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Intellectual Property Lawyer

Protecting Your Intellectual Property

Trademarks, service marks and trade names are some of your company's most important and lucrative assets. They denote a product, information or idea that belongs to you and you alone. Correctly establishing and preserving your intellectual property is imperative to your brand and to your success. A trademark indicates the name of the source of the product or, if a service mark, the source of the service. It should be a symbol of your reputation for quality, dependability, and value. It is who you want to be known as. Trademarks provide the owner the legal right to prevent others from using confusingly similar symbols but only if your mark is considered "distinctive". Conversely, GENERIC marks [the product name itself (noun)] are never protectable. DESCRIPTIVE marks [i.e., they describe the mark] can become a registered mark but only if they become INHERENTLY DISTINCTIVE [e.g., Chicago Pizza®].

In the U.S.A., common law rights for unregistered marks are based on use of the mark where the first user [senior user] has priority over later users [junior users]. However, registering your mark with the U.S. Patent and Trademark Office ["PTO"] has significant benefits over common law rights. The benefits to a federal registration of your trademark are that the registered owner gets national priority rights, public notice of ownership, exclusive right to use the mark, federal court jurisdiction for infringement of claims, the right to record it with U.S. Customs Service to prevent counterfeit imports, statutory remedies, and the right to use the symbol ® after the mark. So a registered trademark can be very valuable to its owner.

Trademark Protection

Phase I: Trademark Strategies

Attorney Mark J. Guay will meet with you to review the various matters involved in selecting, using and acquiring your own trademark such as the difference between coined words, arbitrary words, suggestive words, and descriptive words. He will explain the laws involving trademarks and how these laws impact your risk management strategy such as the concept of the likelihood of confusion of your mark with other trademarks. Only AFTER you agree to a trademark strategy do we then proceed to search the mark.

Phase II: Trademark Search And Application

Phase two involves performing a trademark search of the U.S. Patent and Trademark Office to determine the availability of your intended mark. We will then offer you a comprehensive legal opinion based on the search results. If you choose to proceed with a trademark application, we will prepare and file it. Generally speaking, in the case of a conflict, the party with the first date of "use" will prevail. However, starting in 1989, certain trademark rights may also arise upon filing an application asserting an Intent to Use ("ITU") the trademark. Analyzing the search results is an important step in the clearing process.

Phase III: Trademark Registration

The trademark registration process begins once your application is filed. It may involve addressing potential PTO office actions from the PTO (upon their review of your application) requiring resolution before obtaining the official registration from the U.S. Patent and Trademark Office. An application for registration may be based either upon actual use of the trademark or an Intent to Use the trademark. While Federal registration is not necessary to create rights in a trademark, and it does not allow the registrant to infringe upon the prior-established rights of others. However, it has several significant advantages to the registrant. Once established, trademark rights do not end after a specific period of time, as do patents and copyrights; instead, a trademark remains the property of the owner as long as the owner continues to use it properly as a trademark. This is true whether or not the owner has obtained federal registration of the mark, but if federally registered, it must be renewed.

Phase IV: Post Registration

This phase involves various required filings for the protection of your registered trademark. Through careful policing and protection, your company can keep your marks unique and protect them from infringement or abandonment. An injured party can file in court for an injunction to stop the sale of similar goods, can sue for damages [including costs and attorneys fees], and can even request treble damages if the use was done in bad faith. Two major use exceptions to infringement are [i] Fair Use, and [ii] Parody. Fair Use usually results from use of the registered mark by another to merely identify the mark for comparison purposes. It is usually only allowed if the mark is used as reasonably necessary to identify the mark. The second common use that is legal is for parody purposes when the mark is mentioned to simply parody it. Lastly, preventing someone from using your mark can also be done by alleging dilution of same but it applies to famous marks only. The gist of a dilution claim is the alleged diluter is "BLURRING" your registered mark. Courts consider such things as the degree of distinctiveness of your mark, duration, extent of use, and publicity of the famous mark.

Remember trademarks are considered intellectual property - either yours or someone else's. So if your trademark is valuable to you then you should protect it. To do so it is extremely important that you work with a trademark attorney to come up with a strategy, register it, and then police your trademark property.

Copyright Versus Trademark Law Protection

Copyright registration offers companies a valuable tool to retain ownership over certain assets. They can be applied to many tangible work products. While registration gives you rights in the original work, your rights can change over time through your use of the material. For these reasons we urge you to consult with us, especially if you are preparing changes to your copyrighted material.
Copyright law covers such things as advertising copy, catalogs directories, price lists and other compilations of information. Copyright law generally does not protect names, titles or short phrases; these are covered by trademark law. Copyright law and trademark law most commonly intersect in an advertising copy.

Trademark law may protect the product or service name or logo, any distinctive slogans used in the advertising, and the distinctive features associated with the name or logo, such as its color or lettering style. Copyright law may protect any additional literal expression that the advertisement contains, such as the artwork and overall composition. Copyright law and trademark law also intersect on graphic designs used as logos. Trademark law generally protects the aspect of the logo that is used as a trademark. Copyright law generally protects the creativity "expressed" in the design. So in certain cases, a similar design can't be used as a trademark by anyone else when customer confusion would result (trademark law), and even absent customer confusion, the identical design can't be used without the design owner's permission (copyright law).

Trade Secrets

Knowing whether your product or service contains information that is used in your "trade" which you need to protect or keep "secret" is critical in establishing a sustainable competitive advantage. We help clients protect their trade secrets from being misappropriated by competitors, contractors and others using legal documents such as Nondisclosure Agreements, Noncompetition Agreements, Licensing Agreements. etc.

Establishing a legal system in conjunction with your overall business plan is crucial in going from a "survive" model to a "thrive" model. To help you do so, the 6 biggest mistakes you can make regarding trade secret law are as follows:

  1. Inadequate or no employment agreements or policies to avoid dissemination of confidential information.
  2. Inadequate or no non-disclosure agreements with outside contractors or buyers to protect confidential information.
  3. Ignoring protest/monitoring letters from former employers or third parties. Alternatively, failing to send protest/monitoring letters.
  4. No internal strategy or policy for what is confidential (e.g. email). No exit strategy for employees.
  5. No IP insurance or failure to read and understand your policy.
  6. No physical systems to ensure confidentiality. (e.g. shredding, technology escrow services for hard drive snapshots, etc.)

Our practice serves as a resource for you and your business. We are experts in the fields of critical thinking, decision making, tax planning, getting your business back on track, digital rights management, intellectual property, dot com planning and strategies, and doing business as a profitable entity. We work with you to create a symmetrical business strategy for success while still addressing asymmetric risk.

At the law offices of Mark J. Guay, P.C., our experienced lawyer represents clients throughout the Merrimack Valley, the North Shore of Massachusetts, and throughout New England. We also serve clients in Europe. The Massachusetts cities we serve include Amesbury, Andover, Bedford, Beverly, Boston, Cambridge, Danvers, Gloucester, Hamilton, Haverhill, Ipswich, Lawrence, Lexington, Lowell, Lynn, Marblehead, Newbury, Newburyport, Peabody, Reading, Rockport, Salem, Salisbury, and Swampscott.

Essex County ▪ Middlesex County ▪ Suffolk County

The information you obtain at this site is not, nor is it intended to be legal advice. You should consult an attorney for individual advice regarding your own situation.