The Trademark Process
To protect your name, brand, logo, slogan, etc., the first thing you want to do is set up a consultation with a trademark attorney to get an understanding of the overall trademark process. It is essential for the client to understand what is at stake and what is involved. The more informed the client is, the more they will appreciate how important it is to protect their intellectual property. In the consultation, the attorney should guide a discussion on the goals and objectives of the client in trademarking the name or logo of the client’s business or product, for example. It is essential that the attorney and the client are on the same page from the get-go, and understanding what the client is trying to achieve will clarify the purpose and set proper expectations in the attorney-client relationship.
Some firms charge consultation fees to secure the appointment with their attorneys while others don’t. Attorneys often charge a consultation fee to ensure that the client takes the meeting seriously and is not merely looking for free advice. Consultation fees range from $100 – $200 depending on the firm and the region. In the consultation, the attorney may determine off the bat that the client’s desired trademark will not be successful and will advise the client as such. If, however, the attorney believes that it is fine to move forward to the next stage. At our law firm we provide a step-by-step overview both in the meeting as well as emailing the client along with a breakdown of costs throughout the process. The attorney-client relationship is commenced by both parties signing the retainer agreement, either provided at the consultation meeting, or sent via email by the office. Schedule your consultation.
The next stage in the process is to conduct a comprehensive search across all relevant databases to determine if there would be any potential conflicts for the client’s trademark. These databases include federal, individual states, the World Intellectual Property Organization (WIPO), companies, domains, social media sites, and others. After the comprehensive search is conducted, the attorney will analyze the search report and also provide it for the client. This could be accompanied by an opinion letter that the attorney drafts, for the client’s convenience, summarizing the findings of the search report and advising the client on the best plan of action. The attorney may find that it is not advisable to pursue the application for trademark registration since there other companies or individuals that already have registered trademarks that are too close and could be deemed confusingly similar in the market. Alternatively, the attorney could find that there are no issues and advise the client to move forward with registration application with the United States Patent and Trademark Office (USPTO).
If the attorney clears the mark for application, the attorney will proceed to draft and prepare the federal application for filing. This requires that the client provide all the relevant information needed for the filling process. This includes information like: whether the mark being applied for is a word or logo; if it’s a logo then a description of it; specimens of the mark (showing how the mark is actually being used); a description of those specimens; the usage of the mark and when it was first used in commerce or if there is merely an intent to use since it has not entered commerce yet.
The application is submitted by the attorney to the USPTO and assigned to an examining attorney from their office. That is the individual that is assigned to the client’s trademark case and is the point of contact for any necessary correspondence with the client’s attorney. The USPTO’s examining attorneys typically take three to six months to approve the application for publication or with a particular Office Action that needs the further attention of the attorney. This takes place if there are substantive issues that need to be addressed like “likelihood of confusion,” for example. At this juncture, the attorney should respond to the examining attorney by no later than six months or the application will be abandoned. Even if that deadline is missed, for whatever reason, the attorney can still respond but would need to pay additional fees for such a late response. Let us know if you received an Office Action.
If there are no Office Actions, then the trademark will be sent to publication in the USPTO’s Official Gazette. Essentially, this is to be used to give any third party who has legal grounds to oppose the application a period of thirty days from the publication date to file a Notice of Opposition to the application. This rarely happens, but if it does the attorney should be notified by the USPTO. The attorney should notify the client of this and discuss the appropriate steps forward at that point.
If no opposition is filed, which is what occurs in most situations, then the trademark will be registered after the 30-day publication period. The attorney’s office will receive the official certification of registration in the mail for the trademark, along with instructions from the USPTO on how to maintain the protection of the trademark.
That is an overview of the trademark process and a breakdown of the steps it takes to get your trademark registered federally with the USPTO. It is essential to work with a law firm that knows the process and has experience delivering results for its clients. Get in contact with our team and ask any questions you have to have the peace of mind you deserve.
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