Intellectual Property

To create, acquire, enforce, and defend Intellectual Property (IP) rights is the cornerstone of many business enterprises. Ellahie & Farooqui LLP represents numerous closely-held private businesses, family-owned enterprises, high technology entrepreneurial start-ups in all aspects of IP law. We provide strategic counseling, manage the full range of IP transactions, and engage in prosecution and litigation when needed to ensure our clients are ahead of their competition.

Resources are properly allocated and managed to avoid unnecessary expenditure and increase efficiency. Our attorneys can play a vital role in identifying and eliminating hidden costs from litigation budgets.

Patents, Trademarks, Copyrights and Trade Secrets

Our attorneys are registered to practice before the United States Patent and Trademark Office and have experience prosecuting, litigating, and counseling domestic patent rights in the mechanical, biomechanical, chemical, electrical and software sectors. We also have experience in drafting and negotiating patent rights contracts such as licensing agreements, research and development agreements, non-disclosure agreements, etc.

Our attorneys have experience prosecuting, litigating, and counseling trademark and service mark rights. We meticulously protect our clients’ business images, technology, brands and names and regularly counsel business entities to capture domain names, trademarks, trade secrets, and service marks.

We also represent individuals and businesses in related IP conflicts involving piracy, cyber-squatting, identity thefts and counterfeiting. Leveraging our experience to obtain mutually beneficial license terms, we attempt to avoid protracted, expensive Intellectual Property litigation. We are well-versed in copyright and trade secret counseling and litigation and are aware of the challenges in protecting copyrighted materials and maintaining trade secrets in today's rapidly fusing international economy.

Our attorneys recognize the confidential and sensitive nature of information being handled and aggressively work towards protecting our clients’ copyrighted and trade secret assets.

Patent Application and Defense

Patent Litigation Management

Patent litigation can be very expensive and the costs associated with defending a lawsuit can significantly alter the bottom line of any business. Therefore, it is very critical that resources are properly allocated and managed to avoid unnecessary expenditure and increase efficiency. Our attorneys can play a vital role in identifying and eliminating hidden costs from litigation budgets.

Trademark Lock is a service of Ellahie and Farooqui that can help you quickly begin your application for a trademark. You can find it at Trademark Lock. In addition to a quick and simple trademark filing procedure it also contains a helpful section that answers many of the basic question about trademarks – from the beginning of “What is a trademark” to validity outside of the United States. For access to these question go to Trademark Q&A.

BEFORE FILING AN APPLICATION

What is a trademark?

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.
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What is a service mark?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
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What is a patent?

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. For more information, click here.
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What is a copyright?

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact the U.S. Copyright Office (a division of the Library of Congress).
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What is a certification mark?

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.
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What is a collective membership mark?

A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.
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What is a collective mark?

A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.
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What is the difference between a design patent and a trademark?

A design patent protects the unique, useful, and original ornamental design of an object having practical utility. In simpler terms, a design patent would protect the physical appearance (ornamental design) of an article of manufacture (i.e. ice bucket, lap top, mobile phone, mouse, watch, powder box, belt buckle, etc., etc.). An object with a design that is substantially similar to the design claimed in a design patent cannot be made, used, copied or imported into the United States. The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar
In comparison, a trademark protects a word or words, name, symbol or drawing, any device, brand, label, name, signature, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from another. The fundamental purpose of trademark rights are to prevents public confusion over whether consumers are purchasing the goods or services associated with your mark or from the other source.
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What are the benefits of federal trademark registration?

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • 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;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • 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;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

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Do federal regulations govern the use of the designations "TM" or "SM" or the ® symbol?

If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.
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Should I have an attorney?

Because the application process can be complex, many applicants choose to appoint an attorney to represent them. We have over 10 years of experience and are registered to practice before the USPTO. We will help you navigate through the trademark process.
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Who may file an application?

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
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May a minor file a trademark application?

The question of whether an application may be filed in the name of a minor depends on your state’s law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.”

BEFORE FILING AN APPLICATION

What is a trademark?

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.
Back to top

What is a service mark?

A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term “trademark” is often used to refer to both trademarks and service marks.
Back to top

What is a patent?

A patent is a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention. For more information, click here.
Back to top

What is a copyright?

