Trademarks Registration And Infringement Litigation
As part of our intellectual property practice, Houston Harbaugh, P.C., assists entities in Pittsburgh and throughout Pennsylvania with the trademark registration process and enforcement of trademark rights. We take a proactive approach, anticipating potential issues before they arise to avoid unnecessary delays or denials in the registration process. As experienced litigators, we are well positioned to represent clients in trademark infringement matters.
What Is a Trademark?
A trademark or service mark includes words, names or symbols (or any combination of them) that are used or intended to be used to identify and distinguish goods or services from different sellers and to indicate the source of those goods and services.
Marks generally fall into one of four categories: fanciful or arbitrary, suggestive, descriptive, or generic.
- Fanciful marks (those with no dictionary or other known meaning) or arbitrary marks (actual words with a known meaning that has no relationship with the goods or services protected) are inherently distinctive and the strongest and easiest to protect.
- Suggestive marks (those that suggest, but do not describe qualities or a connection to the goods or services) are registrable and considered strong marks.
- Descriptive marks (words or designs that describe the goods or services) are considered weaker and more difficult to protect
- Generic marks (common, everyday names for goods or services) are never registrable or enforceable.
How Do You Register a Trademark?
As part of our intellectual property services, we work with our clients to determine whether a desired mark is registrable, and if so, we help them prepare, file and obtain their respective marks.
In particular, in order to determine whether a particular mark is available and protectable, we conduct a thorough search of the Trademark Electronic Search System (“TESS”), which is intended to determine whether any other person or entity currently owns (or has applied to own) a registered mark that is identical or substantially similar to the mark sought by our client.
We also search the USPTO’s goods and services manual to determine the classes of goods or services to which the proposed mark relates. We then prepare and file an electronic application for review by the USPTO.
The Trademark Application Process
During the application process, we also respond to USPTO office actions in order to try to overcome issues that an examiner may find with respect to the desired mark.
For example, an examiner may refuse registration on the grounds that there is a likelihood of confusion between the desired mark and a pending application or existing mark owned by another party.
As another example, an examiner may determine that the desired mark is weak, i.e., descriptive of the goods or services, which would make the desired mark difficult for the client to use and protect against potential infringers.
Trademark Trials and Appeals
We also represent our clients in matters before the Trademark Trial and Appeal Board (“TTAB”), which has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.
The Benefits of Federal Registration of a Trademark
Federal registration of a mark is not required; however, owning a federal registration provides certain advantages, including a legal presumption of the ownership of the mark and the exclusive right to use the mark nationwide, public notice of ownership of the mark, and the ability to bring an action concerning the mark in federal court.
Trademark Infringement Litigation
In addition to prosecuting trademarks for our clients, the attorneys at Houston Harbaugh, P.C., also represent our clients in litigation matters involving trademarks. We have represented various clients as both plaintiffs and defendants in trademark infringement cases in federal court.
We have defended a franchisee that was being sued for trademark infringement and for alleged violations of the franchise agreement, and we were able to posture the case in such a way through aggressive litigation for the client to negotiate a successful settlement.
In another matter, we represented a trademark owner that sued a competing entity for using and trading on a name that was identical to our client’s mark. Our client obtained a consent order from the defendants that they would not use the mark in any capacity and also recovered a favorable settlement.
We also represented a client in a TTAB proceeding where another user contested the client’s right to use the trademark.
Protect Your Brand. Talk To Us About Trademark Representation.
Houston Harbaugh is a trusted name in intellectual property representation. Our trademark attorneys help clients navigate intellectual property including trademarks and copyrights by providing them with the knowledge and information needed to make informed decisions. For more information, call 412-281-5060 or send our intellectual property attorneys an e-mail by completing the contact form on this website.
- Representation of battery testing manufacturer in litigation and on appeal.
- Representation of a commercial lighting manufacturer in litigating patent infringement claims.
- Representation of medical and pharmaceutical products manufacturers in patent
, unfair competition and
false advertising matters.
- The representation of a metals manufacturer in a trademark dispute.
- Advising a small business client regarding copyright and trademark rights and defending his business against attempts to invalidate those rights.
- Defending a natural gas exploration company against a patent invalidation lawsuit and prosecuting a counterclaim for patent infringement.
- The representation of minority members of a green technology limited liability company in a shareholders’ derivative action against the majority member for violations of RICO, fraud, and breach of fiduciary duty.
- The representation of a Fortune 500 telecommunications company against a foreign manufacturer for misappropriation of trade secrets and breach of contract.
- Representation of a telecommunications company in federal litigation brought under Federal Trademark Dilution Act and Digital Millennium Copyright Act by a designer and manufacturer of networked communications systems and related software.
- Representation of a Dutch corporation which owned the exclusive rights and license
to the “total image” of one of the world’s foremost tennis superstars in action against defendant corporation for breach of endorsement contracts.
- Advising a franchise business regarding the need for specialty intellectual property insurance coverage and reviewing several competing proposed insurance policies.
- Providing opinions and opinion letters to individuals and companies on patent and trademark rights, risks and
- Representing employers and employees in disputes over intellectual property licensing, royalties and ownership.
- Defending Fortune 500 and mid-sized companies against claims of patent infringement.