Trademark process

There are many steps to the trademark process. Here is an overview of the most common steps.

• Identifying a trademark
• Conducting a trademark search
• Reviewing trademark search results
• Completing and filing a trademark application
• Trademark prosecution (review by the USPTO & responding to office actions)
• Publication of your trademark application
• Trademark opposition
• Trademark registration
• Foreign trademark applications

Identifying a trademark
It is likely that you have chosen a name or logo that you or your company would like to use. Before filing a trademark application, it is recommended to research the mark. There may be potential marks that could block the use or registration of your mark. Before spending the time and effort of filing a trademark application, it is best to identify potential problems.

Conducting a trademark search
There are many resources for conducting trademark searches. A simple Internet search will give you a good idea of marks out there. The next step is to search the U.S. Patent and Trademark Office (USPTO) website. The online database is called TESS, and a direct link is here. There are additional low cost and free trademark searches online, however the motto "you get what you pay for" is true. These searches may be quite basic, and not conducted or reviewed by a trademark professional such as an attorney. A basic trademark search at my law firm is $300, which includes USPTO and state trademark databases, plus review, opinion and discussion with a trademark attorney.

Reviewing trademark search results
Once you have your trademark search results, they should be reviewed by a trademark professional. At my law firm, we'll review the results and also give you a brief opinion regarding any potential problems you may encounter 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 "Frank's Rapid Oil Change and Lube"). 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). If you conduct your trademark search with our law firm, this review and consultation with a trademark attorney is included in the cost of our trademark search.

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 $400 (plus USPTO filing fee of $325) to prepare and file a basic trademark application. This includes a consultation with a trademark attorney.

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.

Trademark prosecution (review by the USPTO & responding to office actions)

Once a trademark application is filed, trademark prosecution by the USPTO begins. They will initially review your application to make sure it is complete. Within seven to nine months of filing your trademark application, your application will be reviewed by the USPTO. In many cases, you will receive some sort of 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. While many trademark applications receive Office Actions, that does not mean that the mark cannot ultimately be registered. 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.

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.)

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.

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.

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)