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed. For more information, contact the U.S. Copyright Office (a division of the Library of Congress).
Back to top

What is a certification mark?

A certification mark is any word, phrase, symbol or design, or a combination thereof owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.
Back to top

What is a collective membership mark?

A collective membership mark is any word, phrase, symbol or design, or a combination thereof which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.
Back to top

What is a collective mark?

A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.
Back to top

What is the difference between a design patent and a trademark?

A design patent protects the unique, useful, and original ornamental design of an object having practical utility. In simpler terms, a design patent would protect the physical appearance (ornamental design) of an article of manufacture (i.e. ice bucket, lap top, mobile phone, mouse, watch, powder box, belt buckle, etc., etc.). An object with a design that is substantially similar to the design claimed in a design patent cannot be made, used, copied or imported into the United States. The copy does not have to be exact for the patent to be infringed. It only has to be substantially similar
In comparison, a trademark protects a word or words, name, symbol or drawing, any device, brand, label, name, signature, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from another. The fundamental purpose of trademark rights are to prevents public confusion over whether consumers are purchasing the goods or services associated with your mark or from the other source.
Back to top

What are the benefits of federal trademark registration?

Owning a federal trademark registration on the Principal Register provides several advantages, including:

  • Public notice of your claim of ownership of the mark;
  • 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;
  • The ability to bring an action concerning the mark in federal court;
  • The use of the U.S. registration as a basis to obtain registration in foreign countries;
  • 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;
  • The right to use the federal registration symbol ® and
  • Listing in the United States Patent and Trademark Office’s online databases.

Back to top

Do federal regulations govern the use of the designations "TM" or "SM" or the ® symbol?

If you claim rights to use a mark, you may use the "TM" (trademark) or "SM" (service mark) designation to alert the public to your claim of ownership of the mark, regardless of whether you have filed an application with the United States Patent and Trademark Office (USPTO). However, you may only use the federal registration symbol "®" after the USPTO actually registers a mark, and not while an application is pending.
Back to top

Should I have an attorney?

Because the application process can be complex, many applicants choose to appoint an attorney to represent them. We have over 10 years of experience and are registered to practice before the USPTO. We will help you navigate through the trademark process.
Back to top

Who may file an application?

Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
Back to top

May a minor file a trademark application?

The question of whether an application may be filed in the name of a minor depends on your state’s law. If the minor may validly enter into binding legal obligations, and may sue or be sued, in the state in which he or she is domiciled, the application may be filed in the name of the minor. Otherwise, the application must be filed in the name of a parent or legal guardian, clearly setting forth his or her status as a parent or legal guardian. An example of the manner in which the applicant should be identified in such cases is: “John Smith, United States citizen, (parent/legal guardian) of Mary Smith.”
Back to top

Must I be a U.S. citizen to obtain a federal registration?

No, however, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.
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What is the difference between “use in commerce” and “intent to use” in commerce?

The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”
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What is a specimen?

A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).
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What is a drawing?

The "drawing" is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” For more information on the different types of drawings see Basic Facts About Trademarks.
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Can you register the name of a musical group or band?

A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.
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AFTER FILING THE APPLICATION

Is registration of my mark guaranteed?

No, the examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.

The most common reasons for refusing registration are because the mark is:

  • Likely to cause confusion with a mark in a registration or prior application;
  • Descriptive for the goods/services;
  • A geographic term;
  • A surname;
  • Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
The examining attorney may also issue requirements concerning, for example:

  • The goods and services listed in the application;
  • The description of the mark;
  • The quality of the drawing;
  • The specimens.

Back to top

How can I check the status of my application?

The benefit of purchasing the Extended Package is that we will provide you with monthly status updates directly to your inbox. If you have any questions, please feel free to contact us. Once you receive a serial number for your application, you can check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 to request a status check. You should check on the status of your pending application every 3-4 months. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using the Trademark Document Retrieval (TDR) database.
Back to top

How long will it take for my mark to register?

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.
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If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.
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May I assign or transfer the ownership of my trademark to someone else?

Yes, a registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. For the guidelines for filing an assignment and the assignment form itself, click on Assignments or contact the Assignment Division at 571-272-3350.
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AFTER THE TRADEMARK HAS REGISTERED

How long does a trademark registration last?

