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Oppenheim Law | Miami Trademark Attorneys
Trade dress and trade secrets:
Trade dress consists of a combination of various elements that are used to promote a identifiable product or service. For a product, trade dress may be the shape, size, design, and packaging of the product itself such as a Coca Cola bottle. For a service, it may be the décor or environment in which the service is provided—for instance, the distinctive décor of the Hard Rock Café restaurant chain. Trade dress makes the presentation of a product or service uniquely distinctive. Other common elements of trade dress may include:
- Building exteriors and interiors
- Menu Items and Signature dishes
- Product size and product shape
- Interior layout and furniture
The designs, shapes or other aspects of the product that are created strictly to promote the product or shape are protectible trade dress. Those aspects of the business that are included as its elements must be used uniformly and consistently throughout all advertising, franchising and licensing to create distinctiveness.
Determining if you have a protectible trade dress must be analyzed because some trade dress can not be protected if the shapes, designs, colors or materials that make up the trade dress serve a function outside of creating brand recognition.
If you have a product or service, questions to consider as to whether you have a protectible trade dress are:
- Is the trade dress used to primarily make the product or service unique and easy to identify? Or,
- Is the trade dress essential to the use or purpose of the product or service?
Our team is able to help you identify whether you have a protectible trade dress, and, if so, can protect your trade dress further by filing a trademark application for the trade dress.
Trademark Clearance Search:
Trademark Clearance is a review of registered and common law (unregistered) trademarks. It includes pending, abandoned, and expired trademarks applications. While trademark searches are not a prerequisite to filing, searching is always recommended as it helps identifying identical or similar marks used to market related or closely related products. Those similar marks may act as bars to the adoption, use, and registration of a trademark, or even may open the door to liability for trademark infringement.
We, at Oppenheim Law, can assist you in performing broad and cost-effective trademark clearances before applying, adopting, or even attempting to adopt a new mark in commerce. This allows you to maximize the chances of success in your trademark registration while minimizing your legal risks in the process.
Registering Trademarks is an intensive process and may take from a year to 18 months when the examining process is seamless. Therefore, success in obtaining a registration is closely related to crafting an accurate and comprehensive trademark application. From selecting the appropriate class of products or/and services, to the proper selection of a specimen that meets the requirements of the trademark registry (United States Patent and Trademark Office in the U.S.; international offices using the uniform application under the Madrid Protocol or Foreign Trademark Offices), every part of the application requires legal and technical knowledge.
At Oppenheim Law, we guide you through the process by preparing and filing trademark applications that meet technical and legal requirements. This not only increases the chances of obtaining a trademark registration, but also reduces trademark registrations’ costs and time.
Office Action Responses:
Once an application for trademark registration is filed it is assigned to an examining attorney that reviews every aspect of the application, including registrability of the mark and compliance with applicable laws. If, on the examination, the examining attorney finds that the application is not entitled to registration for any reason, she/he will issue an Office Action. The Office Action supplies information as to how to cure the defect and gives the applicant six (6) months to respond.
In the event that you receive an Office Action, we can assist you in analyzing the basis of the denial and preparing and filing a proper response addressing the legal and technical issues detected by the examiner.
Trademark (Brand) Monitoring:
Trademark owners must police the market for infringing uses of their trademarks as governmental entities offer the benefit and legal advantages of registration, but do not monitor the market for infringement. Due the massive amount of data exchanged in commerce with the advent of the internet, it is impossible for trademark owners to physically look for infringers.
Oppenheim Law offers trademark watch services that monitor the web for selected alerts. We will work with you in developing a broad and cost-effective trademark watch alerts. You will receive a regular report, which meets your duty to police for infringers. By having the report, you will be able to make informed decisions about enforcing your rights when conflicting marks are found.
Trademark Change of Ownership:
All IP assets are negotiable and valuable, hence trademarks, including domain names, are marketable assets. We are able to assist you with the negotiation, preparation, and execution of trademark sales and purchases. From drafting the necessary documents and filing them for recordation with the appropriate institutions, generally the Unites States Patent and Trademark Office, to acting as an escrow agent to facilitate the sale, we are able to facilitate these processes allowing parties to move these assets in commerce seamlessly and profitably.
Trademark Portfolio Management:
Registered trademarks require maintenance. Aside from monitoring for infringers, documents must be filed periodically with the trademark registry to keep the registration alive. In the United States, the registrant of a trademark must file affidavits of use indicating continual use of the Trademark in commerce. International registries have their own maintenance schedules, but also require periodical filings. Those filings must include specimens that authenticate and show the actual use in commerce. All filings are reviewed for accuracy and authenticity by an examining attorney.
If a registrant fails to meet the trademark registry’s deadline the trademark might be marked abandoned and may become available for registration by another registrant.
Oppenheim Law offers services of brand management in which we assist you by organizing and tracking maintenance deadlines of all their trademarks. We also offer document retrieval of notices and a single point of contact with the different trademark registries, so you are up to date with any information pertaining to your registered trademarks.
Trademark Renewal Filings:
In the U.S. the United States Patent and Trademark Office has developed procedures of renewals for registered trademarks. Between the fifth and sixth year after registration, registrants must file a Section 15 declaration of incontestability if the mark has been in continuous use since registration. Incontestability means that the registration is “conclusive evidence of the validity of the registered mark and the registrant’s exclusive right to use the mark in commerce”. Similarly, between the ninth and tenth year of registration, registrants must file a Section 8 “Affidavit of Continued Use” and a renewal application if the registrant wishes to renew the registration for an additional 10 years. Those filings create valuable evidentiary presumptions provided by incontestable registration and also maintain the registration alive, hence, it is crucial that they are accurately and timely filed.
We assist you in tracking deadlines on trademark maintenance as well as in preparing and filing the necessary affidavits and renewals to preserve and strengthen their trademarks.
Trademark Opposition and Cancellation Proceedings:
After trademark application are examined, but before there are effectively registered, trademark registries publicly publish them for opposition. This gives an opportunity to the general public to raise any opposition to the registration of a candidate trademark. All trademark monitoring services alert owners of similar marks about these published trademarks so they can decide whether those published marks are likely to be confused with their own trademarks. In case an owner of an existing trademark finds that there is likelihood of confusion, he/she can oppose to the registration of the trademark or move to cancel a registered trademark, if registration has happened. Those proceedings open a semi-judicial adversary review of both marks in which the trademark registry forms a panel of examiners that ultimately decide whether the opposed registration should be barred or cancelled or not.
Depending upon your needs within this process, our attorneys at Oppenheim Law can advise and represent you accordingly.
Domain Name Selection and clearance:
We assist clients in selecting a domain name that will help you increase your brand, providing you with a brand that has the potential of developing into a valuable asset. A comprehensive search of a domain name also reduces the risk of infringing on a third party’s trademarks. While there will always be risk associated with the adoption, use or attempt to use a new mark, including domain names, a proper clearance is needed not only to help identify similar marks, but also to serve proof of good faith and fair dealing.
Our attorneys assist clients in selecting the best domain names under the spectrum of distinctiveness. We also assist with clearing the domain name and properly documenting the clearance process before registering a name with a Domain Name Registrar.
Domain Name Disputes:
With the advent of e-commerce, domain names are virtual storefronts. As a result, domain names are highly valuable and disputes over ownership are constant. We assist clients filing and defending domain names disputes under the Uniform Domain Name Dispute Resolution Policy proceedings, which is the international policy used in the enforcement of domain name owner’s rights.
Oppenheim Law | Miami Trademark Attorneys
2500 Weston Rd #404
Fort Lauderdale, FL 33331