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At Top Shelf Trademarks, we believe in empowering entrepreneurs and business owners with the knowledge they need to protect their brand. Our video library features expert insights and trademark tips, to help you navigate the trademark process with confidence. Whether you’re just starting out or ready to register, Topshelf Trademarks is ready to help. Call (845) 417-7817 or use our convenient contact form.

Our Story

I graduated from college in 2002, and I moved out west, and I ended up working at a music distribution company–like, an early .com–doing digital distribution of music to places like iTunes. And that was really fun. And I worked there for a while. But it was during that period of time that I kind of was thinking, well, what can I do? I wanted to be my own boss. So I was basically, you know, on the phone all day talking to artists about business, about their accounts. I guess it was naive, but I figured, oh, this is kind of like what a lawyer would do. And so I decided to go to law school, and I moved all the way across the country to go to Brooklyn Law School. I was always interested in IP, but I just thought it was something that I kind of wouldn’t be able to do because I knew I just wanted to be my own boss, and I didn’t think that it would be possible to do a niche area of practice. And so it kind of just came across my feed that another lawyer I knew from Kingston had gotten into trademark law. And I started looking into it, and it was just immediately just, you know, bells going off because I knew that it was the right practice area for me. I’m interested in, you know, in IP I have a lot of background in, you know, I’ve worked in the music industry and I love art and a lot of creative things. So IP is interesting, and I love just talking to all the different people from the different businesses. So I provide legal services to anyone in the world who wants to file a trademark application or manage a trademark registration with the United States Patent and Trademark Office, or who wants to do enforcement proceedings with the Trademark Trial and Appeal Board of the USPTO. You can go to topshelftrademarks.com or lkaplanlaw.com. And you can also find me on Instagram @lkaplanlaw and learn more about me

What Is A Trademark?

A trademark is basically an identifier that lets the consumer know the source of a good or service. So it can be anything. It’s typically words, logos, but it can also be things like colors, sounds, you know, even the way that a restaurant or store is designed, like, for example, the Apple – the interior design of an Apple Store is very unique and distinctive. So anything that lets consumers know, okay, this particular product, whether it’s popcorn or an iPhone or, you know, a surgery coming from a particular source that’s a trademark. And it has it’s considered an asset because it has value, because consumers know to associate the high quality product or service with that particular trademark.

Trademark, Copyright, and Patent - What's the Difference?

Those are the three different types of intellectual property. A patent is typically for inventions. Copyright is a work of authorship. So it could be a painting, a story written down, a song. A trademark is, is basically it’s based on who’s using it, who’s used it first. And who’s used it in which areas and in connection with which things. You know, a lot of people think of copyright because with copyright, you know, you have an idea, you put it on paper, you are the owner of that, you’ve created it. You’re the first. No one can take that away from you forever. You know, you you wrote that, you painted it. You did it. Whereas with trademark law, you could have a great idea for a brand. You could have the coolest idea for a logo. But if you don’t use it and you’re not the first to use it in connection with a particular good or service, you have no rights in it.

How Long Does It Take to Get a Trademark?

Because trademark ownership is based on use technically just by beginning to use it in the industry that you’re in, you start to acquire rights. You have notified the public through your social media or whatever marketing you do that you sell this particular product and you operate under this brand name. So just by doing that, you start to gain rights. But the scope of it is sort of vague because it’s based on where you have communicated to the consumers that you’re doing this particular thing with this, under this particular trademark. So that is what we would call common law rights. That’s basically where you don’t use any kind of government agency to document your ownership rights. It’s just based on using it. And so you do have rights going down that path, even if you did nothing but just run your business and promote your brand. But the other way is by filing a trademark application and gaining a registration either through one of the state trademark offices, or what I do is help people get a trademark registration through the United States Patent and Trademark Office. And that will give you exclusive the presumption of exclusive ownership of that trademark in connection with that particular product or service everywhere in the United States.

Trademark Infringement

Whether or not someone else is infringing on your trademark is, you know, it’s a legal question. So if you believe that somebody else is using your trademark and that it is imposing on your rights or interfering with your, the use of your trademark with your consumers, you should speak to a lawyer. Speak to somebody who specializes in trademarks and figure out what the best path to do. It’s – there’s things you can do early on that will make it much easier for you to stop somebody else from doing that. And if you don’t know what you’re doing or you wait too long, it becomes much harder. So as soon as you think that that’s an issue, you should definitely speak to a lawyer.

