Before filing a trademark application, it is very important to determine whether the proposed mark is likely to cause confusion with another mark. This determination can be made only after doing a full and comprehensive trademark search. The search that we conduct goes beyond the USPTO’s database. We will search the internet for websites and articles that reference similar marks that are related to your goods and services. We will also search state trademark databases and business name databases. The results of the search may identify potential problems, such as a likelihood of confusion with a prior registered mark or a mark in a pending application. A search could save you the expense of applying for a mark in which you will likely not receive a registration because another party may already have stronger rights in that mark. Also, the search results may show whether your mark or a part of your mark appears as generic or descriptive wording in other registrations, and thus is weak and difficult to protect.
We will help you navigate the application process to provide optimal protection of your trademark rights. What information do we need from you in order to register you mark?
2. OWNER OF THE MARK - Please provide the name of the owner of the mark. The owner of the mark is the person or entity who controls the nature and quality of the goods/services identified by the mark. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
2. NAME AND ADDRESS FOR CORRESPONDENCE - Please provide applicant’s name, full address and e-mail address.
3. DEPICTION OF THE MARK (“THE DRAWING”) - Please provide a clear image of your mark (“the drawing”). There are two types of drawings: “standard character” and “special form.”
A standard character drawing is commonly submitted when the mark you wish to register consists solely of words, letters, or numbers. A standard character mark protects the wording itself, without limiting the mark to a specific font, style, size, or color and therefore gives you broader protection than a special form drawing.
A standard character drawing must have the following characteristics:
• No design element;
• No stylization of lettering and/or numbers;
• Any letters and words in Latin characters;
• Any numbers in Roman or Arabic numerals;
• Only common punctuation or diacritical marks.
What is a “special form” drawing? If your mark includes a design or logo, alone or with wording, or if the particular style of lettering or particular color(s) is important, we will need a “special form” drawing. The drawing must depict both the word(s) and the design element combined as one image.The drawing has to be in .jpg format and should have minimal white space surrounding the design of the mark.
Approximately 3 months from the date your application is filed, the application is assigned to
an examining attorney to determine whether federal law permits registration. The examining
attorney will examine the written application, the drawing, and any specimen, to ensure that they satisfy all of the federal legal requirements. The examining attorney may issue a letter (an “Office action”) explaining any reasons for refusing registration or other requirements. We will submit a response to the examining attorney’s letter where we provide the required explanation and clarification.
If you have not yet used the mark but plan to do so in the future, we will file your mark based on a good faith or bona fide intent to use the mark in commerce. A bona fide intent to use the mark is more than an idea and less than market ready. For example, having a business plan, creating sample products, or performing other initial business activities may reflect a bona fide intent to use the mark.
Your registration certificate contains important information on maintaining your federal registration. The registration certificate shows or determines the ownership of a mark, the date first used in commerce, the registration and serial numbers, and the purposes the mark may be used in. The registration certificate may also be used to determine terms not claimed by an owner. If the documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated, making the filing of a brand new application to begin the overall process again necessary. To maintain your trademark registration, we will file your first maintenance document between the 5th and 6th year after the registration date and other maintenance documents thereafter.
Combined Declaration of Continued Use and Application for Renewal must be filed before the end of every 10-year period after the registration date or within the 6-month grace period thereafter. Failure to make these required filings will result in cancellation and/or expiration of the registration. We will file the Combined Declaration of Continued Use and Application for Renewal with the USPTO.
If the information on the Certificate of Registration needs to be amended or corrected due to a change in the owner’s name and/or address, we will request the USPTO to issue an Amended Certificate.
A trademark application is considered "abandoned" when the United States Patent and Trademark Office (USPTO) does not receive one of the following timely filed documents: (1) a response to an examining attorney's office action; or (2) a Statement of Use or Request for Extension of Time to File a Statement of Use (extension request), in response to a Notice of Allowance. Per your request, we may submit a petition to revive an abandoned application and request that the application be returned to active or pending status if the delay in responding to the office action, or the delay in filing a Statement of Use or extension request, was unintentional.
If you have received an Office Action from an examining attorney regarding your application, you must respond within six (6) months of the mailing date of the Office action, or your application will be abandoned. We will respond to an Office Action on your behalf in a timely manner.
A trademark is a name of your brand. It may include any word, name, symbol, device, or any combination. It identifies the source of the goods and services of one owner and distinguishes them from the good and services of another owner. It lets consumer know that good and services come from you and not from someone else. It helps consumers decide what to buy when choosing between similar or related products.
Yes, there is. A trademark identifies the source of goods (like, shoes or laptops) and a service mark identifies the source of services (like, landscaping or accounting).Although "trademarks" are legally different from "service marks", it's OK to informally refer to a service mark as a trademark.
Be sure not to select a trademark that causes a likelihood of confusion with another trademark. Make sure your trademark "distinguishes the source" of your goods and services. A strong trademark will allow you to more easily prevent other parties from using your trademark and it is one that is easier to protect than "weaker" trademarks. A simple way to think about weak and strong trademarks is to picture a gauge that goes from weak to strong, or cold to hot. The hotter the trademark, the stronger it is!
In the United States, parties are not required to register their marks to obtain protectable rights. You can establish “common law” rights in a mark based solely on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides a number of significant advantages over common law rights alone, including:
• A legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods/services listed in the registration (whereas a state registration only provides rights within the borders of that one state, and common law rights exist only for the specific area where the mark is used);
• Public notice of your claim of ownership of the mark;
• Listing in the USPTO’s online databases;
• The ability to record the U.S. registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods;
• The right to use the federal registration symbol “® ”;
• The ability to bring an action concerning the mark in federal court; and
• The use of the U.S. registration as a basis to obtain registration in foreign countries.
Each time you use your mark, it is best to use a designation with it. If registered, use an ® after the mark. If not yet registered, use TM for goods or SM for services, to indicate that you have adopted this as a trademark or service mark, respectively, regardless of whether you have filed an application with the USPTO. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration. However, no specific requirements exist as to the precise use of the “® ” symbol as to placement, e.g., whether used in a subscript or superscript manner. Note: Several foreign countries use “® ” to indicate that a mark is registered in that country. Use of the symbol by the holder of a foreign registration may be proper.