Trademark Attorney in Denver and Boulder, Colorado

Trademark Lawyer Services

Trademark law is primarily federal law, as such, the law firm of Hunziker Legal Services is happy to provide trademark attorney services to those clients that come from around the world by phone, fax, letter, and email. If you live in any of the following areas you may also come to my Denver of Boulder, Colorado office to meet me in person, my trademark law firm is located in Colorado close to: Denver, Boulder Fort Collins, Loveland, Longmont, Broomfield, Westminister, Arvada, Northglenn, Thornton, Centennial, Lakewood, Brighton, Berkley, Aurora, Columbine, Commerce City, Englewood, Federal Heights, Golden, Greenwood Village, Highlands Ranch, Littleton, Parker, Sheryl Wood, Welby, and Wheat Ridge.

I offer the following services:

• Trademark Searching
• Trademark Registration
• Trademark Renewal and Incontestability
• Trademark Monitoring
• Trademark Litigation
• Trademark Oppositions
• Domain Name Disputes
• Trademark FAQ’s
• Trademark Fees

Trademark Searching

As an expert trademark lawyer you may rely on my trademark searching to determine the avaiability of your marks, whether they be: word, design, color, sound, or smell trademarks.

For trademark searches based on words, I search:

1. Identical or confusingly similar marks;
2. Alternative spellings; and
3. Similar or confusingly similar phonetic marks.

A standard trademark search conducted by the Boulder and Denver, CO law firm of Hunziker legal Services includes a search of the USPTO and Secretary of State trademark registers; related common-law databases; corporate name directories and top level-domain names; including newly filed applications; active registrations; cancelled and abandoned marks; and full-text common law citations which include country business directories, domain names, internet, and various news, product and marketing sources.

Each trademark search comes with a written account of the relevant marks found and their importance based on the purpose for which you require your trademark search from a trademark lawyer well-versed in the relevant trademark law.

You may also rely on me as your Boulder and Denver, CO trademark lawyer to search trademarks worldwide or within selected nationalities with the methodology described above and with correspondingly similar databases, such as WIPO, European Community Trademarks, and the databases of each soverignty; where marks cannot be searched in English, I am more than happy to coordinate a search on your behalf with my colleagues overseas.

Trademark Registration

What are trademarks and service marks?

• A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.
• A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than goods.

What I need to register your trademark?

You must list the specific goods/services for which you want to register your trademark. The difference between goods and services may be confusing. Are your customers paying for a product or paying you to perform a specific activity? Luckily, you may list both goods and services in your application; although, you may need to pay larger filing fees. Goods and services are sorted into categories according to the International Schedule of Classes of Goods and Services called “International Classes;” each International Class requiring a separate filing fee.

You also need to determine whether you are filing your trademark based upon “use in commerce,” meaning you must be using the mark in commerce on all the goods/services listed; or whether you are filing your mark based upon a “bona fide intent to use the mark,” meaning you must have a good faith or bona fide intent to use the mark on all the goods/services listed. Under either basis, prior to registration of your trademark, you must demonstrate that you have used the mark in commerce.

To establish use in commerce you must provide the date of first use of the mark anywhere and the date of first use of the mark in commerce. The date of first use anywhere is the date on which the goods were first sold or transported or the services were first provided under the mark even if that use was only local. The date of first use in commerce is the date on which the goods were first sold or transported or the services were first provided under the mark between more than one state or U.S. territory, or in commerce between the U.S. and another country. The date of first use anywhere must be the same as or earlier than the date of first use in commerce. You must also submit a specimen (example) showing how you use the mark in commerce.

A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen is not the same as the drawing. The drawing shows only your mark, whereas a specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on the labels or on your website). For goods, the mark must appear on the goods (e.g., tags or labels), the container for the goods, or displays associated with the goods. For services, the mark must be used in the sale or advertising of the services.

What are the advantages of registering your trademark or service mark?

