Frequently Asked Questions

WHAT IS A TRADEMARK?

A trademark is in essence a brand or a designation of origin.  Owners of products or services regularly use trademarks to inform consumers about the company or entity from which the product is coming.

For example, the trademarks FORD for automobiles and APPLE for computers, give consumers information about the sources of these products and thus about their quality, reliability, reputation, service, etc.

Marks may be classified as belonging in two main groups according to their purpose:  Trademarks or Service Marks.  In precise terms, Trademarks refers to the marks given to products, such as automobiles or computers, whereas Service Marks refers to marks used to identify services such as those provided by banks or restaurants.  Despite this distinction, marks are generally referred to as trademarks, regardless of whether they refer to the provision of a service or the name of a product.

Famous names of marks, for example, are: APPLE for computers, FORD for automobiles, and BURGER KING for restaurants.

WHY SHOULD I REGISTER OR BOTHER ABOUT A TRADEMARK?

The proper Selection, Registration, and Management of a trademark are important for several reasons.

Selection

Before you invest thousands, if not millions of dollars, in promoting and marketing a product, you should ensure not only that the mark is appealing and adequate for marketing, but also that its use is legal.

·    Someone who uses a trademark that is identical to another already in use, or that is confusingly similar to another in the same industry,

o   may be prevented by the owner of the identical or confusingly similar mark from using it;

o   may not be able to register the mark in the U.S. Patent and Trademark Office or the Puerto Rico State Department;

o   may lose money invested in the marketing, design, and publicity of the confusingly similar mark;

o   may be sued in state or federal court for trademark infringement, and may be subject to the payment of damages and attorney’s fees to the plaintiff.

Registration

According to the U.S. Patent & Trademark Office , owning a federal trademark registration on the Principal Register provides a number of significant advantages, including:

• A legal presumption that you own the mark, and an exclusive right to use the mark nationwide;

• public notice of your claim of ownership of the mark;          

• listing in the Patent and Trademark Office’s online databases;

• the opportunity to register the trademark with U.S. Customs and Border Protection to     

    prevent the importation of infringing foreign goods;     

• the right to use the federal registration symbol “®”;

• the ability to bring an action concerning the mark in federal court; and

• the use of the U.S. registration as a basis to obtain registration in foreign countries.”

Management

·        Owners must be careful to use their trademarks in such a way as to preserve their trademark rights. 

·        Trademark rights are mainly derived from the use of the trademark in commerce.  Continued use is consistent with continuous protection. 

·        This protection may disappear or may be reduced if the owner allows other people to use identical or similar marks without permission. 

·        Owners should also be cautious to use a particular trademark on products of similar quality.  If your trademark is identified with high quality products, for example, you should be careful not to use the trademark on products of lesser quality because the mark may begin to lose its meaning as an identifier of quality products.

·        Registration rights in the Patent and Trademark Office (PTO) and the Puerto Rico Department of State last 10 years, but may be renewed.  During this ten-year period an affidavit of use must be filed within the fifth and sixth year after registration to keep the registration alive.   

DO I NEED A LAWYER TO REGISTER A TRADEMARK?

·        You do not need a lawyer to select, register or manage a trademark.

·        A lawyer with specialized knowledge in the field, however, can help you select a trademark that is not only appealing to consumers, but also legally strong.

·        A professional search of the databases helps to select a mark that will not conflict with other marks in the territories that you seek to penetrate.

·        A trademark search will also help in avoiding the selection of a mark that is not limited by the existence of similar or identical marks in other potential markets.

·         The use of a lawyer for the registration process may facilitate and speed up the process of registration, which normally takes from nine months to several years, depending on the complexities of the issues that may arise.

·        A lawyer may help avoid unnecessary conflicts and opposition from the PTO or other trademark owners.

·        The specialized knowledge of a trademark attorney helps ensure that the mark is registered appropriately to fulfil the particular needs of the owner

·        Registration of a mark for the first time or occassionally may be time-consuming and frustrating because of the many legal and technical details of the process.

WHY THE LAW OFFICE OF ARTEMIO RIVERA, PSC?

·        Our office is committed to offer quality services in trademark registration.

·        We offer personalized service.  To discuss your case, you may choose to visit us at our office in Toa Baja or you may prefer to discuss the matter through Zoom or on the phone. Mr. Rivera will personally meet with you and/or your staff, and will work to ensure that our trademark services fit your particular needs.

·        Mr. Rivera has over fifteen years of experience working with trademark law issues.

·        He holds a Master of Laws with a concentration in Intellectual Property from Georgetown University and is admitted to practice law in Puerto Rico and Washington, D.C.

·        Mr. Rivera is the author of five law review articles, including one entitled Testing the Admissibility of Trademark Surveys after Daubert, published in 2002 with the Journal of the Patent and Trademark Office Society.