Acquiring federal protection for your business’ trademark material is typically a 7 step process:
1. Design or create the mark;
2. Identify the Goods and/or Services for which the mark will be used;
3. Search the USPTO database for Registered Marks and Pending Applications;
4. Determine which, if any, of these Registered Marks and Pending Applications may be a hurdle to registration of your mark;
5. Application to the USPTO;
6. Tracking of the application through the process (including filing various forms, answering questions, or responding to Office Actions issued by the USPTO); and
7. Registration of the mark by the USPTO.
While an attorney is not required to obtain federal trademark registration, the process can prove difficult and complex to navigate. On average, the entire process takes approximately 13 months from start to finish. It is crucial to comprehend and anticipate potential hurdles and obstacles to ensure the quickest registration timeline possible. Our team of experienced attorneys possess an extensive understanding of these challenges and will collaborate with you every step of the way to secure the best possible protection for your brand.
In the United States, trademark rights are based on use. Therefore, before you begin using a mark to identify your product or service, a trademark clearance search is imperative to determine whether there are any registered or unregistered (common law) marks using similar, or even identical, words or designs to your proposed mark. A trademark clearance search, also known as a due diligence search, is a systematic search of the USPTO’s database, known as TESS, as well as state databases and the internet as a whole to identify marks that are: the same or similar to the mark you wish to use; being used anywhere in the United States; being used for the same or similar product or service; or would likely cause confusion in the mind of the customer if used.
The clearance search produces a list of marks that can be reviewed by someone with knowledge of the rules the USPTO uses to make determinations about potential confusion between marks. From there, the amount of risk involved in applying for the mark can be determined.
Once a search confirms the absence of potentially confusing marks, an application must be created and submitted to the USPTO. Following the initial application and fee, a trademark examining attorney is assigned to the case. This attorney will conduct their own search and inspect the application to ensure it satisfies all legal prerequisites and avoids common mistakes or issues often found in trademark applications. If the examining attorney determines that the application fulfills all requirements for registration and doesn’t raise substantive concerns, the trademark will be approved for publication. During the thirty-day publication period, the public has the opportunity to oppose the registration of the mark for legitimate legal reasons. In the event that the examining attorney concludes that the trademark cannot be registered, they will issue an office action that necessitates a response to rectify the issue before publication can proceed
• A comprehensive federal, state and common law trademark search using industry leading trademark search software, CORSEARCH.
• An opinion letter, drafted by one of our attorneys, detailing the results of the search including any potential issues.
• A telephone consultation to discuss the results and explain the next steps.
• Drafting of the federal trademark application and submission to the USPTO.
• Tracking of the application through the review process.
• Responding to any USPTO Office Actions or Requests for Information.
• Mailing of your trademark registration certificate and a sincere congratulations!
We assist clients at every stage of the trademark registration process. Whether you’re unsure of where to start, perplexed by the application language after using the USPTO’s TESS database, received an intimidating Office Action from the USPTO, or are a seasoned business owner with limited time to manage the intricacies of registration, we’re here to help. Schedule a consultation with us today, and let’s begin safeguarding your brand!