An Overview of Our State and Federal Trademark Registration Services

Federal Trademark Registrations (USPTO)

First and foremost, before moving forward to register a trademark with the United States Patent & Trademark Office (USPTO), it’s very important to perform a comprehensive state and federal trademark search to ensure that your desired trademark is available and isn’t already in use by another person or business. The  trademark search will help prevent potential conflicts or legal issues down the road.

Once the comprehensive trademark search is completed and the results are carefully analyzed to determine whether the trademark is available for use, the next step is to file a trademark application using the USPTO’s Trademark Electronic Application System (TEAS). The trademark application should include relevant details such as the owner’s name, a clear depiction of the trademark, and a description of the goods or services that the trademark will represent. If available, it’s also advisable to provide a specimen indicating the trademark’s use in commerce.  Please note, unlike state (Illinois) trademark registrations that require the applicant to show use of the trademark in intrastate commerce, a USPTO trademark applicant may apply for a trademark before the trademark is actually used in the marketplace (e.g., Intent to Use trademark application).

Once the trademark application is filed, the USPTO reviews it, a process that can take around eight (8) months due to the volume of trademark applications they receive. If there are any issues with the trademark application, the USPTO examining attorney assigned to review the trademark application will send an office action detailing the legal problems. If an office action is issued by the USPTO examining attorney, the trademark applicant will have three (3) months to respond to all legal problems.

If the examining attorney approves the trademark application, it then gets published in the Trademark Official Gazette (TOG), a weekly online publication. There is a 30-day window in which anyone who believes that the applied-for trademark could harm their business can file a formal opposition to the trademark application. If there’s no opposition, or if any opposition is unsuccessful, the USPTO will proceed to register the trademark.  On average, the trademark registration process will take between 10-14 months.

Upon successful registration, the USPTO will issue a certificate of registration. Note that to maintain your trademark, you’ll need to file specific maintenance documents at regular intervals, specifically between the 5th and 6th year, between the 9th and 10th year, and every 10 years thereafter.

Keep in mind that trademark law can be complex and these steps might involve legal nuances, so it’s recommended to engage our attorneys to handle your trademark registration from start to finish.

Benefits of Federal Trademark Registration

Federal trademark registration provides several significant advantages. To start, it grants the registrant the exclusive right to use the registered trademark nationwide in connection with the goods and services identified in the registration. This can be particularly important in today’s e-commerce marketplace, where a business’s reach can easily extend across state lines.

Another benefit is that federal registration serves as constructive notice to the public of the registrant’s claim of ownership of the trademark. This can help deter others from using similar trademarks and also means that a defendant in a trademark infringement case cannot claim innocent infringement as a defense.

Federal registration allows the registrant to bring a lawsuit concerning the trademark in federal court. In certain cases, the registrant can also recover profits, damages and costs of the infringement lawsuit, and in some situations, treble damages.

With a federally registered trademark, the registrant can use the United States federal registration as a basis to obtain registration in foreign countries, which can be a significant advantage if the registrant has plans to sell products or offer services internationally.

After five years of continuous use, a federally registered trademark can become “incontestable,” which provides an even higher level of protection. An incontestable trademark is conclusive evidence of the registrant’s exclusive right to use the trademark, making it much more difficult for others to challenge the registrant’s trademark.

Lastly, federal registration allows the registrant to record the U.S. trademark registration with the U.S. Customs and Border Protection. This agency can then use the registration to prevent importation of infringing foreign goods.

In summary, while it’s possible to establish state or common law rights in a trademark based on legitimate use of the trademark, owning a federal trademark registration provides several benefits that enhance and strengthen those rights. It’s a valuable asset for any business that is serious about protecting its brand.

Different Types of USPTO Trademark Applications

There are several types of trademark applications that may be filed with the USPTO:

The first type is the “Use in Commerce” application, also known as a “1(a)” application. This is used when the trademark is already being used in interstate commerce at the time of filing. The trademark applicant must provide the date of first use of the mark anywhere and the date of first use in commerce.

The second type is an “Intent to Use” application, or a “1(b)” application. This is used when the applicant has a bona fide intention to use the trademark in commerce, but has not done so yet. Once the USPTO issues a Notice of Allowance for the trademark, the applicant has six months to either use the trademark in commerce and submit a Statement of Use, or request a six-month extension.

There is also the “Foreign Application” or “44(d)” application. This is used when the trademark applicant has already filed a trademark application in a foreign country within the last six months and wants to register the same mark in the United States.

Next is the “Foreign Registration” or “44(e)” application. This is for trademark applicants who have already registered their trademark in their country of origin and wish to register the same trademark in the United States.

Lastly, there is the “Section 66(a)” application, which is based on an international registration under the Madrid Protocol. The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application.

Each of these application types has its own requirements and benefits, and the best one to use will depend on the specifics of the situation. It’s always a good idea to consult with a trademark attorney or expert to ensure the correct application is used.

