Chicago Trademark Attorneys & Lawyers
How it Works
Patrick Jones
Kimon Korres
John Ray
Shanna Palmersheim
Octavia L. Powell
Dragan Ivetic
Kevin Keener
Martin Lefevour
Justin Lesko
Ryenne Shaw
Jade Carpenter
Tomasz Barczyk
Caleb St.-Jean
Adam Urbanczyk
Peter Stasiewicz
Joe Brennan
Kristin Cass
Mark Wiemelt
Jonathan Grossman
Drew Whiting
Noam Raz
Jonathan Pasky
Malaika Tyson
Anastasios Garbis
Gianna Scatchell
Adam Scavone
Scott Weisman
Joe Giamanco
Jeffrey Antonelli
Christopher Matern
Erik Rakoczy
Kalpesh Patel
Mark Grzymala
Patrick Long
Saira Alikhan
Daliah Saper
Eric Onyango
Zafar Musvi
Ashley Kirkwood
Jeremy Spoon
Edward Farmer
Billy Joe Mills
Jonathan Decatorsmith
Paul Kossof
Ashley Kirkwood
Ariel Gurian
Steven Gray
Sean Swidler
Aasim Cunningham
Ric Gruber Jr
Diana Laskaris
Josh Goldberg
Jordan Finfer
Louis Phillips
Chris Werner
Dennis Esford
Sean P. Patrick, Esq.
Tawfiq Ali
Aaron Gillett
Jeffrey Norberg
John Ellis
Cara Dearman
Benjamin Rotman
Joseph Tylutki
Vlad Chirica
Margaret (Margie) O'connor
Maudia Washington
Fielden Fleming
Maudia Washington
John J Mcguirk
Douglas Belofsky
Peter Moore
Mark Swiderski
Maria Mazza
Chicago Trademark Lawyers
Legal Tips and Information
What Makes for a Valid Trademark?
In the startup world, trademark issues are rampant. Many teams struggle to develop unique marks for their business, products, and services – and may be somewhat lost with regard to the law surrounding trademarks.
When developing a mark that you intend to protect against potential infringement, it is crucial that you and your team understand what makes a trademark valid and enforceable under the law. Fortunately, the law (on the surface) is fairly uncomplicated: only distinctive trademarks are enforceable.
So, how do you know whether your mark is distinctive?
In the United States, there are certain core elements that – separately – function as the basis for a valid, distinctive trademark.
Arbitrary or Fanciful
If your mark is deemed arbitrary or fanciful, it will likely be considered to have inherent distinctiveness, and will therefore enjoy a high degree of trademark protection.
Fanciful marks have no meaning outside of the trademark context. They are created for exclusive purpose of defining and demarcating a unique product, service, or company. Google, Exxon, and Clorox are examples of fanciful marks with substantial brand recognition.
An arbitrary mark may have its own meaning outside of the trademark context, but this meaning is unrelated to the trademark. Apple (the company) is a famous example of an arbitrary mark. “Apple” refers to a type of fruit, of course, but the mark is used in a completely arbitrary manner to refer to the technology company and its products/services.
Suggestive
Suggestive marks are considered inherently distinctive and therefore entitled to a high degree of trademark protection, though not to the same degree as arbitrary and fanciful marks. A suggestive mark is one in which the name does not directly or obviously describe the character of specific products or services, but with some imagination, is evocative of such character. For example, the bus company name Greyhound is suggestive of speed, which is evocative of the character of the service provided, but this connection requires some imagination.
Descriptive
Descriptive marks are not ideal, but are quite common in the startup world. A descriptive mark – both in and out of context – to some degree describes, and does not merely suggest, the character of the relevant products or services. Descriptive marks are not considered inherently distinctive, and do not enjoy any trademark protection by default.
To entitle your descriptive mark to trademark protection, you must show that it acquired secondary meaning. A mark will be deemed to have acquired secondary meaning if the evidence demonstrates that the mark has come to be associated with a particular product, service, or company. For example, if you sell a product marked as “Jar of Beeswax,” you would have to show that the mark has come to be associated with your product specifically, and not with “beeswax jars” generally.
Generic
Generic marks are not entitled to any protection, and may not acquire secondary meaning. To put it bluntly: a generic mark can never be protectable. Generic marks typically refer to the categorical name of a product. For example, a pen company selling a ballpoint pen product called “Ballpoint Pen” would not be able to protect that mark, as it generically names the category of the product.
