The Trademark Attorney Process

To protect your brand, one of the first things that you should do is to trademark your logo, slogan, and/or name. You can do this by filing a trademark application with the United States Patent and Trademark office. Trademark applications can be filed online through the website of the USPTO. Before you file an application, it is important for you to understand the process so that you can avoid making critical mistakes.

trademark application process

The Trademark Application Process

From start to finish, it takes around 13 to 18 months to obtain a U.S. trademark. After you file the application, the USPTO will complete its initial review within about three to four months. The initial review is completed by an examining attorney who will review your application to check for conflicts with existing trademarks and to ensure that your application adheres to the USPTO’s technical requirements.

If your application passes the initial review, it will be forwarded for publication. This is a 30-day period during which anyone can file an opposition to your trademark. After the publication period ends, your application will then be sent to the examining attorney for a final review. Your federal trademark registration should be issued as long as you were selling the services or products at the time that your application was filed. You will receive the certificate of registration in the mail.

Preparing to Apply

The first step in the application process is selecting a mark. Business owners and entrepreneurs should be careful with this step. Many marks cannot be registered with the trademark office. Some businesses choose marks that cannot be registered. Before you complete your application, you will want to determine whether your selected mark can be registered and whether it is strong enough to protect your brand.

You will want to choose the format of your mark. You can choose a character mark, a design mark, or a sound mark. The precise services or goods that the mark will protect must be clearly identified. You should search the trademark database on the USPTO database to check whether anyone else has registered a trademark that is similar to yours and is used on similar services or goods. If a similar trademark has already been registered, you will need to choose a different mark. Finally, you will need to know the basis for which you are filing your application.

The trademark screening process is rigorous. If the examining attorney finds that your mark is too similar to an existing trademark or violates the intellectual property laws in another way, it may be rejected. If your application is rejected, you will not receive a refund of your application fee. Instead, you will have to start the process over. If you work with a law firm, the attorney will evaluate your mark before the application is submitted. This makes it more likely that your application will be approved.

Searching the database with your mark is important. More than three million trademarks are registered in the U.S. This means that there may be another similar mark that has already been registered. While you can search the database yourself, it is a better idea to retain an intellectual property attorney for help with the search.

Where an attorney helps: Trademark attorneys know how to complete comprehensive searches to ensure that your mark is not too similar to an existing trademark and can be registered. They also know the ins and outs of trademark law, and how to avoid the common pitfalls.

Submitting Your Application

The US Patent and Trademark Office has two different applications that have different fees because of the levels of detail required. The TEAS Plus application is less expensive. If you use this form, you will need to make sure to complete all of the fields and choose the class of your services or goods from the accepted list. You will need to agree to file any future responses through TEAS and to receive communication about your application by email.

The fee for a TEAS Plus application is $350. If you cannot meet the requirements for filing a TEAS Plus application, you will need to file the standard TEAS form. It costs $325 for each class of services or goods for which you are wanting to register marks.

There are several fields on the application that must be completed correctly. In the “owner of the mark” field, you will list the company or individual who is applying for the trademark. If your business is a corporation, you will only list one owner. If you have a partnership, each partner who will claim ownership will need to have their information completed individually.

If your company does business under a name other than its owner, you will need to list it in the DBA field. This field also includes trading as, formerly known as, and also known as designations.

The next field is your entity type. Choose your type of entity and enter it in this field. You will then need to fill out your address and contact information in the next field. Make sure to include your phone number, website address, and fax number even though they are not required.

In the mark field, you will enter your mark. If you are applying for a logo trademark, you can insert a .jpg file. If you want to register multiple marks, each mark will require a separate application and fee. Sound marks are allowed and must be in one of the following formats:

  • .avi
  • .mpg
  • .mp3
  • .wma
  • .wmv
  • .wav

There is also a field for additional statements. While your application may not require them, you can use this field to include any information about a prior registration.

The field for the class of services or goods is next. You will need to select the class that describes the services or goods for which you are applying for a mark. It is a good idea to review this list before starting your application. If your services or goods do not fall into one of the accepted classes, you will not be able to immediately file the form and will have to request that the class is added. Each listed class contains many different types of businesses. You will need to choose one that precisely describes yours.

The next field is your declaration of use. In this field, you are required to declare whether your mark is currently being used by you in commerce or if you intend to use it at a future time. You will also need to declare whether your mark is foreign.

The final field is the official correspondent field. In this field, you will need to list your attorney. The USPTO will communicate with the official correspondent you list in your application.

Where an attorney helps: Filling out legal paperwork can be daunting. In this process, selecting the right class, etc is crucial. It’s best to have a professional on your side to make sure it’s done right the first time.

Possible Office Action

After your application is submitted and goes through the initial review, the examining attorney might issue an office action. An office action may be issued for any of the following reasons:

  • Your mark is too similar to a registered trademark or to another mark for which an application has been filed.
  • You made a technical error in your application.
  • Your mark cannot be registered.

If an office action is issued, your application will be frozen until you submit a response. You must respond within six months. If you don’t, your application will be denied.

Where an attorney helps: If you applied for a trademark on your own and receive an office action, you should retain an attorney. In most cases, office actions are issued when applications have complicated issues that might require the help of an experienced trademark lawyer. To reduce the chances of receiving an office action, it is a good idea to complete the trademark application process with an attorney from the start.

Finalizing Registration

Once your application passes the initial review and is submitted for publication, it will be listed in the Official Gazette. This is the final chance for someone else to file an initial opposition. If an opposition is not filed, your application will go back to the examining attorney. He or she will register your mark and send the registration certificate to you in the mail.

Where an attorney helps: If someone files an opposition, you will definitely want to seek legal assistance. Once you have your mark successfully registered, an attorney can monitor for future registrations from others that may conflict with your mark.

Can you Do It Alone?

If you live or are domiciled in the U.S., there is no requirement for you to hire an attorney to file your application and go through the trademark registration process. However, it is advisable for you to retain a trademark lawyer to help you with the application process. Far fewer applicants who try to obtain trademarks on their own are approved as compared to those who apply with the legal advice of an attorney.

A trademark attorney can conduct the trademark search for you. While you can search the database on the USPTO website, it is not an exhaustive list of all of the marks that could conflict with yours. Your lawyer can search federal and state registrations as well as unregistered trademarks (known as ‘common law‘ marks) before your application is filed. The USPTO considers multiple factors when it analyzes trademark applications, and an attorney should understand what to look for when analyzing your mark.

Working with a lawyer can also help you to avoid making critical errors on your trademark application. Your attorney can correctly identify the correct class. If your application does not correctly represent the services and goods of your business, your trademark rights may be compromised.

If you receive an office action, having the help of an experienced trademark attorney can be invaluable. He or she can help to move your application forward and respond to the office action correctly.

Finally, after you receive your trademark registration, it will be your responsibility to monitor it and enforce your trademark rights. When you have a trademark attorney, he or she can monitor its use for you to identify any potential infringement so that you can properly respond. Failure to do this could result in the cancellation of your mark, so it is highly advised that you retain legal services from an experienced attorney.

The trademark application process is complicated, and it is easy for people to make mistakes. If you do make mistakes on your application or with the mark you choose, your application may be denied. The USPTO will not refund your application fee if it denies your trademark application. Instead, you will be forced to start over and pay a new fee. Working with a trademark attorney can save you time and money in the long-term. We offer these services at a flat fee – so no billing by the hour for every question you might have. Contact us today to get started on filing for your trademark or service mark.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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