Conducting a Comprehensive Trademark Search
A trademark is an essential asset to any business, offering a unique brand identity that distinguishes a company’s products or services from others in the market. However, the process of trademarking is not as simple as coming up with a unique name or logo. It requires a comprehensive search to avoid potential trademark infringement, which can result in significant legal and financial implications. This is where our trademark attorneys play a crucial role.
The following is a brief overview of the importance of engaging our trademark attorneys to conduct a comprehensive trademark search before going public with a new business, product, or service:
Avoidance of Legal Issues: A trademark attorney can ensure that your proposed trademark doesn’t infringe upon any existing trademarks. Unintentional infringement can lead to costly legal battles, with potential consequences including having to rebrand entirely or pay damages to the owner of the infringed trademark.
Understanding of Legal Nuances: Trademark law is intricate and complex, with different rules and regulations based on jurisdiction. A trademark attorney, trained and experienced in this field, can navigate these complexities and ensure that your search is exhaustive and compliant with the law.
Saving Time and Resources: An experienced attorney will have access to comprehensive databases and resources to perform a thorough search, something a layperson might not have access to or knowledge of. This saves considerable time and effort, allowing business owners to focus on other aspects of their business.
Filing and Registration: After conducting a trademark search, the next step is registering the trademark. This involves preparation and submission of specific legal documents, a task best left to a professional to ensure correctness and completeness.
Global Scope: If you intend to do business globally, the trademark search must include international databases. International trademark law can be even more complex, and an experienced trademark attorney can ensure that your brand is protected worldwide.Future Protection and Enforcement: Even after successful registration, trademark protection requires maintenance and potential enforcement against infringement. A trademark attorney can provide ongoing services to monitor your trademark and take action against any potential infringements.
Strategic Advice: Beyond the technical aspects of searching and registering a trademark, an attorney can also provide strategic advice on trademark selection. They can guide you on how to choose trademarks that are strong and defensible legally.
Reducing Business Risk: Ultimately, hiring a trademark attorney to conduct a comprehensive search significantly reduces the risk of trademark disputes disrupting your business operations in the future.
In conclusion, while it is technically possible to conduct a trademark search and registration without an attorney, the potential risk and costs associated with mistakes or oversight in the process make hiring our trademark attorneys a prudent decision. Our expertise not only streamlines the trademark registration process but also provides invaluable peace of mind, allowing businesses to focus on their core operations.
Prepare The Appropriate USPTO Trademark Application
Once the comprehensive trademark search has been completed, the next step is to prepare the appropriate USPTO trademark application. The United States Patent and Trademark Office (USPTO) allows for several different types of trademark applications. The appropriate one to use depends on the specifics of the situation.
Here’s an overview of the main types of USPTO trademark applications:
Section 1(a) Application (Use in Commerce): This application is used when the trademark is already being used in commerce. “Commerce” refers to all commerce which may lawfully be regulated by the U.S. Congress, including interstate commerce and commerce between the U.S. and another country. To file this application, you need to provide the date of the first use of the mark anywhere and the date of the first use of the mark in commerce.
Section 1(b) Application (Intent-to-Use): If you have not yet used the trademark but plan to do so in the future, you can file an intent-to-use application. This reserves the mark before it’s officially in use. However, eventually, you will have to provide evidence (a “Statement of Use”) that you are using the mark in commerce to finalize registration.
Section 44(d) Application (Foreign Application Basis): This is used if you have filed a trademark application in a foreign country and want to file the same application in the U.S. within six months. The U.S. application will be given the same filing date as the foreign application.
Section 44(e) Application (Foreign Registration Basis): If you have already registered a trademark in a foreign country, you can use this basis to apply for the same mark in the U.S.
Section 66(a) Application (Madrid Protocol): If you have applied for or registered a trademark in one of the member countries of the Madrid Protocol, you can extend the protection of your mark to the US through the World Intellectual Property Organization (WIPO). This process, known as an “International Application,” simplifies the process of filing in multiple countries.
It’s important to note that while this list covers the most common types of trademark applications, the best type of application to use can depend on various factors. Our trademark attorneys can provide personalized advice based on the specific circumstances and goals of your business.
Intent To Use Trademark Applications
An Intent-to-Use (ITU) trademark application, under Section 1(b) of the Lanham Act, is submitted to the USPTO when a business or individual intends to use a trademark in commerce but has not yet done so. This type of application is beneficial as it allows applicants to effectively reserve a trademark before it’s actually in use.
The processing timeline for an ITU application can vary, but generally, it involves the following steps:
1. Filing of the Application (Day 1): We will submit your trademark application to the USPTO. It must include the name of the applicant (i.e. the trademark owner), a clear representation of the trademark, the goods/services to be associated with the trademark, and a sworn statement that the trademark owner intends to use the trademark in commerce.
2. USPTO Initial Review (Around 8 Months After Filing): A USPTO examining attorney reviews the trademark application to ensure compliance with federal laws and regulations. If there are any issues, the examining attorney will issue an Office Action, and the trademark owner will have three (3) months to respond.
3. Publication for Opposition (Approximately 8-10 Months After Filing): If the examining attorney approves the trademark application, the trademark is published in the USPTO’s Official Gazette (TOG). There’s a 30-day period where anyone who believes they would be harmed by the registration of the trademark can file an opposition.
