Thousands of Trademarks Registered and Protected.
Protecting Intellectual Property... Fostering Innovation...
TRADEMARK ATTORNEYS WITH EXPERIENCE.
With more than 15 years of experience registering thousands of trademarks for startup companies and global corporation alike, we have the knowledge, experience and know-how to fully protect your trademark...
Mr. Sivochek, the founder of SIVOCHEK IP LAW CENTER, is licensed to practice law in California and New York, but we are authorized by United States Patent and Trademark Office to file and represent federal trademark applications for clients from all over the Unites States and any other country in the world.
A trademark attorney will work with you directly from the day you submit your order and until you hopefully receive your registration certificate. This involves phone consultations with the attorney whenever necessary and unlimited emails. While we encourage you to primarily communicate with us by email whenever possible because that streamlines the whole process, we will always be happy to schedule a phone consultation whenever necessary.
Once you submit your order, it usually takes us approximately 4 business days to conduct a search, provide an opinion and prepare your trademark application. The actual time needed to prepare your application may vary because we may have more questions about your trademark and so the timeframe will depend on how quickly you can provide the additional information.
If the search reveals obstacles (for example, the same or similar mark is already registered by someone else) and you decide to change the mark, that will obviously cause delays.
Once your trademark application is filed with the U.S. Patent and Trademark Office (“USPTO”), it may take 6-9 months or longer to actually receive your registration certificate. The timeframe for getting a trademark registered may vary significantly because this is a complicated legal process which involves examination by a government lawyer and the examination’s speed depends on whether the USPTO has any questions, how quickly you can respond to those questions and other factors. Most applications also involve publication for opposition (giving a chance to your competition to try to block your registration) which adds time to any estimates.
Depending on your particular situation, you may also need to submit a Statement of Use (proving commercial usage of your trademark) to the USPTO before you can get your registration certificate, which can cause further delays depending on how fast you can provide evidence of commercial usage.
Yes, you can, but you need a U.S. attorney to prepare and file your application and to serve as your legal representative. The U.S. Patent and Trademark Office no longer accepts trademark applications filed by foreign applicants not represented by a U.S. attorney. If you do not have a U.S. address, that is fine as our law firm can serve as your “domestic representative” and correspondence for the trademark application.
The U.S. Patent and Trademark Office utilizes an international classification of goods and services (the so-called “Nice classification”). Under that classification, there are 45 different classes of goods and services, and any particular product will fall within one of those classes. For example, if you are using your trademark on actual clothing items, you probably need to apply for class 25. If you instead operate a boutique or retail store selling clothing that you may need class 35 instead. If you both sale your own branded cloths and operate a boutique, you may need both classes 25 and 35 for best protection, but there is a catch. The Government charges you a separate fee for each class, so this classification system also services as a fee structure of sorts. The more classes you apply for, the higher your government fees will be.
Whether you need to apply in one or more classes is something we will need to discuss with you individually. Our goal is always to give our clients as much protection as possible while minimizing the government fees.
It may seem like a good idea for a company’s owner to own a trademark personally and to register the mark in their personal name. Such a strategy is usually ill-advised, however, and will likely jeopardize the validity of your entire trademark application (and any resulting registration) and may hamper your (and our company’s) ability to enforce the trademark and protect it against infringers in the future.
Trademark laws are very technical and ownership issues may get pretty complicated, especially if there are multiple co-owners or sister companies. Filing your application in the wrong name can undermine your whole effort to protect the mark.
Before filing a trademark application, you should seek advice from an experienced trademark attorney to help you determine the proper owner of trademark and who should be designated as the applicant.
A trademark is a word, expression, logo, design, device, sound, or any combination thereof, which indicates to consumers the source of certain goods or services.
The symbol ® indicates to the public that a mark is formally registered with the U.S. Patent and Trademark Office (“USPTO”). Thus, the symbol ® should be used only in connection with a federally registered trademark.
The TM symbol indicates to the public that you are claiming rights to a certain mark. You may use the TM symbol in connection with any mark, registered or unregistered. However, the TM symbol is typically used with an unregistered trademark.
Use of a trademark symbol (® or TM) with a trademark in not mandatory in the United States, but such use is beneficial. For example, if you are using ® with your trademark and somebody infringers upon that mark, then the fact that you have been using ® with your mark may help you rebut the infringer’s possible defense that his/her infringement was unintentional.
For all practical purposes, a service mark is the same as a trademark with the obvious exception that it is used in connection with services rather than goods. Service marks enjoy the same level of legal protection as trademarks.
The symbol SM is used to claim ownership of a service mark, but the TM symbol can be used for that purpose as well.
Unlike many other countries, a formal registration is not required in order to use a trademark within the United States. As soon as you start using your trademark in commerce in connection with your product or service, your mark acquires protection in its geographic area of use. Such an unregistered trademark is referred to as a “common law” trademark.