The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. For more information see Maintain/Renew a Registration.
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Is a federal registration valid outside of the United States?

No, however, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 and TMEP Chapter 1900 for further information.
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What if someone else is using my registered mark on related goods and services?

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. Let us know immediately. Time can be of the essence.
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OTHER TRADEMARK QUESTIONS

What are “common law” rights?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.
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What is “interstate commerce”?

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).
Back to top

Will my information be public?

All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver’s license number.
Back to top

Must I be a U.S. citizen to obtain a federal registration?

No, however, your citizenship must be provided in the application. If you have dual citizenship, then you must indicate which citizenship will be printed on the certificate of registration.
Back to top

What is the difference between “use in commerce” and “intent to use” in commerce?

The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”
Back to top

What is a specimen?

A specimen is a sample of how you actually use the mark in commerce on your goods or with your services. A specimen shows the mark as your purchasers encounter it in the marketplace (e.g., on your labels or on your website).
Back to top

What is a drawing?

The "drawing" is a clear image of the mark applicant seeks to register. The USPTO uses the drawing to upload the mark into the USPTO search database and to print the mark in the Official Gazette and on the registration certificate. There are two types of drawings: “standard character” and “special form.” For more information on the different types of drawings see Basic Facts About Trademarks.
Back to top

Can you register the name of a musical group or band?

A band name may function as a service mark for “entertainment services in the nature of performances by a musical group” if it is used to identify live performances.
Back to top

AFTER FILING THE APPLICATION

Is registration of my mark guaranteed?

No, the examining attorney will review the application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2.

The most common reasons for refusing registration are because the mark is:

  • Likely to cause confusion with a mark in a registration or prior application;
  • Descriptive for the goods/services;
  • A geographic term;
  • A surname;
  • Ornamental as applied to the goods.

For a discussion of these and other possible refusals, see Chapter 1200 of the Trademark Manual of Examining Procedure (TMEP).
The examining attorney may also issue requirements concerning, for example:

  • The goods and services listed in the application;
  • The description of the mark;
  • The quality of the drawing;
  • The specimens.

Back to top

How can I check the status of my application?

The benefit of purchasing the Extended Package is that we will provide you with monthly status updates directly to your inbox. If you have any questions, please feel free to contact us. Once you receive a serial number for your application, you can check the status of your application through the Trademark Applications and Registrations Retrieval (TARR) database. If you do not have access to the Internet, you can call the Trademark Assistance Center at 1-800-786-9199 to request a status check. You should check on the status of your pending application every 3-4 months. If the USPTO has taken any action, you may need to respond promptly. All USPTO actions are available for viewing using the Trademark Document Retrieval (TDR) database.
Back to top

How long will it take for my mark to register?

The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.
Back to top

If I filed based on an “intent-to-use” trademark, when must I allege actual use of the mark in commerce?

You must file your Allegation of Use either prior to the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted.
Back to top

May I assign or transfer the ownership of my trademark to someone else?

Yes, a registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee. For the guidelines for filing an assignment and the assignment form itself, click on Assignments or contact the Assignment Division at 571-272-3350.
Back to top

AFTER THE TRADEMARK HAS REGISTERED

How long does a trademark registration last?

The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. For more information see Maintain/Renew a Registration.
Back to top

Is a federal registration valid outside of the United States?

No, however, certain countries recognize a United States registration as a basis for filing an application to register a mark in those countries under international treaties. See TMEP Chapter 1000 and TMEP Chapter 1900 for further information.
Back to top

What if someone else is using my registered mark on related goods and services?

You may challenge use of your trademark by someone else in several ways, depending on the factual situation. Let us know immediately. Time can be of the essence.
Back to top

OTHER TRADEMARK QUESTIONS

What are “common law” rights?

Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application.
Back to top

What is “interstate commerce”?

For goods, "interstate commerce" generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, "interstate commerce" generally involves offering a service to customers in another state or rendering a service that affects interstate commerce (e.g., restaurants, gas stations, hotels).
Back to top

Will my information be public?

All data you submit to the USPTO, including your phone number, e-mail address, and street address, but not your credit card and banking information, is public record and is viewable on the Internet. Do not submit personal identifying information that is NOT required for a filing, such as a social security number or driver’s license number.
Back to top