New York City Trademark Lawyers
Legal Tips and Information
New York City Trademark Attorneys
Hiring a trademark lawyer in New York is essential to the health and well-being of a growing business that needs to protect intellectual property and trade secrets. Any tech start-up, private equity firm, established business, or emerging-growth company can use an experienced New York City trademark attorney to help move them closer to their goals.
When filing multiple trademarks and protecting intellectual property is essential to the forward momentum of the company, it’s important to be able to locate and retain the best trademark lawyer.
Here are just a few crucial areas of trade dress and trademark practice a NYC trademark lawyer provides:
When developing a patent, it is understood that the owner of the patent will move forward with developing the product and that the patent’s creation is not for the sole purpose of preventing others from developing the product. A NYC trademark attorney will advise their clients about how to proceed with a patent that may require a delay in development.
Trade Dress and Trademark Counseling
Minimizing the risk of infringement while maximizing the client’s assets is essential to a successful trademark campaign. A strategic trademark and trade dress position puts the client in a position to attain these goals in a reasonable amount of time.
Some NYC trademark attorneys also license products, services, and ideas. If the attorney wants to license the patented item, perhaps in exchange for their fees or a percentage of royalties, it’s important to get an agreement in writing. This type of arrangement is common in the world of software technology.
Domain Name Strategy
A great deal of a company’s value can be attached to its core marks and name. Securing a domain name may involve extracting it from squatters hoping to make a profit. In this case, having an experienced NYC trademark lawyer is crucial to permanently securing the domain name.
If an active trademark owned by a company is being infringed upon, it may be necessary to file a civil action in federal or state court in order to receive an injunction ordering the defendant to stop using the mark immediately. A court may decide to order the defendant to pay damages and/or attorney fees, as well.
The attorney must not only file an application with the USPTO, but must also monitor the progress of that registration with the governing agency. All documents received from the USPTO must be responded to in a timely manner or the application could be denied at great cost to the client.
A New York trademark attorney may be asked to assist with strategic branding campaigns to maintain a brand identity for the company.
Communicating with the USPTO Throughout the Application Process
Monitoring the trademark application’s progress through the USPTO and handling potential non-substantive office actions in a timely manner and to the USPTO’s criteria is crucial to receiving approval for a trademark.
Proper Use Policies and Guideline Development
NYC trademark lawyers help their clients establish company-wide procedures and guidelines to use the brand consistently across all media platforms and in all contexts including public relations agencies, advertising, and client communication.
Detecting infringement by foreign and domestic companies that apply for a similar trademark helps to prevent litigation and can save both parties time and money. Counterfeiting a product is illegal and this type of trademark infringement is best left to a local trademark lawyer with expertise in the area of trademark compliance.
Third-party Claim Defense
In spite of making the best possible effort to avoid trademark infringement, it may still happen to an unsuspecting startup company. When the client of one of the best trademark lawyers is accused of trademark infringement, it’s important to defend and resolve the claims as quickly as possible.
Conducting a Trademark Search
Before filing a trademark, it’s necessary to conduct an extensive search for state, federal, and common law trademarks that may cause a conflict. This search shouldn’t take a lot of time. Reputable and experienced trademark attorneys have access to powerful software that will return 100% accurate results quickly.
The following databases must be searched for existing trademarks prior to filing a request for a new trademark:
US Trademark Office Registrations
This search should include pending applications, cancelled and expired applications, and lapsed filings.
US State Registrations
New York has a state database that includes trademarks not intended for interstate use.
While there isn’t a dedicated database of unregistered marks, a thorough trademark search will include world-wide-web entries, manufacturers’ directories, industry-specific materials, and widely used common law marks.
The Startup Scene in NYC Offers a lot
In the past two to three years, New York City has seen an explosion of successful startup companies. In 2013, Yahoo acquired the New York City startup Tumblr and the scene exploded. Yahoo paid $1.1 billion to absorb the venture-backed startup.
New York is home to startup greats Buzzfeed, Warby Parker, OscarHealth, ZocDoc, FanDuel, and Blue Apron. Each of these companies got its start in The Big Apple and is now worth over $1 billion. Etsy and OnDeck are startups founded in NYC that went public in 2015 with valuations higher than $1 billion.
New York startups approaching valuations of $1 billion include Squarespace, Taboola, Flatiron Health, Greenhouse, Stack Exchange, Harry’s Digital Ocean, Betterment, and Casper to name just a few.
Investors are taking notice as the startup scene in New York City comes alive. While the NYC startup scene totals just 30% of the startups in The Bay Area, venture capitalists in the city bumped their investments over 80% in 2015. Enterprise software, advanced manufacturing, biotech, health, and fintech are all industries poised for explosive growth in NYC.
Startup Neighborhoods in NYC
The former hub of New York City startups, Union Square, is filling up and startups are popping up downtown near One World Trade Center and the financial district. One of a Kind and Refinery 29 are two popular fashion and media companies that call the area home. The Flatiron School, a coding school, is located downtown near Wall Street.
Near Times Square, Yahoo, MongoDB, and Snapchat have offices and other startups are taking root in this area as well.
Many startups find their money stretches a bit further in New Jersey and Brooklyn. Hoboken is home to Jet.com and Audible is not in Newark. Coworking spaces are popping up near both of these up-and-coming companies.
Brooklyn is quickly becoming a creative agency hub and their presence presents a strong attraction for music-industry upstarts. The agency Huge and Etsy are both located here.
Livestream has a giant warehouse in Bushwick and the companies Farmigo and Genius are in Gowanus. Manufacturing companies are moving their operations overseas to take advantage of lower labor costs, and real estate marketing gurus are taking note. The empty spaces are marketed as ideal for creative startup spaces.