Defining the Goods and Services in the Federal Trademark Application

The USPTO requires that any trademark application precisely define the goods and/or services that the trademark will represent. This requirement is crucial because the scope of protection granted to a registered trademark is limited to the specific goods and services listed in the application.

In defining the goods and services, the applicant must use clear, concise, and descriptive terms. This often means using commonly understood language rather than industry jargon or overly broad or vague terminology. The language should be specific enough to identify the nature of the goods and services, but not so detailed as to limit the scope of protection unnecessarily.

Furthermore, each good or service must be classified under one of the 45 international classes used by the USPTO. These classes range from Class 1 (Chemicals) to Class 45 (Legal and Security Services), and the application fee is determined per class. That means if an applicant’s goods or services fall into more than one class, they will not only need to ensure the trademark is available to use in each class but also pay the USPTO filing fee for each class.

In addition, the trademark applicant must provide a filing basis for each good or service listed. For goods, this could mean providing evidence of use in commerce, such as a photo of the product with the trademark visible on the packaging. For services, a brochure or advertisement showing the trademark used in the sale or advertising of the services could suffice.

The USPTO’s examining attorney will review the identified goods and services for acceptability. If the description is too vague or broad, the examining attorney will issue an office action requiring further clarification.

The process of correctly identifying and classifying goods and services can be complex, and errors can lead to delays or even refusal of the trademark application. It’s therefore recommended to seek our assistance to handle your trademark registration matter.

Do You Need To Register Your Trademark?

A trademark is any word, phrase, symbol, design, or combination thereof that identifies your products and/or services and distinguishes your brand from your commercial competitors. Establishing brand recognition in the marketplace through strong trademarks is one of its most important and valuable assets of any business. Federal trademark registrations issued by the USPTO confer significant legal advantages to a trademark owner, including nationwide priority and exclusive rights in the trademark. If you or your business would like register one or multiple trademarks with the USPTO, our attorneys can assist!  Please do not hesitate to give us a call or fill out our contact form.  There is absolutely no charge to schedule an initial consultation with one of our trademark attorneys. *The average fees estimated below do not include USPTO filing fees.

Below are the 3 most requested trademark legal services

Search & Registration

$950Average Fee
  • Our trademark attorneys will conduct a comprehensive search of all state, US territories, and federal trademark databases to determine if your trademark is available for federal registration. We will provide you with a detailed trademark search report and analysis of any potentially conflicting trademarks.
  • Consultation w/ Trademark Attorney & Filing of Trademark Application
  • Trademark Tracking & Responding to Standard USPTO Inquiries

Trademark Monitoring

$350Quarterly
  • Our trademark attorneys will monitor all new state and federal trademark filings for similar or identical applied-for trademarks. We will provide you with a detailed trademark search report and analysis of any potentially conflicting (or infringing) trademarks, including options to oppose conflicting applications.
  • Consultation w/ Trademark Attorney To Discuss Conflicting Marks
  • Filing Extension of Time to Oppose & Trademark Tracking

Trademark Renewals

$$975Average Fee
  • Our trademark attorneys will review all appropriate information regarding the trademark registered with the USPTO and its renewal requirements and deadlines. We will select the appropriate evidence to show the USPTO continued use of the trademark in commerce with the specified goods or services.
  • Consultation w/ Trademark Attorney To Discuss Trademark Renewal
  • Responding to Standard USPTO Inquiries & Trademark Tracking

Illinois Trademark Registrations

First, before filing for trademark registration in Illinois, it’s advisable to conduct a comprehensive trademark search to ensure that the trademark is available and isn’t already in use by another person or entity. Please see our trademark search page for more information on this topic.

Once the comprehensive trademark search has been completed to ensure your trademark is distinctive and available for use in the marketplace, our attorney can assist with the the registration process by preparing and filing a trademark application with the Illinois Secretary of State. The trademark application should include the name of the owner, the name of the trademark, a description of the goods or services associated with the trademark, and a specimen showing the use of the trademark in commerce.  Note, unlike federal trademark applications that allow you to apply for a trademark before it is used in the marketplace (e.g., Intent to Use trademark applications), Illinois requires that a business actually use the trademark in the marketplace before submitting a trademark application.

After the trademark application is submitted, it will be reviewed by an agent at the trademark office. If there are any issues or conflicts with the trademark application, we will be notified and given a chance to formally address these issues. This trademark review process can take several weeks to a few months, depending on the volume of applications received.

If the trademark application passes the review and no objections are received during a public opposition period, the trademark will be registered in the State of Illinois. Note that this registration is only valid within the State of Illinois. If you are providing goods and/or services across state lines, it is suggested that you consider registering your trademark with the United States Patent and Trademark Office.

Finally, remember that a trademark registration is not perpetual. In Illinois, trademarks must be renewed every five years from the date of registration. The renewal process involves submitting a renewal application and paying a renewal fee.

Bear in mind that while the Illinois trademark application process might seem straightforward, there can be complexities and nuances involved, so it’s often beneficial to engage our attorneys to handle you trademark registration matter with the Illinois Secretary of State.

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.