Obtaining a trademark- overview
of the trademark process
There are several important steps for obtaining a trademark.
These include:
Identifying a trademark
It is likely that you have chosen a name or logo that your
company would like to use. Before filing a trademark application,
we recommend researching your mark. We can help you identify
similar marks that might block the registration of your trademark
application, or might pose other barriers to your use of the
mark. It is better to find out before filing a trademark application,
to avoid the added expense of registering, abandoning, or
refiling your trademark.
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Conducting a trademark search
Our firm has experience conducting trademark searches. We
recommend conducting a limited federal trademark search,
which
will identify registered trademarks that might block your
trademark application. We can additionally perform more
comprehensive
state and common law trademark searches. Our firm charges
$400 for an electronic version of a trademark search. Our
firm's trademark searches include review & discussion
with a trademark attorney. Our search allows you to discover
potentially similar trademarks, and help better position
your trademark application. Other firms and companies provide
free
trademark searches. While this sounds like an attractive
offer, it is likely that they will either provide a poor
quality
free trademark search, or will overcharge you for later services.
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Reviewing trademark search results
After one of our attorneys review your trademark search,
we can discuss proceeding with your application. We will also
give you advice on your mark. We can identify problems that
may arise with your trademark application. Along with your
trademark search results, we can identify possible common
blocks to your application, such as similar marks, and whether
your mark is merely descriptive (such as "George's Fifteen
Minute Oil Change"). We can help you identify these possible
problems and recommend changes. Filing a trademark application
provides you with a filing priority date, which will help
determine the date your trademark was in use (an important
factor in trademark rights). This review and consultation
with a trademark attorney is included in the cost of our trademark
search.
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Completing and filing a trademark
application
After finalizing your trademark, we can assist you with
completing a federal
trademark application. This includes
identifying the goods
and/or services you would like your trademark to cover, identifying
the applicant (yourself or a corporation), and identifying
your filing basis. Once your trademark application is filed,
we will keep track of all reminder dates for keeping your
trademark application current. Our firm charges $475 (plus
USPTO filing fee of $325) to prepare and file a basic trademark
application. This includes a consultation with a trademark
attorney.
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International trademark
application
There are several options for filing international trademark
applications. Our firm recommends filing within 6 months
of your filing date in the U.S. Any foreign trademark applications
will thus have the same filing date as your U.S. application.
You can file international applications at a later date,
however your protection will relate to a later filing date.
More information on our international
trademark application page.
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Trademark prosecution (review
by the USPTO & responding to office actions)
Once a trademark application is filed, trademark prosecution
by the United States Patent and Trademark Office (USPTO) begins.
They will initially review your application to make sure it
is complete. Within nine months of filing your trademark application,
you should receive an Office
Action. An Office Action is a request to address concerns
that the USPTO has with a trademark application. Many of these
concerns take the form of "rejections." These rejections
must be addressed and overcome with legal arguments to allow
a trademark application to be approved. Many of the rejections
revolve around similar marks, or the strength
of the trademark.
Our firm has practice prosecuting numerous trademark applications,
and drafting responses to office actions from the USPTO. We
can provide many arguments that are not immediately obvious,
and can work with you to address the issues raised by the
USPTO. To prepare and file a basic trademark response to an
office action from the USPTO, our firm charges $400. More
complicated office actions require additional work, and the
cost of such a response can be determined after a free consultation
with a trademark attorney. Responses to trademark office actions
drafted by our firm are prepared by experienced trademark
attorneys.
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Publication of your trademark
application
Once you have addressed the concerns raised by the USPTO
regarding your trademark application, it is then approved
for publication. The USPTO then publishes your trademark
application
in the Official Gazette. This allows the general public to
view your trademark application prior to approval. If any
other trademark owners have concerns, they can initiate a
trademark opposition proceeding, which must be filed within
30 days of publication (however extensions to file an opposition
can be filed for up to 120 days.)
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Trademark opposition
A trademark opposition occurs when a trademark holder believes
that a published trademark application infringes upon their
registered trademark. A trademark opposition proceeding is
operated much like a trial, and rules of evidence and levels
of proof are important. We have experience with trademark
oppositions, and can reach an amicable resolution through
mutual consent agreements, or defend your trademark application
to the fullest.
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Trademark registration
Once the opposition period has ended, your trademark application
is approved for registration. With the payment of requisite
government fees, you are granted a registered trademark. Maintenance
fees and statements of use are required on a periodic basis.
Our firm will keep track of these dates, and ensure that you
keep your registered trademark. We will also provide you with
reports about your trademark rights. Our firm can additionally
monitor your trademark, and protect your trademark from potential
infringers.
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Foreign trademark applications
Once you have filed a trademark application with the USPTO,
you can file trademark applications worldwide. If you wish
to file trademark applications abroad, this must be done
within six months of your trademark application in the United
States. You can claim the filing date of your United States
trademark application as a priority date for foreign trademark
applications, including foreign trademark applications made
through the Paris Convention or the Madrid Protocol (both
which protect your trademark rights).
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