4. Notice of Allowance (Approximately 9-12 Months After Filing): If no one opposes the trademark, or if the opposition is decided in the trademark owner’s favor, then the USPTO will issue a Notice of Allowance. This means that the trademark owners has been allowed to register the trademark, but it’s not registered yet.
5. Statement of Use (Between 9-12 months and 3 years After Notice of Allowance): After receiving a Notice of Allowance, the trademark owner must file a Statement of Use (SOU) within six months, declaring that the he/she/it is now using the trademark in commerce. If the trademark owner is not ready to start using the trademark, the owner can file a Request for an Extension of Time to file the Statement of Use. Note, the trademark owner can file up to five extensions, each lasting six months, for a total of up to three years after the Notice of Allowance to begin using the trademark.
6. Registration (Approximately 10-14 Months – 4 Years After Filing): Once the USPTO accepts the Statement of Use, the examining attorney will register the trademark and send an official federal trademark certificate of registration.
Bear in mind that these are average timelines and actual processing times can vary. Additionally, the process assumes that no major issues or oppositions arise during the application process.
Actual Use Trademark Applications
The Actual Use trademark application, also known as the “Use in Commerce” application under Section 1(a) of the Lanham Act, is submitted to the United States Patent and Trademark Office (USPTO) when a business or individual is already using a trademark in commerce.
The processing timeline for an Actual Use application typically involves the following steps:
1. Filing of the Application (Day 1): We will submit your trademark application to the USPTO, including the name of the applicant, a clear representation of the trademark, the goods/services with which the mark is associated, and a sworn statement (an “affidavit”) attesting that the trademark is in use in commerce. For an Actual Use trademark application, we will also need to include a specimen showing the trademark as it’s used in commerce, the date the trademark was first used anywhere, and the date the trademark was first used in commerce.
2. USPTO Initial Review (Around 8 Months After Filing): A USPTO examining attorney reviews the application for compliance with all relevant federal laws and regulations. If there are any issues, the examining attorney will issue an Office Action detailing the problems, and you will have three (3) months to respond.
3. Publication for Opposition (Approximately 8-10 Months After Filing): If the examining attorney approves the trademark application, the trademark is published in the USPTO’s Trademark Official Gazette (TOG), a weekly publication. This initiates a 30-day period during which anyone who believes they would be harmed by the registration of the trademark can file an opposition.
4. Registration (Approximately 10-14 Months After Filing): If no one opposes the mark, or if any opposition is decided in the applicant’s favor, the USPTO will register the trademark and the trademark owner an official federal trademark certificate of registration.
Remember that these are average timelines and actual processing times can vary. Furthermore, this process assumes that no major issues or oppositions arise during the application process. Lastly, the need for legal advice or representation during this process can also affect the timeline, especially if there are complex issues to resolve.
What Issues Could Delay The Trademark Registration Process?
The trademark registration process with the United States Patent and Trademark Office (USPTO) is usually straightforward, but certain issues could arise that delay registration.
One of the most common issues that could lead to delays is receiving an Office Action from the examining attorney. An Office Action is an official letter in which the examining attorney lists any problems with the application. These could range from procedural issues, such as inadequate description of goods/services or improper specimen, to substantive issues such as likelihood of confusion with an existing registered trademark or descriptiveness of the trademark. A trademark applicant has three (3) months to respond to an Office Action, and if the issues aren’t satisfactorily resolved, this could lead to refusal of the trademark application.
Additionally, if the application is published in the Trademark Official Gazette (TOG) and a third party believes they would be harmed by your registration, they can file an opposition. The Trademark Trial and Appeal Board (TTAB) then conducts formal proceedings to determine the outcome, which can considerably delay the registration process.
Further delays can be caused if the application is based on an “intent-to-use” basis, and the applicant is not ready to start using the trademark within the allowed time frame. Although extensions can be requested, each extension request must meet specific requirements, which can also add time to the overall process.
Errors in the application itself can also lead to delays. Simple mistakes like incorrect owner information or not properly identifying goods or services can require extra time for correction.
Lastly, sometimes delays can occur simply because of the volume of applications that the USPTO is processing. Each application is examined in the order it was received, and periods of high demand can extend the typical review timeline.
Do You Need Trademark Registration Assistance?
Protecting your brand is crucial in today’s competitive business environment. Your trademarks are more than just symbols or words; they represent your reputation, your quality, and your commitment to your customers. Ensuring these trademarks are secure and effectively managed is a complex process that requires specialized legal expertise.
Our team of experienced attorneys understands the intricacies of trademark law and is equipped to guide you through every step of the trademark process. From assessing the registrability of a trademark, filing an application with the USPTO, to enforcing your rights against infringers, we are prepared to provide comprehensive legal support tailored to your business needs.
But our services don’t stop at securing your trademarks. We believe in a proactive approach to intellectual property management. We offer ongoing monitoring services to help safeguard your brand from potential infringements and keep you informed of relevant developments in the marketplace.
Whether you’re a start-up looking to establish your first trademark or an established business dealing with complex trademark matters, our attorneys are committed to protecting your brand and supporting your business growth.
We encourage you to reach out to us today. Let’s discuss how we can help secure your business’s most valuable asset – your brand. Your trademark matters to us because your business matters to us. Trust us with your trademark needs, and together, we can build a stronger brand for your business.