That being said, obtaining a federal trademark registration provides the mark’s owner with a significantly enhanced level of legal protection, compared to a common law mark. Nationwide protection, the ability to file priority applications in foreign countries, access to federal courts, and the ability to record registered trademarks with the U.S. Customs and Border Protection Agency are just a few examples of a federal registration’s benefits.
Before you start using a new trademark in connection with your goods or services, it is very important to ensure that the mark is legally available, meaning no one else has prior rights to the same (or confusingly similar) trademark. The process of ensuring that a trademark is legally available for use and registration is called “trademark clearance”.
Using a trademark that was not properly cleared is dangerous and may result in serious legal ramifications, significant financial loses and other problems.
Trademark clearance is both an art and a science, and it should be conducted by experienced trademark professionals. Just because you conduced a Google search (or even your own search in the USPTO records) and found nothing relevant, does not necessarily mean your mark is safe to adopt. There are many examples of entrepreneurs who suffered significant financial losses simply because they did not perform a proper trademark clearance.
Each trademark should be properly cleared (which means going through both clearance stages referenced above). In real life, however, some companies occasionally may decide to proceed straight to using their trademark in commerce. Or they may file a trademark application based on the preliminary search results alone, or without any searching at all. We always warn our clients about the risks associated with this approach. But ultimately, this is your responsibility to make that business decision, based on your business considerations, your current budget and other factors specific to you.
A proper analysis of a trademark’s availability for use and registration requires a lot of specialized legal knowledge, expertise, and understanding of various legal research methods and techniques. If you conducted your own research and found no clear obstacles to your proposed trademark that is good news but not enough.
We cannot tell you how many times we have had clients who, after conducting their own research, had complete confidence in a trademark which ultimately turned out to be too risky to use or outright infringing upon someone else’s registered mark.
Conversely, we have also seen a fair share of clients who for some reason thought their chosen their mark was not available for registration and asked us to research their mark “just in case,” only to receive the unexpectedly goods news confirming that their mark was actually a great candidate for registration.
The bottom line is that you should not draw any final conclusions regarding your mark’s registration chances before you have seen an experienced trademark lawyer’s search report and opinion.
The time to register a trademark with the U.S. Patent and Trademark Office (“USPTO”) depends on many factors and may vary significantly. In the best case scenario, it may take you around 6-8 months to receive a certificate of registration. However, it is routine for the USPTO to issue Office Actions, which require response and cause delays. There may be other delays during the process, such as oppositions filed by third parties.
The good thing is that you do not have to wait until the registration issues, you may start using the mark while the application is pending. In fact, assuming you cleared your mark properly, it is usually a good idea to start using the mark as soon as possible.
First, an application is filed with the U.S. Patent and Trademark Office (“USPTO”). The USPTO then assigns the application to an examiner, who will review the application for compliance with certain requirements. The examiner will also search in the USPTO’s records to make sure the trademark is available for registration. If the examiner finds any irregularities or problems with the application, an Office Action will issue.
If the event an Office Action issues, the mark’s owner will have six months to submit a proper response. If no response is filed, the application will be abandoned. If a response is filed, but the examiner is not satisfied, a refusal to register the mark will ultimately issue. That refusal can be appealed.
If the response is filed timely, and the examiner is satisfied with that response, the application will proceed further and will be published for opposition.
Each mark is published for publication in the USPTO’s publication called Official Gazette, giving any interested parties 30 days to file an opposition against the mark. If an opposition is filed, the case will go to the Trademark Trial and Appeal Board (“TTAB”) for adjudication. The TTAB is a neutral court-like body which handles trademark matters at the USPTO.
If a trademark passes the opposition stage successfully, there are two main scenarios of further development:
1. If the mark was filed based on the owner’s actual use of the mark in commerce (1A application), the mark will proceed straight to registration at this point;
2. If the mark was filed based on the owner’s intent to use the mark in commerce (1B application), then the USPTO will issue a Notice of Allowance, giving the owner six months to file a Statement of Use, proving that the mark is already being used in commerce. That 6-month deadline can be significantly extended, if necessary.
Once a satisfactory Statement of Use has been filed with the USPTO, the mark will be registered.
Nothing lasts forever, philosophically speaking. Once you get your registration certificate, you will need to file periodic renewal paperwork with the U.S. Patent and Trademark Office to keep your registration alive. But assuming you continue renewing your trademark registration periodically, it can potentially last indefinitely. There are some trademarks out there that were registered back in the 19th century and are still alive and fully protected.
Decades of experience protecting trademarks worldwide... Thousands of U.S. Federal trademarks registered... Trusted by startups and global corporations alike*...
Before adopting a trademark, one must ensure that the mark is legally available and that no one claims earlier rights to the same (or confusingly similar) mark. The process of trademark clearance is intended to determine whether there are any such earlier rights and if the mark is safe to adopt and use. The importance of a trademark clearance search cannot be emphasized enough. Do not take the risk of using a trademark that was not properly cleared. Hire a qualified trademark attorney to do the search for you.
