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TRADEMARKS: The Secret Property You Didn’t Know You Had

On Behalf of | Jul 27, 2020 | Business Law

The worst thing that you can do as a new entrepreneur is open a business or create a product or service without doing your due diligence for your trademarks and intellectual property. What if someone already has rights to the name that you wish to use or are already using? You risk the possibility of receiving a cease and desist letter in the mail, being sued, and being forced to rebrand your entire business or product. Trademarks are the secret property that most of us don’t know we have.

It is essential entrepreneurs to understand what is at stake and what is involved. The more informed the entrepreneur is, the more they will appreciate how important it is to protect their intellectual property. When you register your trademark with the United States Patent and Trademark Office (USPTO), you have the full rights to your brand. Registering your trademark protects you and your business enterprises from future liabilities that can be extremely costly to you.

By applying for a trademark, you can protect a word, design (logo), symbol, tagline, or a slogan. Trademarks are either word marks or design marks, you are essentially protecting the name or the design.

The Trademark Process: How It Works

So what does the trademark process practically look like? What are the steps to protecting your name, brand, logo, slogan, etc.? To protect your name, brand, logo, slogan, etc., the first thing you want to do is set up a consultation with a specialized attorney to get an understanding of the overall trademark process.

Some firms charge consultation fees to secure the appointment with their attorneys while others don’t. Attorneys often charge a consultation fee to ensure that the client takes the meeting seriously and is not merely looking for free advice.

In the consultation, the attorney may determine off the bat that the client’s desired trademark will not be successful and will advise the client as such. If, however, the attorney believes that it is fine to move forward to the next stage. At our law firm, our trademark attorneys provide a step-by-step overview both in the meeting as well as emailing the client along with a breakdown of costs throughout the process. The attorney-client relationship is commenced by both parties signing the retainer agreement, either provided at the consultation meeting, or sent via email by the office.

Trademark Search

The next stage in the process is to conduct a comprehensive search across all relevant databases to determine if there would be any potential conflicts for the client’s trademark. These databases include but are not limited to federal, individual states, the World Intellectual Property Organization (WIPO), companies, domains, and social media sites. After a comprehensive search, the attorney will analyze the search report for the client. This could be accompanied by an opinion letter that the attorney drafts, for the client’s convenience, summarizing the findings of the search report and advising the client on the best plan of action.

The trademark attorney may find that it is not advisable to pursue the application for trademark registration since there are other companies or individuals that already have registered trademarks that

are too close and could be deemed confusingly similar in the market. Alternatively, the attorney could find that there are no issues and advise the client to move forward with the registration application with the United States Patent and Trademark Office (USPTO).

Trademark Federal Filing

If the attorney clears the mark for application, the attorney will proceed to draft and prepare the federal application for filing. This requires that the client provide all the relevant information needed for the filling process. This includes information like: whether the mark being applied for is a word or logo; if it’s a logo then a description of it; specimens of the mark (showing how the mark is actually being used); a description of those specimens; the usage of the mark and when it was first used in commerce or if there is merely an intent to use since it has not entered commerce yet.

The application is submitted by the attorney to the USPTO and assigned to an examining attorney from the USPTO offices. The examining attorney is the individual that is assigned to the client’s trademark case and is the point of contact for any necessary correspondence with the client’s attorney. The USPTO’s examining attorneys typically take three to six months to respond to the application. They either approve the application for publication or reply with a particular “Office Action” that requires further attention and action from the client’s attorney. This takes place if there are substantive issues that need to be addressed like the “likelihood of confusion” with other existent marks in commerce, for example.

At this juncture, the attorney should respond to the examining attorney by no later than six months. Otherwise, the application will be abandoned. Even if that deadline is missed, for whatever reason, the attorney can still respond but would need to pay an additional fee for a late response.

Trademark Opposition

If there are no Office Actions, then the examining attorney will approve the trademark to be sent to publication in the USPTO’s Official Gazette. Essentially, this is to be used to give any third party who has legal grounds to oppose the application a period of thirty days from the publication date to file a Notice of Opposition to the application. This rarely happens, but if it does, the client’s attorney will be notified by the USPTO. The attorney should notify the client of this and discuss the appropriate steps forward at that point.

If no opposition is filed, which is what occurs in most situations, then the trademark will be registered after the thirty-day publication period. The attorney’s office will receive the official certification of registration in the mail for the trademark, along with instructions from the USPTO on how to maintain the protection of the trademark.

That is an overview of the trademark process and a breakdown of the steps it takes to get your trademark registered federally with the USPTO. It is essential to work with a law firm that knows the process and has experience delivering results for its clients. Don’t hesitate to schedule your strategy consultation to protect your intellectual property. Remember, if it’s law it’s Herbert Machnik Law Firm.