The Different Levels of Trademark Registration
Obtaining trademark protection is rather uncomplicated, though there are several options available with various advantages and disadvantages. As the options may confuse or overwhelm startups, let’s break them down into simpler, easier-to-digest parts.
Federal Trademark Registration
To register your mark federally, you’ll first have to show that your mark is being used and/or advertised across state lines (i.e., that it is not limited to one state) or is being used and/or advertised internationally. Then, you’ll have to register your mark with the US Patent and Trademark Office (USPTO).
Federal registration provides a number of important benefits: 1) it gives notice to potential trademark infringers about the existence of your mark; 2) it enables you to sue a defendant for infringement; 3) and federal registration grants you a presumption of validity and ownership as to the mark.
Illinois State Trademark Registration
If your mark is not being used, promoted, etc. across state lines or internationally, you may only be entitled to register it in the state where it is being exclusively used and promoted – here, the state of Illinois.
If you have a federal trademark registration, you do not need to register on a state-by-state basis.
With state registration in-hand, you are entitled to sue defendants who infringe upon your state trademark. You cannot sue those who infringe beyond state lines.
A skilled Chicago trademark attorney will ensure that you conduct an extensive trademark search to suss out conflicting trademarks in other state jurisdictions and in the federal register. If another party has an existing trademark, it may preempt your new Illinois-registered trademark.
Common Law Default Protection
You are not required to register a trademark to enjoy trademark protection, though it is good policy to do so. In the United States, you may be entitled to common law trademark protection if you are the first to use a given mark in the stream of commerce.
For example, suppose that you develop a product called “SleekTan,” which is a new tanning cream. You sell it over the years without ever having registered in Illinois or federally with the USPTO. If you were the first to ever use the name “SleekTan” in the stream of commerce, then you likely are entitled to common law trademark protection. You can sue infringers on the basis of this protection.
The problem with common law protection is that it is rarely applicable to geographic regions in which the mark is not established. Common law protection applies to those geographic regions where the mark has demonstrated brand recognition. If you use a mark locally, you may not be able to prevent a company across the country from using the same mark and building a significant reputation with it. If you intend to expand your business beyond your geographic foundations, then it is important to register your mark with the help of a trademark lawyer.
Trademark Infringement
Once you’ve entered the stream of commerce with your mark, you and your team may occasionally discover potential trademark infringement issues, both in your industry and outside of it. The possibility of trademark infringement can be quite frightening for a budding startup. Most startups invest a substantial amount of money, time, and energy into developing a cohesive, popular brand, and trademark infringement can stall company momentum.
For this reason, it is generally recommended that startups work with an experienced trademark attorney. Infringement concerns must be dealt with swiftly so as to minimize brand damage.
What Counts as Infringement?
A defendant will be found to have infringed on your trademark if it can be shown that consumers will be confused as to the source of the goods or services associated with the mark.
Whether a regular consumer would likely be confused is a matter for the courts to decide. They will weigh all the evidence and determine whether a consumer is likely to be confused between the marks at-issue. The factors include, but are not limited to: a) the level of protection granted to the mark itself (remember, arbitrary and fanciful are granted the highest level of protection, then suggestive, then descriptive, then generic); b) the similarity of the marks to each other, both in terms of content and aesthetic; c) evidence of consumer confusion; d) marketing overlap; and e) the defendant’s intent to infringe.
This can all be a bit overwhelming at first, so let’s clarify with an example.
Suppose that you develop a product called “SleekTan,” a tanning cream. Another company later develops a glossy wood epoxy called “Sleek Wood Tan,” meant for coating wood decks.
From the facts presented, it is likely that no infringement has occurred, despite the similarity of the marks. The mark “SleekTan” is suggestive, and is entitled to a high degree of protection, but the marks are still different in content. Further, consumers are unlikely to be confused since the products are used for entirely different purposes. The marketing channels used are also likely to be different, given the products’ function. Even if you were able to show that the defendant intended to infringe on your product, the court may find that no infringement actually occurred.
As trademark infringement is quite specific to the facts of the case, it is important that you work with an experienced, knowledgeable Chicago trademark lawyer. It is worth seeking the consultation of a lawyer prior to any infringement, as your lawyer will be able to advise you on the strength of your trademark protection and how to best preserve your mark (through registration, advertisement, etc.).
Why use UpCounsel to hire a Chicago Trademark Attorney?