Biggest Trademark Mistakes

The biggest mistake is to just adopt a mark without clearing it. That is very common. It’s not sufficient to just do an internet search or to some people even go a step further and we’ll go to the USPTO database and look and see if there’s a registration already in existence for that particular trademark. That word. That is insufficient. Of course it’s better than doing nothing, but that really is insufficient because you need someone who understands how goods and services are related and how marks can be related based on the way that the courts view these things, how they think about it, to understand whether or not things are close enough, to be confusingly similar. That’s really the most important thing, is whether consumers would be confused because to think that the marks are too close, or the goods and services are too close. So the biggest mistake by far is just adopting a mark without speaking to a lawyer first. To clear it, or trying to clear it on your own. And then the second biggest mistake would be to, you know, just not file that application with the USPTO to get the registration. You know, to just, you know, just assume that you don’t need to or even just filing in your own state. That’s not always a mistake, but it’s really a –for the cost of what it is, it’s an incredibly worthwhile investment. And a lot of businesses just don’t know about it. You know, big companies, they have legal staff, they clear every mark. You know, they . . . I’ve worked with companies, you know, pharmaceutical companies. They have, you know, hundreds of trademarks in their docket. And they’re every time they come up with a new one, they clear it. They have, you know, the resources to do that. They secure it. They know what they’re doing because it’s so important. Whereas a small business, you know, people are just they’re busy getting their LLC created, kind of coming up with their business plan, getting things rolling. And they don’t really think about, that trademark being something that can be taken away. You can actually get trademark rights before you’ve even started using it. It’s very generous, in my opinion, that the United States Patent and Trademark Office allows this. But if you have a genuine intent to use a trademark in connection with a product or service in the future, you can actually apply and get a, you know, kind of a preliminary granting of that application. And it can be you can extend it to be open for up to three years. You do have to pay filing fees along the way to keep it open. But that’s another thing that a lot of people don’t realize. So, you know, you might have an idea, oh, I think I want to expand into this area, but we’re not quite ready to launch yet. And, you know, you can apply and do it that way.

How Does the Registration Process Work?

We begin usually by a conversation. I get to know the person and the trademark they want to use. Where, how far along the process they are. Have they ever used it before, or is it just an idea? What goods and services do they want, are they using it with, do they want to use it with? Is it going to be just a wordmark, or is it going to have a design element? A font element? And then we run what’s called a clearance search. We use, you know, special software and different strategies to determine with the best accuracy that we can, that the mark is actually available for use to make sure that no one else has used it before who might come and say, hey, you know, send you a cease and desist letter two years down the line, after you spent all this money and time investing into this brand, only to find out that somebody else had used it first in a part of the country. And, you know, now you’re going to be restricted from selling there or advertising your services there. After the clearance search, once we determine that the mark is, you know, free to use or available for use, we file the application with the United States Patent Trademark Office. There’s some strategy that goes into how the application is prepared. It’s not just filling out a form. Despite what Legalzoom makes you think, there’s definitely a lot of ways to approach it to make it more likely to be accepted or not. And then you wait. The wait is at least about eight months with the USPTO. They get hundreds of thousands of applications every year. And, you know, they take a while to get to yours. Then they review it and then they’ll notify us if there’s any issues with it. Sometimes we have to make changes to the application or submit a legal argument actually, to convince them that it should be, granted. And then after that, if everything goes well, you eventually get the registration, and then it’s valid for five years.

International Trademarks - Are They Necessary?

Trademark law is based on use. So if you sell internationally or provide services internationally, then you do need to think about international trademark rights. You know, so the trademark registration through the USPTO is only going to cover the United States. A trademark registration from the New York State Trademark Office is only going to cover New York. If you’re not selling internationally, you don’t need to worry about it. But if you do, then there are methods to do that. You will have to go through one of the foreign international offices, though, and there’s all sorts of different ways to do it. There’s an international trademark program called the Madrid Protocol that we can use to file applications in multiple countries at once. So, yeah, you know, if you have a significant . . . if you’re either selling or providing services abroad or you intend to in the future, that’s another important thing. You can do that.

How Does Trademark Law Impact Domain Names and Social Handles?

So a domain name and a social media handle, again – so they don’t have to be the trademark. They don’t have to necessarily be the brand. So, you know, I give people a lot of example, you know, your LLC name, your website name, your Instagram handle. It doesn’t have to be identical to your trademark. For example, Google is owned by a company called Alphabet LLC, but nobody thinks of it as Alphabet. Everybody knows it is Google. So Google’s the trademark. Alphabet is the entity. And it’s kind of similar to, you know, URLs and social media handles. However, they are important. I think they’re less important than they used to be, because SEO is really how people find things. People find things through social media, through links, or just by searches. Not necessarily, you know, oh, I saw this brand. And then they type the url.com. It’s not as com that was more in the past. But yeah. So a social media handle absolutely could be a trademark, if you’re using it in that way. But then it’s also, you know, subject to the rules of, domain service providers or the social media company itself. So, it can get a little confusing and complicated.

