in a Trademark Application
• Specimens - Look Simple But Can Be Tricky
• Specimen Rule Changes at the USPTO
• The USPTO is Strictly Reviewing Specimens

• Likelihood of Confusion Refusals – 2(d) Refusals
• Trademarks And Source Confusion
• Overcoming A Likelihood Of Confusion Refusal
• Persuasive Evidence To Overcome A 2(d) Refusal
• Overcoming a 2(d) With the Crowded Field Argument
• Similar Trademarks Used on Similar Goods
• Similarities In Trademarks
• The Importance Of The Relatedness Of The Goods Or Services
• How To Prove The Relatedness Of The Goods Or Services
• When to Challenge an Examining Attorney on the Relatedness Factor
• Challenging Third-Party Registrations In A 2(d) Refusal
• Retailers Selling a Wide Range of Goods Doesn't Prove Relatedness
• 2(d) Decisions Often Turn On Relatedness Evidence
• Other Considerations In A Likelihood Of Confusion Analysis
• CAFC Reminds the Board of the Importance of the Sixth DuPont Factor
• Famous Trademarks Receive A Broader Scope Of Protection
• Consent Agreements May Be Rejected By The USPTO
• Trade Channels and Likelihood of Confusion
• Likelihood of Confusion Fame v. Dilution Fame
• Design Marks and Likelihood of Confusion

• New Rules for Trademark Prosecutions
• New Trademark Rules Impacting Petitions to Revive and Requests to Reinstate
• Requests for Extensions of Time to File Statements of Use
• Collective Trademarks
• Why Register a Trademark in The U.S.?
• The U.S. Trademark Application
• Determining Which Filing Basis is Appropriate for Your U.S. Trademark Application
• An Applicant May Have Multiple Bases for a Trademark Application
• Filing Under Section 44(d) of The Trademark Act
• Filing Your Trademark on the Principal Register and Supplemental Register
• A Comprehensive Overview of the Supplemental Register
• Acceptable Trademark Specimens
• Electronic Displays as Specimens
• Office Actions
• What is a Drawing Page?
• State Trademark Registration
• Geographic Indicators as Marks
• Examples of When Trademarks Can and Cannot Incorporate Geographic Terms
• Trademarks That Falsely Suggest A Connection With Other Persons
• Trademark Disclaimers
• The Trademark Doctrine of Foreign Equivalents
• Consequences of Abandoning a Trademark Application or Withdrawing a TTAB Proceeding
• Is It Possible to Revive an Abandoned Trademark Application?
• Design Trademarks and How They are Treated by Examining Attorneys
• What You Need to Know to Register a Certification Trademark
• Registering a Service Mark at the USPTO
• Requirements for a Trade Dress Application and Expanding Protection to Websites
• Request for Reconsideration
• Amending Your Trademark Application to the Supplemental Register
• Common Grounds for Refusal of a Trademark
• Conflicting Marks in Pending Trademark Applications
• Immoral and Scandalous Trademarks
• Trademark Applications That Are Designated 'Special'
• Why an Applicant Would Divide a Trademark Application
• Why Might a Trade Dress Application Be Refused
• A Trademark Application Must Be Filed by the Trademark Owner
• Letters of Protest

• Amazon's Brand Registry Requires Federal Trademark Registration
• Amazon's Project Zero Gives Control to Brand Owners
• Unauthorized E-commerce Dealers of Authentic Goods

• Why Register a Trademark Outside of The U.S.?
• International Trademark Filings
• USPTO Requirements for an International Trademark Application
• Madrid Protocol Trademark Filings
• Holders of International Trademark Registrations Extending Protection to the U.S.
• Designation of Goods and Services in 66(a) Applications
• In Which Countries Should You Register Your Trademark

• Claims That Can Be Asserted in Opposition and Cancellation Proceedings
• Challenging Trademark Rights After Five Years of Registration
• Abandonment and Nonuse of a Trademark
• How to Expedite Trademark Cancellation for Nonuse or Abandonment
• Challenging Trademark Applications on Fraud and NonUse Claims
• Developments In The Fraud Standard
• Priority Determinations in Trademark Law - Constructive Use Priority
• Priority Determinations Based Upon Common Law Use
• Priority Determinations in Trademark Law - Foreign Rights
• Priority Disputes - Common Law Rights vs. Federal Trademark Registration

• Resolving Trademark Disputes Without Litigation
• Settlement Options for Trademark Disputes
• Is a Co-Existence Agreement the Right Choice for Your Brand?

• Board Proceedings
• Ex Parte Appeals
• Extensions of Time to Oppose
• The Standing Requirement for Oppositions and Cancellation Proceedings
• A Summary of the TTAB's Amended Rules of Practice for 2017
• Filing an Opposition or Cancellation Proceeding
• Opposition and Cancellation Proceedings - Defenses
• An Overview of Discovery in Board Proceedings
• Discovery Rules in Trademark Trial and Appeal Board Proceedings
• Accelerated Case Resolution (ACR) - Alternative to Typical Board (TTAB) Proceedings
• Evidence in TTAB Cases
• Secondary Meaning in Board Proceedings

• Trademark Assignments
• Recording Trademark Assignments and The Specific Rules That Govern
• Trademark Assignments & Intent-To-Use Applications
• Trademark Licensing
• The Nuts and Bolts of a Trademark Licensing Agreement
• Trademark Law and the Tacking Doctrine