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:

Due diligence

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.

Licensing

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.

Trademark Litigation

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.

USPTO Registrations

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.

Strategic Branding

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.

Trademark Enforcement

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.

Unregistered Marks

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.