Trademarks are territorial in nature. The same mark can be owned by different companies depending on the country. Which is why international companies often proceed with registration in multiple jurisdictions as soon as a new trademark is conceived, even if they are not yet using the new mark in all of the countries. Properly orchestrating an international filing campaign and managing the portfolio requires an experienced trademark attorney with a specific skill set. Trust your portfolio to professionals.
Purchasing a trademark portfolio can be a great investment. Before closing the deal, however, it is absolutely essential to investigate each trademark's validity, as well ownership chain and other criteria. We offer many years of experience conducting Intellectual Property Due Diligence for Fortune 500 corporations, start-up companies and individual investors.
Are you in the process of acquiring an Intellectual Property portfolio? Contact us.
In the U.S., trademark rights derive from using a mark in commerce. If a trademark was not yet used in commerce at the time its owner filed an application with the U.S. Patent and Trademark Office (USPTO), then a Statement of Use will have to be filed with the USPTO once the owner starts using the mark in "interstate commerce."
The rules concerning the Statement of Use and use in interstate commerce are somewhat complex, and there can be quite a few stumbling blocks in the process of proving use to the USPTO. At the same time, providing false or inaccurate information to the USPTO can jeopardize the validity of a trademark application or resulting registration. We can identify and preempt problems related to the Statement of Use so that your trademark rights are duly protected.
Avoid pitfalls and let professionals file your Statement of Use.
The U.S. Patent and Trademark Office (USPTO) examines each new trademark application. When the USPTO has any questions or concerns, it will issue an Office Action. There are many potential issues that can be raised in an Office Action, and, in the worst case scenario, the Trademark Office will issue a substantive refusal, denying registration.
There are several legal grounds that the USPTO can use to refuse registration (such as descriptiveness, likelihood of confusion, scandalous matter, etc.), but the applicant will get a chance to submit a response. If the response properly resolves the USPTO's concerns, the refusal will be withdrawn.
Federal trademark registration must be renewed in 10-year increments in order to remain active. There is also an additional one-time maintenance requirement (Declaration of Use) between the 5th and 6th year of registration. Failure to maintain or renew a registration will result in its cancellation.
Whether you received a Notice of Opposition from a third party or wish to oppose somebody's trademark application, we can help. Similarly, we handle cancellation proceedings before the Trademark Trial and Appeal Board and can handle cancellations worldwide through our network of trusted foreign associates.
Cease and Desist letters, litigation, enforcement in the United States and foreign countries, defense against importation of infringing products, enforcement with Customs and Border protection agencies worldwide... We are a full-spectrum trademark protection law firm.
We offer many years of experience and a unique skill set that allows us to aggressively and effectively pursue trademark infringement on the Internet. Whether you need help with stopping infringement on social media, online marketplaces or elsewhere, we are here to assist you.
In serving our clients worldwide, we utilize our own software tools and algorithms that uniquely position our law firm at the forefront of cyberspace enforcement. We are a law firm armed with technology.
Do you need help protecting your trademarks on the Internet?
Protecting Intellectual Property. Fostering Innovation.
With many years of experience registering and protecting trademarks, Sivochek IP Law Center strives to give its clients the maximum protection for their trademarks. Let us use our skills, knowledge and experience to protect your valuable trademark, so that you can focus on making your business even more successful.
Protect your work against infringement by obtaining a copyright registration. We have extensive experience registering all kinds of original works of authorship, from paintings to photos to music to software. A copyright registration provides signification protection and benefits.
We provide a full range of trademark protection and enforcement services, including online enforcement, oppositions and cancellation proceedings, UDRP complaints and trademark litigation.
* Getting a federal trademark registration is a very technical and lengthy legal process and involves many steps before you can hope to receive your registration from the U.S. Patent and Trademark Office. Once you submit your order, an attorney will advise you about the steps and requirements and will guide you, as needed. A trademark search may also have to be conducted to better understand your mark's chances of getting registered. And just like any legal process, the results of a trademark application depend on many variables and cannot be promised or guaranteed.
The flat-fee packages advertised on this website do not cover any substantive refusals (likelihood of confusion, descriptiveness, etc.), appeals, oppositions, TTAB proceedings or any adverse actions by private parties. Any such services will involve additional legal fees...
Each attorney consultation is limited to 30 minutes. If a consultation lasts less than 30 minutes, the consultation is still considered fully used.
Any time-frames mentioned on this website are estimates only. Actual time-frames may differ depending on multiple factors, such as your availability to discuss your case, how fast a particular trademark can be researched and analyzed, etc.
In addition to the legal fees advertised on this website, you will also need to pay the USPTO's filing fees when appropriate. The USPTO's fees to file a new trademark application are either $225 or $275 per class of goods, depending on complexity of your goods description. Your attorney will advise you regarding the proper filing fees after reviewing your case. There may be additional filing fees until registration (for filing Statements of Use, Extension Requests, etc). Your attorney will discuss all the applicable fees with you as appropriate.