The Trademark Registration Process
Since you may be interested in registering your trademark and/or your domain name to increase protection for your legal rights, this page will briefly describe the trademark registration process and the assistance that we can provide.
The trademark or service mark that you use to advertise your business is an extraordinarily important asset of your company. It provides the identity by which your business will be known, and it represents the quality products and services that you provide to your customers.
You may spend substantial amounts of money for the advertising of your mark in order to establish the identity of your business in the minds of consumers. Your business’s reputation for quality and its familiarity in the minds of your consumers will be linked to the mark. If you do not have registered trademark rights for the mark, a competing company may begin to advertise with a trademark that is confusingly similar to your mark. Customers may believe that the competitor is your company and may choose the competitor instead of your company. Your competition will be benefiting from your advertising expenditures.
Therefore, it is very important to protect your trademark or service mark in order to ensure that the reputation and familiarity that you establish in the minds of consumers will benefit only your company and that competing companies may not be able to benefit from your advertising expenditures or from the good reputation that you create for your company and its products. Federal trademark registration provides this protection.
Reasons for Trademark Registration
The Benefits of Federal Trademark Registration
There are a number of reasons that many businesses choose to register their trademark with the U. S. Patent and Trademark Office.
- Federal trademark registration establishes your nationwide rights to the mark.
- Federal trademark registration creates protection for your mark in the event that another business subsequently uses your mark or a mark that is confusingly similar
- Federal trademark registration allows you to use the federal court system in order to enforce your rights in your registered mark.
- If there is a dispute about your mark or a confusingly similar mark, federal
trademark registration creates certain presumptions:
- 1) You are the owner
of the mark; and
- 2) Subsequent businesses may have copied your mark and
may be liable for willfully infringing on your rights.
- 1) You are the owner
of the mark; and
- Federal trademark registration also enhances your ability to collect damages and/or attorneys’ fees in an infringement lawsuit against your competitors who may attempt to infringe on your rights.
The First Step – A Trademark Registration Search
A first step in the process of protecting your trademark with federal registration is to conduct a search. A well-conducted search by experienced trademark attorneys searches through many databases to determine whether your mark or a confusingly similar mark has already been established.
This evaluation provides an initial indication of the likelihood that the USPTO will issue a registration for your trademark. Since the trademark registration process extends for several months, the USPTO may not issue a trademark to you for a considerable period of time.
During the time period between your initial registration and the time that your registration is issued, you may want to begin marketing your trademark, prepare advertising materials, prepare signs, purchase letterhead stationary, etc. If you make these expenditures and subsequently discover that the USPTO refuses to issue your trademark registration, your marketing expenditures will be lost and you may need to adopt, use and obtain a federal registration for a different mark. This can be a considerable expense that can be avoided by a comprehensive preliminary search before the filing of the application. Accordingly it is advisable for you to conduct a thorough search before using a trademark and applying for a federal registration.
There are several types of searches that can be performed depending on your objectives. We will discuss your objectives with you and review the different types of searches that can be conducted. Some searches are more thorough and comprehensive than others. If you are planning to spend a considerable amount for advertising and marketing prior to the issuance of your trademark registration, you may decide that a more thorough search will provide the increased certainty that you will need before you make the expenditures. We will work with you to determine the most appropriate type search for your situation.
Second Step – Review the Results of the Trademark Registration Search
After a search has been conducted the results will be analyzed to evaluate the likelihood of a conflict. Since the determination of whether two marks are “confusingly similar” is a difficult, subjective determination, it is best for an experienced trademark attorney to review the results of the search. For someone who has not been trained in trademark law, it may be very difficult to decide whether there is a confusing similarity between your mark and another word, phrase or image that has been used as a brand for another company. In addition to the question of similarity, another issue is the question of whether two marks may be for different types of products. A third question that should be examined is the issue of whether your mark or the mark of a competitor is generic and may not be subject to trademark registration. Accordingly, an attorney’s evaluation will assist you with these issues before you begin spending money to begin your advertising and marketing of your proposed mark.
Third Step – Preparing a Trademark Registration Application
After the search has been conducted and the results have been discussed with you, the trademark registration application will be prepared for submission. A key element in the preparation of an application is the determination of the classification of your product or service and the preparation of the specific description of the intended use of the trademark.
The “class” is a category of goods and services that has been created by the USPTO. The careful selection of the appropriate class and the specific description of the goods and services is important because these characterizations will be important in the USPTO’s examining attorneys determination of whether there may be a preexisting mark and whether the proposed usage of the mark may be generic and therefore not subject to registration.
The Process and the Timetable for Federal Registration is:
Two months after filing - Confirmation
The USPTO will notify us to confirm that your application is being processed and has been assigned a serial number.
Six months after filing - Notification of Possible Pre-existing Trademark
The USPTO will notify us and indicate whether the examining attorney has determined that the proposed mark infringes upon an existing mark.
Response to Office Actions of the USPTO
We will consult with the USPTO examining attorney regarding possible changes or modifications that may be necessary for the continuation of the processing of the application
Eight Months after filing- Publication
The USPTO will publish the proposed mark in the official Gazette to inform the public of the pending trademark registration. Other individuals who may oppose the registration of the trademark may then file objections to the proposed mark.
Ten Months - Notice of Allowance
The USPTO will issue a notice of allowance. At this point we can file a Statement of Use and/or begin using the mark in interstate commerce.
Twelve Months - Approval
The USPTO will approve your trademark. You may then begin using the trademark with the ® symbol.
Trademark Appeals During The Process
If your trademark application encounters difficulties in the trademark registration process and is halted by the examining attorney of the USPTO, it may be helpful for our experienced trademark attorneys to appeal the decision of the examining attorney. We can easily file an appeal and pursue it vigorously since our office is in close proximity to the USPTO and the Trademark Trial and Appeals Board (TTAB).
Protection and Enforcement
When you obtain your federal trademark registration, you will have a powerful competitive advantage. You will have a mark that you can advertise in order to create associations in the minds of consumers and to establish a reputation of quality and good service. Having established your good brand and good reputation, you can then prohibit your competitors from drawing business from you by using a confusingly similar mark. You will be able to initiate federal lawsuits to obtain an order to prohibit the competitor from utilizing your mark and to recover damages and attorneys fees.
Let us become part of your team - to fight for you to achieve your objectives!
Call or email now.
We will be delighted to talk with you.
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Disclaimer: Results vary, of course, and depend upon many factors unique to each case. The case results described here do not guarantee or predict a similar result in your case or in any future case undertaken by our firm. Since the states in which we are licensed have not established specialty certification procedures, we cannot describe our lawyers as being state-certified specialists. However, since we limit our practice to trademark and business matters, we have developed expertise in trademark issues. Legal services are not provided by this firm to residents of Virginia.
