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Attorney for trademark law Thomas Seifried has over 20 years of experience in trademark law and has also been a specialist attorney for intellectual property since 2007. He is an author of specialized books and has conducted many successful proceedings before courts and the trademark offices.
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What is a trademark?
Trademark as a legally protected sign with a right of interdiction
A trademark is a legally protected sign (designation, logo, possibly also a color). It serves to distinguish the goods or services of one company from the goods or services of another company. A trademark is intended to indicate that the goods or services originate from a particular company (origin function). In contrast to a company mark, which identifies a company or part of a company (e.g. "Amazon"), a trademark always identifies a product (goods or services). A trademark gives its owner the right to use the protected or a similar sign for identical or similar products.
However, a logo or designation must also be "used as a trademark" for this use to be a trademark infringement in the first place.
When do you need a lawyer for trademark law?
Do you need a trademark attorney for trademark protection?
- An attorney for trademark law is already helpful for the trademark application at an office, but not absolutely necessary. However, such a lawyer can already provide valuable information in order to avoid a rejection of the trademark application. A trademark attorney can, for example, check whether a sign (logo, designation, etc.) is protectable under trademark law at all or on the scope of protection of word/figurative marks. Especially in the case of compound trademarks, he can help to point out non-distinctive or misleading components. He can also point out the appropriate trademark protection strategy in the case of applications for several countries.
- Before filing a trademark application, it is imperative to conduct a trademark search. This is because the very filing of a trademark application can cause a trademark infringement. In order to be able to carry out a trademark search at all, one must know which earlier rights can collide with a trademark to be applied for. This is not possible without in-depth knowledge of trademark infringement.
Do you need a trademark attorney in trademark infringement cases?
- In trademark opposition proceedings and cancellation proceedings before the offices (DPMA, EUIPO) and the Federal Patent Court, the engagement of a lawyer is not mandatory. However, it is strongly recommended to do so in order to avoid legal disadvantages, e.g. by failing to raise a non-use objection.
- It is also helpful to hire a trademark attorney for advice and representation in cases of trademark infringement and trademark piracy. It is true that a patent attorney can also pursue trademark infringements out of court with a warning letter wirh cease-and-desist declaration in trademark law. However, if the opponent does not issue a cease-and-desist declaration with a penalty clause and the trademark infringement becomes pending before a court by way of a lawsuit or preliminary injunction, it is imperative that you hire a lawyer. This is because patent attorneys are not allowed to appear before the competent (district) courts without a lawyer.
- It is also helpful to hire a lawyer for advice and representation in the case of infringements of company trademarks, company names and work titles and trademark infringements through Google Adwords or search engine optimization (SEO), as well as in the case of
- advice and representation in the case of geographical designations of origin (e.g. "Made in Germany").
- Whether there has been a breach of a cease-and-desist agreement following the submission of a cease-and-desist declaration with a penalty clause can often only be reliably assessed by a lawyer for trademark law. He can check whether a cease-and-desist agreement has been concluded at all and whether the contractual penalty claim is justified.
Author: Thomas Seifried, trademark lawyer and certified intellectual property lawyer (Fachanwalt für gewerblichen Rechtsschutz)
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