Trademark Lawyer NYC

Trademark Attorney Near Me

The Fried Firm is located in the historic DUMBO area of Brooklyn, with an office at 231 Front St., Suite 216, Brooklyn 11201.

DUMBO has long been a hive for New York’s artistic energy with its many galleries, studios, murals and architecture. Our firm is located off the York St subway stop, conveniently serviced by a number of trains. Nearest landmarks include: BridgePoint, Nobody Told Me, Downtown Pain Physicians, and Valrhona Chocolate.

What Does Trademark Law Protect?

Trademark law in the US originates from the Commerce Clause and is based on the concept of market utility. Trademarks protect designations of commercial sources, like brand names, packaging designs, and logos, in order to foster an efficient marketplace and promote fair competition.

Accordingly, if a competitor simply imitates an entity’s success in every form, it creates market inefficiency by reducing competitive options for the consumer. This is where trademark law steps in to grant protection to brands that meet its three main requirements: (i) distinctiveness, (ii) non-functionality, and (iii) usefulness in commerce. Thus, trademark law protects unique ideas that are already used in commerce and serves a purpose beyond functionality.

Trademark vs. Service Mark

A service mark protects the unique services offered to consumers (as opposed to “goods” that are protected by trademarks). Examples include character names, radio personalities, titles, and more. Service marks are governed by Section 360 of the General Business Law of New York.

Trademark Laws in New York: What Are the Key Requirements for Businesses?

Your trademark application must contain certain specifications when filed in the state of New York. Our office can prepare your trademark application to ensure it conforms to the state processes. We can also file it correctly and ensure that your licensing meets renewal requirements periodically. A trademark registration lawyer will help you prepare the key requirements for your initial application, including:

• Information about the applicant and the trademark
• Descriptions of goods and services in connection with which the trademark is used, including the mode and manner in which it is applied and the class in which the goods and services fall under
• Proof of dates in which the mark was first used a) anywhere and b) within the state of New York
• Three examples showing the mark in practice
• Confirmation with the US Patent and Trademark Office (“USPTO”) or with the Secretary of State showing that there is no identical registration existing

Why is Federal Registration Preferred in Trademark Applications?

A federal trademark registration with the USPTO allows the owner to have rights throughout the US and its territories. While state trademark registration only protects the trademark in the state where it is registered, federal registration enables broader protection. Once your trademark is listed in a public database, it strengthens your position if you need to take action against infringement.

Barring limited exceptions where federal registration is unavailable and state registration is the sole avenue available, it is best to register your trademark federally so you may expand your business across state lines and use the ® symbol indicating third parties of your rights to the trademark.

Are There Any Benefits to Trademark Registration in NYC?

Trademarks play a big role in the long-term success of a business by protecting its core identity and ensuring that the effort put into the business is not lost to copycats as soon as it gets off the ground. The most successful businesses in the world are protected by robust trademarks that help consumers identify them and therefore, perpetrate brand loyalty. It is advisable to register your trademark in NYC for its several benefits, such as:

• You get a nationwide priority for using the trademark: Failing to register your trademark means your entity may be limited to a certain geographic area where your trademark is in use (as opposed to nationwide protection).
• You can file a federal court action: Strong evidence of continuous use of your trademark since its registration can help with filing injunction orders. You may be able to halt competitors from profiting off of your brand’s success, as well as recover a disgorgement of profits from infringers, along with monetary damages, legal fees, and costs associated with a federal court action.
• You can enter into licensing/assignment agreements easily: Your trademark, once registered, is a business asset in its own right. Registration increases its value, and enables you to enter into licensing and assignment agreements with other persons.
• Your competitors will be discouraged from using a similar trademark: A registered trademark allows others to find it within the search system. This not only strengthens your claim in disputes by providing other parties with a constructive notice of your trademark, but also discourages competitors from making similar choices.
• Your trademark registration can help you file international applications and more easily resolve domain name disputes: A registered trademark streamlines branding efforts across international borders as well as online. In case of issues with the ICANN (International Corporation for Assigned Names and Numbers), it is easier to prove your rights to your trademark.

What is Trademark Infringement?