Can You Trademark a Phrase or Hashtag?

Anything can be a trademark so long as it’s a brand identifier. So if your hashtags or things, common phrases, if you are using it as a brand identifier, then it can function as a trademark. But just because you’re using it doesn’t mean that it is functioning as a trademark. If a trademark is being used by everybody, you know, if it’s being used all over the internet as a meme, as a joke, then it’s not a brand identifier. You know, it’s just a phrase that people use. And it may never be able to function as a trademark. So even if you were the first one to to use it and, you know, you came up with this really funny hashtag and then it went viral, it doesn’t mean that, you know, people are associating it with your brand or product. And very commonly people think, oh, I started this cool meme and, you know, it’s gone viral. I want to trademark it now. I want to own it. Well, if you’re not promoting, if you’re not using it in connection with any business, then it’s not a trademark. It’s just something that, you know, went viral. And it also doesn’t function as a copyright because you can’t, you know, copyright short phrases. So, that is something that I’ve, you know, people have said, oh, you know, I came up with this hysterical thing. People love it. I want to sell t-shirts, you know, I want to own it. It’s not so simple because you have to actually have a business or an intention to have a business. And how are you going to use it with that?

Advice for E Commerce Businesses

It’s really the same as any other business. E-commerce, however, you know, because you’re online retail, you are, you know, you have a national audience or national consumer base right from the start. And same with, you know, businesses that are maybe providing educational services on YouTube. You have to realize that you are, you know, it’s a national you’re providing it nationally. So you definitely want to think about, securing trademark rights with the federal agency because it’s going to be a real mess if there are particular geographic regions where you can’t use that trademark. You know, how are you going to limit that? How are you going to limit your YouTube educational channel to those places? How are you going to, you know, you’re going to have a website that says, sorry, we can’t ship to Wyoming or, you know, any of the the states in the northwest because we are limited, you know, by trademark law. So, you know, it’s it’s no different than any other. But because of those factors, it might even be – it’s very important. There are some businesses that, you know, really trademark law really isn’t a big concern. I would say a local restaurant, you know, although I have worked with local restaurants, because sometimes those are the situations where it’s more of a traditional problem where somebody literally, you know, down the street is using the similar name or same name, and that is the conflict. But for the most part, if you’re just a small local store or a small local business, you know, you really just need to worry about that particular geographic region. And if nobody is going to, you know, compete with you there, then it’s not so much a concern. But anybody who is going beyond that and doing anything in more than one state, as soon as you’re in more than one state than the Federal Trademark Agency really can be used to your benefit.

Advice for New Business Owners

I would say work with a trademark lawyer, especially if you are working with a branding company or you’re thinking about branding. Do not invest time and money in, you know, branding until you’ve confirmed that you can actually use the markets. It’s really unfortunate when people have spent thousands of dollars with a branding agency. And then I find out that the agency didn’t do anything really to clear it other than your baisic – They all will provide a basic clearing, you know, they’ll they’re going to Google it. They’re going to probably maybe look in the database to make sure there’s no registrations for that. But that’s not enough. And so that is really it. That bugs me when that happens.

Trademark Dispute Story

I have represented people who have been on the, you know, offensive side. I’ve had clients who we send cease and desist letters. We file petitions to cancel other people’s trademarks with the Trademark Trial and Appeal Board. And then I’ve also been – I’ve represented people on the other side, people who are on the defensive, and they’ve received a cease and desist letter, or they’ve been served with some kind of notice that they’re someone’s going to try and cancel their trademark. But one thing I like about trademark law is I’ve – of this area of law, I would say it’s very predictable. It just seems to be where if the facts and the law is on your side, it tends to go your way. I don’t want to say it’s easy to advise people, but it just seems that it’s easy to sort of steer the ship and help people kind of know where things are going based on the facts and the law. So that helps because in other areas of law, it can be, you know, things can be very wishy washy, you know, where it’s really things can be very subjective. And of course, whether or not something’s confusingly similar, there’s a lot of subjectivity to that. But one thing that is very black and white is who used something first. So if somebody started using something first and they can prove it, and the marks are identical, you know, that’s really not very complicated. And you’ll have the two lawyers on each side. They both going to understand how that’s going to play out. So it ends up being, you know, more, it’s you know the negotiation can vary how things go. But you know, I feel like you can be pretty confident that you’re telling, you know, what’s going to happen. And you can advise the client that it’s going to go a certain way.