Trademark Attorneys

[tomahawk dunk 321]

Does anyone have recommendations on attorneys that work/specialize in trademarks? Thanks

[Storm the Field 5293]

Where are you located? My firm (not me) has an IP group here in Houston. We've done hundreds of trademarks. Shoot me a PM. 

[Jerry Callo 8698]

First, place the trademark in an envelope and mail it to yourself.

[Braff Zacklin 13552]

@TwiceHorn

[TwiceHorn 31438]

Yep, I do them.  You can possibly do it on your own with a little help.

[HonkeyVape 107]

Is this for litigating against someone infringing upon your trademark? If so, I am listening and observing this thread. If it's just to file/register and own a trademark on the USPTO, anyone can do that for like $250 through the e-portal.

[boilerhorn 1373]

I have used this guy to help me deal with an infringement claim, among many other trademark filings, etc:

https://www.intprop.com/team/dwayne-goetzel/

 

[TwiceHorn 31438]

18 hours ago, HonkeyVape said:

Is this for litigating against someone infringing upon your trademark? If so, I am listening and observing this thread. If it's just to file/register and own a trademark on the USPTO, anyone can do that for like $250 through the e-portal.

It is quite doable.  However, there are a lot of simple mistakes that can be made.  When the uspto made online registration available to the public, we all thought, "well, there goes a nice lil bit of business."  But then we found that people came up with new and incomprehensible ways to fuck up a trademark application.  Such that in most cases, if they were to pay us to unfuck it, it would cost more than the original filing.

On litigation, it pretty much has to settle.  Unless it's a counterfeiting type case (even if lacking the intent), it's rarely worth it to either party to litigate to a conclusion.  And the outcome is usually so unpredictable as to make it not a reasonable business risk.

 

Edited June 30, 2023 by TwiceHorn

[tomahawk dunk 321]

Thanks everyone for the replies.

It’s regarding a trademark I did about 5 years ago and I need to respond to an office action. I have to get it done by mid September or lose the trademark.

Im currently in Portugal and will be back August 10, plus or minus. Was just thinking about getting an attorney to push it over the finish line for me. 

Not sure what I’ll do about it but I definitely appreciate the replies. 
 

 

[tomahawk dunk 321]

@TwiceHorn  I might pm you about it if that’s ok. If not, no worries 

[TwiceHorn 31438]

9 hours ago, tomahawk dunk said:

@TwiceHorn  I might pm you about it if that’s ok. If not, no worries 

Fine.  Did it grant?  Are you needing to file Section 8 & 15 Affidavits?

Probably no charge to deal with it.

[tomahawk dunk 321]

13 hours ago, TwiceHorn said:

Fine.  Did it grant?  Are you needing to file Section 8 & 15 Affidavits?

Probably no charge to deal with it.

The Section 8 Affidavit, filed on December 19, 2022, is not accepted for the reason(s) set forth below.

 

Summary of Issues

• SPECIMEN DOES NOT SHOW REGISTERED MARK
• SPECIMEN SHOWS DIFFERENT GOODS
• DECLARATION

[tomahawk dunk 321]

I did call the uspto office yesterday and found out that I have until March of 2024 so I’ll probably deal with it when I get back in august.

 

[TwiceHorn 31438]

10 hours ago, tomahawk dunk said:

I did call the uspto office yesterday and found out that I have until March of 2024 so I’ll probably deal with it when I get back in august.

 

Here's what you need to do.

First, dig up a specimen that shows the mark as used.  If this is goods, this means a product package that shows the mark, or the product itself.  Or, failing that, a "buy it now" webpage showing the product and the mark where you can actually purchase the product (not just advertising).  If it is services, a screenshot of the website offering the services that shows the mark.  Whether goods or services, the specimen will need to show the mark in use with the goods or services shown in the registration, at least some of them.  Don't make shit up, use whatever is used in connection with actually selling the products or services.  No "handbills," no business cards, no stationary or other items that have no real connection to the sale of products or services.

You will use the online form to respond and attach a jpg of the specimen.

You will need to swear that the specimen was in use in commerce before the time expired to file the Section 8 Affidavit.  That's a "radio button" on the online form.

Now, if you can't generate a specimen that shows the mark in the registration, or shows it in use with the goods or services recited in the registration, your mark is not, in fact, in continued use and the registration is not entitled to Section 8 renewal and will be canceled.

So, if you registered Tomahawk Dunk's Donuts, you will need a specimen that says "Tomahawk Dunk's Donuts."  Tomahawk Dunks Kolaches n Beer aint gonna cut it.  Similarly, if the goods were donuts, and now you sell kolaches, that probably aint gonna cut it either, even if the mark is the same.

Also, if you are able to satisfy these requirements, and have had the mark in use for the past five years, then you are entitled to file a Section 15 Affidavit of incontestiblity, which removes many of the defenses relating to the validity of the trademark.

Also, they usually set a three month or six month response period for these kinds of office actions.   You may have until March 2024 to file a Section 8 Affidavit, but since you have made the attempt, i think you must respond within the time allotted by the office action.  

I'm not quite sure on that as I have always responded within the time allotted by the office action.  ETA:  If you don't respond within the time alotted, you may be able to try again before the Section 8 period elapses, but you'll probably have to pay the fee again.

Edited July 1, 2023 by TwiceHorn

[HonkeyVape 107]

Talked to someone last week who basically said since Alice, it's not worth the effort, time or money to file a patent, not sure if that extends to trademarks.

[52-80 19147]

PM kevinmorgan@eskimohut.com for all your needs around intellectual property rights

[TwiceHorn 31438]

7 hours ago, HonkeyVape said:

Talked to someone last week who basically said since Alice, it's not worth the effort, time or money to file a patent, not sure if that extends to trademarks.

That's only really true for software patents, specifically application software and particularly so if its purpose is to "computerize" or put online a previously conventional paper or mental process.  Also the things once known as business methods.  And some biotech.

Doesn't apply at all to trademarks.