Kathryn Dalli, Partner, Twomey, Latham, Shea, Kelley, Dubin & Quartararo, LLP, is available to speak on how business owners can protect their name or brand by obtaining a federal trademark registration.
Ms. Dalli says that registering a trademark for the name of a business or its brand with the U.S. Patent & Trademark Office (USPTO) provides protection in all 50 states. However, there are certain instances where you will be unable to obtain a federal trademark for your business. “If your trademark conflicts with a prior registered trademark or one that has been applied for in your channel of trade — that is, your area of business — the mark cannot be federally registered,” she says. “Also, if your name is descriptive of the services you offer, you will be unable to obtain a trademark for each service on the USPTO’s principal register.”
Two other instances that may preclude a business owner from federally registering the company name or brand are if the business involves the sale of marijuana and cannabis products (which are illegal under federal law), and the company does not do business outside its locality.
“In these instances, in which you cannot get a federal trademark, it might be better to obtain a state registration of your mark, which affords some protection,” Ms. Dalli says.
Ms. Dalli urges those who apply for a registered trademark to be patient, but also to be proactive. “The review and application process can take a year or more, and there is no guarantee that your application will be approved,” she says. “It is also your responsibility to monitor the status of your application. If you are thinking of obtaining a federally registered trademark for your name or brand, the best advice is to seek the assistance of a trademark or intellectual property attorney.”
Ms. Dalli concentrates her practice in intellectual property matters, including trademark and copyright infringement and unfair competition, as well as complex commercial litigation, real estate and foreclosures. She is a member of the American Intellectual Property Law Association and a former Co-Chair of the Suffolk County Bar Association’s Intellectual Law Committee.
