Trademarks
Trademarks are one of the three main types of intellectual property (IP). They serve as legal tools that protect businesses and their distinctive identifiers, such as names, colors, sounds, product shapes, logos, or even a combination of these elements. Trademarks are key for consumers to recognize, distinguish, and trust the products or services that are associated with a particular company. In essence, they serve as the DNA of companies.
In the United States (U.S.), federal trademark registrations are granted by the United States Patent and Trademark Office (USPTO). On the other hand, state trademark registrations are individually provided by government agencies of each state. The territorial scope of a federal trademark registration extends throughout the entire U.S. In contrast, the rights granted by a state trademark registration are limited to the specific state where the trademark is registered.
By obtaining a trademark registration, its owner acquires exclusive rights to use the trademark in connection with the identified goods or services. This prevents others from using similar trademarks for related goods or services.
Trademarks play an extremely important role in advertising and marketing of products and services, helping companies build and protect their reputation. For business owners, having exclusive control over the use of a trademark is crucial to establishing a unique identity and preventing competitors from capitalizing on a company’s hard-earned reputation. Trademarks are one of the most important assets for merchants, enabling them to stand out in the market and establish long-lasting relationships with their clients.
Trademark Services
To obtain a federal trademark registration in Puerto Rico, an application must be filed before the USPTO. Conversely, to obtain a state trademark registration in Puerto Rico, an application must be filed in the Puerto Rico Trademark Office (PRTO).
As trademark attorneys based in Puerto Rico, we advise clients on the filing and prosecution of trademark applications in the USPTO and PRTO. We further assist our clients in all phases of the trademark prosecution process, including executing trademark searches, drafting and filing of applications, preparing amendments, and responding to office actions.
We also manage various other trademark related matters. Some of our services include:
Trademark Registration
To register a trademark in the U.S. Patent and Trademark Office (USPTO) or the Puerto Rico Trademark Office (PRTO), a trademark applicant is required to fill out and submit a trademark application.
Find out more information about U.S. trademarks on the USPTO website by clicking the following link. Also, more information about Puerto Rico trademarks can be found in this link.
Trade Dress Registration
A trade dress is a type of trademark that protects the commercial look and feel of a product or service.
File Intent-to-Use Trademark Application
A type of trademark application that serves as a reservation of a trademark for a limited period of time and does not require evidence of trademark use at the time of initial filing.
Trademark Search
Serves to find out if there is a trademark registration or if someone is using a trademark in commerce which can cause conflict. It is usually performed before filing a trademark application.
A federal trademark search can be performed on the U.S. Patent and Trademark Office (USPTO) website using the following link. Also, a Puerto Rico trademark search can be executed on the Puerto Rico Trademark Office website, which can be accessed through this link.
Statement of Use
If an applicant files a trademark application on the basis of intent-to-use, a “statement of use” must be filed to prove use of the trademark in commerce within six months after the issuance of a “notice of allowance”. If a trademark applicant is not ready to file a “statement of use” after this period, it will need to file a “request for extension of time” for its trademark application to remain active.
Declaration of Continued Use
Serves as a statement affirming that a registered trademark has been in continuous use for a period of five years. A “declaration of use” must be filed between the fifth and sixth year from the date of registration. Subsequent “declarations of use” must be filed one-year before the end of every ten-year period after the registration date.
Declaration of Incontestability
A statement from the trademark owner that serves to claim incontestable rights and continuous use for five years of a registered trademark. After a trademark registration becomes incontestable, various aspects of it cannot be challenged by third parties, such as a trademark’s validity.
Response to Office Action
An office action is a letter from a trademark examiner, relating to issues with a trademark application.
Opposition Proceeding
Process which can be initiated to prevent the registration of a trademark during examination.
Cancellation Proceeding
Process which can be initiated to request that a registered trademark be cancelled.
Renewal or Maintenance Fees
If payment of renewal or maintenance fees are not submitted in time, a trademark registration lapses. For a trademark registration to remain active in the United States and Puerto Rico, renewal or maintenance fees must be filed one-year before the end of every ten-year period after the registration date.
Infringement Opinion
An opinion on the similarity or dissimilarity between two trademarks and relatedness of the goods or services being offered.
Ownership Opinion
Serves to identify who owns and holds the property rights to a trademark.
Trademark Monitoring
Serves to keep track of other trademarks and trademark applications to identify any likelihood of confusion between trademarks as early as possible.
Recording of Documents
Any document relating to interests in a trademark application or registration, such as assignments and licensing agreements, can be recorded in the USPTO.
Assignment
An agreement where a trademark holder transfers their right, title, and interest in a trademark application or registration.
Licensing Agreement
The owner of a trademark may grant others the authorization to manufacture and/or distribute goods or services using his trademark, according to a set of pre-established conditions.
Portfolio Management
Review and monitor deadlines, enter filings, and provide counsel on how to best maintain strong trademark protection.
Litigation and Enforcement
Includes investigations, replying to or sending cease & desist letters, filing of lawsuits, litigation, and settlement negotiations.