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Legal Services Offered by Our On-Demand Chicago Trademark Attorneys
Our experienced Chicago trademark attorneys & lawyers represent individuals and businesses with everything they need to secure and protect their trademarks. Our attorneys can help individuals with everything from trademark clearance searches to determine whether the desired mark is available for adoption, use, and registration. By reviewing the search reports thoroughly, they can conclusively determine the extent to which a mark is already being used and the potential success of filing a trademark.
Trademark licensing can be complex, but our trademark attorneys have experience drafting agreements on behalf of both licensees and trademark owners - thus allowing you to capitalize on your valuable intellectual property. Our Chicago trademark attorneys can also draft and file your trademark with the United States Patent and Trademark Office (USPTO), including Intent to Use and Use in Commerce applications.
Our attorneys can also help protect your trademark around the globe by assisting clients with filing trademark applications under the Madrid Protocol, which allows trademark holders to obtain protection in multiple countries by filing a single application.
Improve Your Legal ROI with Affordable Trademark Attorneys that service Chicago, IL.
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This is the most recent 20 reviews out of 59 reviews for Trademarks & Copyrights attorneys in Illinois
Conduct Trademark Search
"Great knowledge and explanation"
Sall H
.
Skokie,
IL,
10 months ago
Trademark Registration chirrup
"Very helpful and responsive! Will continue working with him"
Grace H
.
Glenview,
IL,
about 1 year ago
U.S. Trademark App No 90256647: JOLT YOUR CAREER - Prosecution
"Thank you for quickly getting my trademark done."
Teegan B
.
Schaumburg,
IL,
over 2 years ago
Register Trademark
"Prompt, thorough, and professional. Great with communicating the progress of work being done."
Elena P
.
Saint Charles,
IL,
over 2 years ago
Trademark Registration
"Great attorney - highly recommended!"
Minerva Valuation A
.
Chicago,
IL,
over 3 years ago
Review my response to Gowling WLG
"Once again Lauri has demonstrated her knowledge and humanity. I would highly recommend her to anyone! Absolutely amazing person!"
Giorgi G
.
Naperville,
IL,
almost 4 years ago
Assist with Copyright Infringement
"Timely advice, follow through and excellent communication. Very reliable team that helped resolve the issue I had which I knew nothing about. Their counsel was invaluable. Highly recommended."
Amar R
.
Chicago,
IL,
almost 4 years ago
Register Trademark
"EXCELLENT ATTORNEY"
Chatto W
.
Chicago,
IL,
almost 5 years ago
Draft Response to USPTO Office Action (Trademark)
"Randy was very clear and upfront about the process of responding to a trademark action and made it easy for us."
Tyson M
.
Peoria,
IL,
over 5 years ago
Assist with Copyright Infringement
"Honest, prompt and quality work. Overall great experience!"
Greg B
.
Chicago,
IL,
over 5 years ago
Register Trademark
"Very professional, polite and knows how the trademark application works."
Al M
.
Schaumburg,
IL,
over 5 years ago
Trademark Registration
"He's good. Communicative, effective."
Lou Y
.
La Grange Park,
IL,
over 5 years ago
Register Trademark
"Carolina was great to work with! She was very clear on our intro call, and very prompt and responsive via messages as well throughout the process. Thank you!"
Zach R
.
Chicago,
IL,
over 5 years ago
Consult on Trademark Infringement
"Fast response. Very clear and patient."
Chris H
.
Galena,
IL,
almost 7 years ago
Assist with Copyright Infringement
"Good experience. Very clear expectations and knowledgeable"
Juan R
.
Barrington,
IL,
almost 7 years ago
Trademark Registration Services
"Jackson was professional and very knowledgeable. He also communicates very well and follows up in a timely manner. I will definitely be using his services for future projects."
Athalia S
.
Bloomington,
IL,
almost 7 years ago
Trademark Registration Services
"Great working with him. Highly recommended"
Isaac C
.
Des Plaines,
IL,
about 7 years ago
Standard US Trademark Package
"Very easy to work with on the trademark application. Clear, concise answers to questions as well. Recommended."
Avi S
.
Chicago,
IL,
over 7 years ago
Trademark Registration Services
"Very consistent, knowledgeable and helpful."
Tommie H
.
Northbrook,
IL,
over 7 years ago
Statement of Use
"We have used Alejandro a few times now and he has always been excellent. I would highly recommend him!"
Jason B
.
Chicago,
IL,
over 7 years ago
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