The term “trademark” is often used to refer to any of the four types of marks that can be registered with the USPTO.

The two primary types of marks that can be registered with the USPTO are:

Trademarks – used by their owners to identify goods, that is, physical commodities, which may be natural, manufactured, or produced, and which are sold or otherwise transported or distributed via interstate commerce.

Service marks – used by their owners to identify services, that is, intangible activities, which are performed by one person for the benefit of a person or persons other than himself, either for pay or otherwise.

There are other types of marks that can be registered in the USPTO, but they occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks. They are:

PLEASE NOTE: Since the benefits conferred by registration are essentially the same for all types of marks, the term “trademark” is often used in general information that applies to service marks, certification marks, and collective marks as well as to true trademarks (marks used on goods) as defined above.

We recommend that you conduct a comprehensive trademark search prior to filing for a trademark.
A comprehensive trademark search is a search that searches the following databases:

Federal trademark database search for direct hits and similar marks, including similar-sounding names.
Comprehensive state trademark database search (all 50 states).
Common law database search of over 15,000,000 records.
Worldwide website name database search.

Why should I conduct a search prior to filing for a trademark?
In short, to minimize the dangers of using a trademark that is owned by another or that the courts deem to be similar to your mark.

Why can’t I use the mark of another to sell the same or a similar good or service?
In layman terms, because you will get sued. If you are lucky, you will just get an order prohibiting you from using the mark. If you are not lucky, you will be made to pay for damages that you caused the owner of the trademark and you might further be liable for their court costs and attorney’s fees.

Are there any other risks that I can experience by not performing a search prior to using my mark?

Absolutely, you can lose all the money you spent branding and promoting your mark when the court orders you to cease using your mark.

Do I need a trademark attorney to register my trademark?

We recommend that you hire a trademark lawyer to register your mark. A trademark attorney must have knowledge of trademark law and procedures if he is going to help you register a mark worth protecting. Our Miami trademark lawyers/attorneys will provide you with the following trademark registration services:

1. Our Florida trademark lawyers can help you determine the strength of your mark. We strongly advise you to order a trademark search prior to filing for a trademark. If you request a trademark search, we shall counsel you on the results of the search and whether it is safe for you to proceed with the use and/or the registration of your mark.

2. Our trademark attorneys will draft your trademark application. We will carefully describe your product (“goods and services”), for how we describe your product will affect how likely you are to register your mark.

3. We ensure that the trademark lawyer assigned to your case will review your specimen and drawing for compliance prior to filing your trademark application with the USPTO.

4. Our Miami trademark lawyers know how to respond to objections made by USPTO trademark attorneys with regards to trademark applications. We communicate with USPTO trademark attorneys prior to writing responses to objections in order to maximize our clients’ chances for registration.

5. After the successful registration of your mark, our attorneys will help you protect your trademark. We can help you prepare a cease and desist letter to any third party using your trademark. A cease and desist letter is a letter written to a third party when one believes that their trademark is being infringed upon.

Should I hire a Florida trademark infringement lawyer?

Trademarks help distinguish your company’s products or services from the competition. Your company should be concerned about trademark infringement. If another company uses a trademark that is the same or similar to that of your company, your company may lose profits. Alcoba Law Group, P.A. recommends that you hire a trademark litigation attorney if you suspect a company is infringing your mark or if you are being accused of trademark infringement.

In a trademark infringement lawsuit, a plaintiff has the burden of proving that the defendant’s use of a mark has created a likelihood-of-confusion about the origin of the plaintiff’s goods or services. The plaintiff has to show that it has a legal right in a trademark and that the defendant is using a confusingly similar mark creating a likelihood of confusion, mistake or deception with consumers.

A trademark litigation attorney must analyze the likelihood of confusion factors prior to filing a trademark infringement lawsuit or when defending a trademark infringement lawsuit. Courts generally consider the following likelihood of confusion factors when determining whether trademark infringement has occurred:

– the similarity in the overall impression created by the two marks;
– the similarities of the goods and services involved;
– the strength of the plaintiff’s mark;
– any evidence of actual confusion by consumers;
– the intent of the defendant in adopting its mark;
– the physical proximity of the goods in the retail marketplace; and
– the degree of care likely to be exercised by the consumer.

If your company has been the victim of infringement or has been accused of trademark infringement, we can help you.