The Jefferson at 455 Jefferson Street is serving as creative offices and is owned by a Boston and Dallas-based firm intent on developing more real estate in the area.
Small startup companies are popping up in co-working spaces all over the area such as The Common or Brooklyn Desks.
How Much Does it Cost to Hire a Trademark Lawyer in New York?
The fees for a reputable and experienced NYC trademark lawyer may vary widely, but they should always be transparent to clients and potential clients. Attorneys who want new business typically provide an average cost when receiving inquiries about their services.
Fees required by the USPTO can be reduced by meeting certain electronic filing standards. Patent attorneys in New York will offer electronic filing as an option to speed up the process and will often pass the savings on to their clients.
New York state has a trademark registration system. Most trademark lawyers in New York will be able to file a state trademark application for businesses that want to use a mark online in the state of New York. The state filing fee in New York is $50 per class of goods and people seeking a New York trademark will also pay legal fees for the preparation of the required documents.
The Future of Startups in NYC
Startups used to have to move to the West Coast when they needed funding, but the bustling scene in NYC offers much in the way of resources for entrepreneurs. The more mature startup ecosystem offers early-stage investments from local angels, super-angels, and venture capital firms that specifically look for emerging businesses local to New York.
The NYC-based seed-stage investor Ventures is just one example of the many businesses that exist solely to support startups through their earliest days.
The NYC tech scene has grown 29% in five years. Codecademy is one of several schools that focuses on teaching young people to code. As those kids grow into roles as startup founders, the ecosystem of emerging businesses across all sectors in NYC will continue to thrive.
Why use UpCounsel to hire a New York Trademark Attorney?
You always get experienced professionals and high caliber work.
Your work gets done quickly because professionals are always available.
More cost effective
We use technology to cut traditional overhead and save you thousands.
UpCounsel has been talked about in:
Money-Back Guarantee on All of Your Legal Work
Applies to all transactions with verified attorneys on UpCounselIn the event that you are unsatisfied with the work of an attorney you hired on UpCounsel, just let us know. We’ll take care of it and refund your money up to $5,000 so you can hire another attorney to help you.
Legal Services Offered by Our On-Demand New York Trademark Attorneys
Our experienced New York 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 New York 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 trademark attorneys servicing New York City 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 New York, NY.
What Our Customers Have to Say
"UpCounsel gives me access to big-firm lawyers minus the big-firm price tag. I work with several attorneys on the platform and there are never surprises...I always receive quality legal work at competitive rates that larger firms simply cannot match."
"Every startup needs to know about UpCounsel. We found great attorneys at great prices and were able to focus our resources on improving our business instead of paying legal bills."
"Before UpCounsel it was hard for us to find the right lawyer with the right expertise for our business. UpCounsel solves those problems by being more affordable and helping us find the right lawyer in no time."
- 8 min read
What is the Lanham Act?
The Lanham Act created a national trademark registration system. Enacted in 1946, this act also protects a trademark owner against others using similar marks.
The Lanham Act also provided a way for companies to watch for modifications to their trademarks. This section of the law, called trademark dilution, gives the owner of a famous trademark a way to protect it from changes. No other person or company can use the mark in a way that reduces how unique it is. The Lanham Act allows legal entities to consider the implications of issuing a trademark under the trademark laws.
Also called the Trademark Act of 1946, this legal statute oversees unfair competition laws and violations. President Harry Truman signed it into law on July 5, 1947.
- 10 min read
What Are Proprietary Rights?
Proprietary rights, also known as property rights, are the theoretical or legal rights that an entity has to own property, whether tangible or intangible. Property rights are some of the most basic rights in a free society. They give individuals the right to accumulate, own, hold, delegate, rent, or sell their property. Within economics, property rights form the basis for all market exchange, and they don't always refer only to what's lawful. They might also refer to what is ethical or moral.
The definition of property is expansive. Property can include physical resources, land, non-human creatures, and intellectual property.
Who has the right to what property isn't always clear. If you own a car and the title is in your name, you have property rights to that car. Not every case of property rights is this clear-cu
- 11 min read
What is a Trademark?
A trademark helps protect a symbol, logo, phrase, domain name, design, or word that's associated with your product or business name. A trademark is different from a patent because it doesn't protect an actual product or design on a product. The trademark prevents other companies from using your logo, design, phrase, symbol, domain name, or word as their own.
How Do I File a Trademark?
- Finalize the design
The first step in the process of trademarking is deciding on your idea. If you have several logos, symbols, or words, decide on the one you like best. You should keep the others as backups, in case your top choice isn't eligible for a trademark.
As you finalize your design, think about a few important aspects. Your idea won't qualify for a trademark if it's too generic. Fo
- 10 min read
Trademark Class 41: What Is It?
Trademark Class 41 includes education and entertainment services, such as:
- The training of people or animals
- Sporting and cultural activities
- The presentation of art and literature
Class 41 is one of the 45 classes used by the United States Patent and Trademark Office (USPTO). Each class designates a category of goods or services.
Why Are Trademark Classes Important?
Trademarks protect intellectual property rights for commercial elements, such as:
- Business names
- Goods or services
When you receive
- 6 min read
What Are Generic Trademarks?
Generic trademarks are common terms used to name products or services, for example, a brand of shoes called "shoes". Generic trademarks describe a product, so no one can register them as trademarks. These marks don't qualify for any protection.
Why Generic Terms Can't Be Trademarks
Generic terms such as "computer" cannot be registered as trademarks because anyone has the right to use generic words to describe the products they are selling. Giving trademark rights to generic terms would make the English language poorer and would restrict competition. This rule applies to both the principal and the supplemental registers.
Adding a dot-com(or dot-org, dot-net, etc.) suffix to a generi