1. Public notice of your claim of ownership of the mark, and establishment of a nationwide priority date;
2. A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration;
3. The ability to bring an action concerning the mark in federal court;
4. The use of the U.S. registration as a basis to obtain registration in foreign countries;
5. The ability to record the U.S. registration with the U.S. Customs and Border Protection (CBP) Service to prevent importation of infringing foreign goods;
6. The right to use the federal registration symbol ®; and
7. Listing in the United States Patent and Trademark Office’s online databases;
8. The trademark owner can make the mark “incontestable” after five years, which eliminates important defenses available to potential infringers;
9. Registering a trademark increases the likelihood of successfully removing an infringing Internet domain name.

Trademark Renewal and Incontestability

How do you maintain your trademark?

To maintain your trademark registration you must file your first Declaration of Continued Use or Excusable Nonuse under Section 8 before the end of the 6th year after the registration date or within the 6-month grace period thereafter. The USPTO will not notify you that it is time to file these documents. At the end of every 10-year period after the registration date or within the 6-month grace period thereafter you need to file a Combined Declaration of Continued Use and Application for Renewal under Sections 8 and 9 (combined §§8 and 9. Failure to file these declarations or trademark renewals will result in the cancellation of the registration. Rights to a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents at the appropriate times.

What is Incontestability?

As your trademark attorney I can apply for incontestability of your mark after you use your mark continuously for five years. Eligibility for incontestability status is not automatic, it requires the filing of a proper section 15 affidavit. If incontestability is granted, it makes enforcing your trademark considerably easier by eliminating certain common defenses to trademark infringement. Registration of a trademark as incontestable is admissable as prima facie evidence of the validity of the mark (the descriptiveness defense), ownership of the mark, and registrant’s exclusive right to use the mark, but shall not preclude another person from proving certain legal or equitable defenses.

You must still prove infringement of your mark, and the infringer can still prove the following enumerated defenses:

1. That the registration or the incontestable right to use the trade mark was obtained fraudulently;
2. That the mark has been abandoned by the registrant;
3. That the registered mark is being used with the permission of the registrant so as to misrepresent the source of the goods or services;
4. That the use charged to be an infringement is otherwise than as a mark, is the infringer’s individual name, or of a term which is descriptive used fairly to only describe the goods or services or their geographic origin;
5. That the infringing mark was used from a date prior to the date of the registered mark; this defense applies only in the area which such continuous prior use is proved;
6. That the mark has been used to violate the antitrust laws of the United States;
7. That the mark is functional (describes utilitarian functions of goods, e.g. generic); and
8. That equitable principles, including laches, estoppel, and acquiescence, are applicable.

Trademark Monitoring

Trademark watch services are essential to effective maintenance and enforcement of your brand. The Boulder and Denver, CO law firm of Hunziker Legal Services can obtain regular custom alerts for you about potentially conflicting intellectual property rights as they are published in various media and publications around the world. You can narrow or broaden the monitoring service to suite your needs. You can narrow or broaden your surveillance criteria until you feel like you are receiving the proper number of notices; prioritizing your search criteria in accordance with the importance of the particular marks, whether they be design or word marks. Any popular language can be searched and translations provided if requested. Upon receipt of your trademark watch notices you will also receive legal opinions as to the importance of opposing or enforcing your mark against such threats.

Specific services include:

• Identify potentially conflicting applications/registrations based on their similarity to your trademark, including phonetic and graphic similarities, translations, transliterations and connotations from more than 170 international jurisdictions;
• Identify potentially conflicting marks that are registered at the state level that may never appear on the U.S. Federal Register;
• Identify other companies that register your trademark as part of their company name or register your company name as their own. This covers foreign jurisdictions and a number of states in the United States;
• Domain name watch services for gTLDs only, or for ccTLDs and gTLDs, providing links to active websites, complete Whois reports, and links to updated Whois reports;
• Identify potentially conflicting, misleading or disparaging uses of your trademarks world-wide on the internet.

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