Trademark infringement occurs when someone uses a trademark without permission on or in connection with goods and services, thereby misleading consumers. Trademark infringement examples include a clothing brand that sews in a logo for a more upscale fashion house as part of their design, or a toy store that markets a toy with a cartoon character on it that is not an approved use by the owner of the cartoon company.

A trademark infringement case is generally built on the following elements:

1. The trademark owner owns the trademark through prior registration or common law use
2. The defendant used the mark without the owner’s approval
3. The trademark was used “in commerce” to sell, distribute, market, or advertise goods or services
4. The unauthorized use of the mark was likely to confuse consumers or be detrimental to the trademark owner in some way

Trademark infringement lawsuits can be expensive affairs. A trademark infringement lawyer in NYC can help protect your mark and defend it against frivolous infringement claims.

Trademark Infringement vs. Dilution

Trademark dilution weakens or “dilutes” the inherent distinctiveness of a trademark, even though it does not directly infringe such mark. This occurs when a competitor uses the trademark in a way that chips away at what makes your brand unique, like an imitator skating as close to your design as possible but with slight variations. This essentially “blurs” your mark’s distinctiveness in the marketplace.

Tarnishment – another form of dilution – happens when another company creates a visible knock-off of your brand or uses it in an unsavory way, thereby damaging your reputation.

What Does a Trademark Attorney Do?

Protecting your trademark often extends beyond your initial registration; you need to build strong evidence of your trademark in use. A trademark lawyer can help you maintain relevant documentation from the get-go and focus on the bigger picture, instead of putting out fires started by copycats. At the Fried Firm, our trademark lawyers in NYC are adept at providing the following services:

• Trademark search and clearance prior to filing an application: Our firm will conduct a thorough trademark search to ensure you register something unique prior to filing your application. We will also prepare your application accurately, so that you do not have to pay additional fees or miss out on filing deadlines.
• Trademark and domain name registration: The Fried Firm can register your trademark as well as your domain name to build your brand on multiple fronts.
• Trademark licensing: If you wish to license your trademark, our firm can represent you as skilled negotiators so you never accept less than what your brand is worth.
• Trademark infringement and enforcement: Should another person seek to profit off of your success, our firm can zealously defend your trademark and fight for you to recover damages and costs.
• Domain name disputes: The Fried Firm attorneys are well-versed in domain name law, and can help ensure that your online reputation is as secure as your presence in brick-and-mortar stores.
• Protection against counterfeits and imitation of marks: Counterfeits and imitation harm your brand’s singularity as well as mislead consumers. At times, counterfeits can associate your brand with unsafe labor practices, and problems with customs, and may even expose consumers to dangerous chemicals and materials. Our firm vigorously protects your trademark against counterfeiters, removing them from the market space whenever possible.
• Protection against unfair deceptive practices and false advertising: Deceptive practice claims and false advertising often come into play with trademarks that are particularly trusted and valued by consumers. These claims involve proving that a defendant’s actions mislead consumers and cause harm to the trademark owner.
• Trademark maintenance, renewal, and portfolio management: Your portfolio must be renewed regularly to stay active. We can help ensure that your trademark remains active and your NYC business meets federal and state trademark compliance.

How to Choose the Best Trademark Attorney in NYC

Choosing a trademark law attorney should be done bearing in mind your business’ unique needs, goals, budget, and perspective. You may want to shortlist a few firms based on attorney experience and skills, fees, reputation, and client reviews. Then you might want to consult with shortlisted trademark law firms to make sure you exchange relevant questions and share your expectations for the process.

How Much Does a Trademark Lawyer Cost?

The cost of trademark attorney fees can vary depending on your specific needs. At The Fried Firm, we understand you need clarity on what you’re paying for. This is why we offer 15-minute complimentary consultation to discuss your situation and ensure we’re a good fit to help achieve your goals.

Why Should I Hire a Trademark Lawyer at The Fried Firm?

Trademark law can protect your business and what you’re building from the very start. At The Fried Firm, our licensed attorneys have the background, experience, and skills necessary to provide strategic guidance to our clients seeking help with all trademark-related services.

We don’t just react to problems – we anticipate potential risks and nip them in the bud to save you time and money. At the same time, we understand that unexpected issues can arise and thoroughly prepare for litigations so we may defend your brand aggressively.