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.
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