Trademark Attorneys Committed to Personal Service in New York, Westchester County and Connecticut
Filing for Trademark Protection: The Basics
At Trademark Law Esq., our lawyers bring decades of experience to individuals and businesses internationally and across the United States, while also servicing clients in Westchester County, Fairfield County, and the surrounding communities in New York and Connecticut. We handle a wide range of intellectual property matters, including trademark registration and litigation, licensing agreements, domain name disputes, and copyright issues.
We are committed to treating every client as if he or she are our only client, dedicating our full resources and attention to the details of your case. When you have questions, we will provide prompt answers that are both thorough and thoughtful.
To arrange a meeting, send us an e-mail or call us at 914-381-2728.
Filing a Trademark Application
At this stage of the process, you will have selected a trademark for your product or service, conducted a preliminary search as well as a full search for the proposed Mark, and have received an Opinion Letter advising you that the trademark is clear for filing. Although the application preparation is relatively brief and the application is not lengthy, the information you provide on the application is critical to the success of the prosecution and will impact the time it will take to receive a certificate of registration.
Before filing your application, we will have discussed with you the type of prosecution we anticipate in terms of the likelihood of success, the time it may take for a certificate of registration to issue, the costs and fees involved in the transaction, and the evidence or materials we will need to file with the United States Patent and Trademark Office.
You will need to provide our firm with certain information about your trademark. Who or what entity will be claiming ownership of the Mark. The owner of the trademark is the person or entity that controls the nature and quality of the goods identified by the Mark and/or the services rendered in connection with the trademark. The owner may be an individual, corporation, partnership, or other type of legal entity. We will also need to know whether the application will be standard character or special form. In other words, is there a design element to the Mark? Will you be claiming that a particular font, style or size of lettering, or color is a special feature of the trademark? A specific list of goods/services will need to be included in the application as well.
We must then determine the basis for filing your Trademark Application. We will assist you in determining whether you qualify for filing on the basis of Use in Commerce or whether an Intent-to-Use Application is appropriate. If the applicant is based outside the U.S. it may be appropriate to file based on either a registration issued in the home country or an application filed in the home country. Regardless of the filing basis of your trademark application, there will be a full investigation by a Trademark Examiner at the United States Patent and Trademark Office. The Examiner will conduct a search of active federal applications and registrations. If there is a prior application or registration that is confusingly similar to your proposed Mark, your application may be refused. However, since we were diligent and conducted prior searches before filing the application, your application should not be refused on this basis, unless an application confusingly similar to your proposed Mark was filed SINCE the time we conducted our prior searches. Nevertheless, likelihood of confusion is just one ground for refusal of a trademark. There are many different reasons why an Examiner may refuse your application, but allowing our firm to assist you in this process significantly decreases the likelihood of refusal of your trademark application.
In spite of all efforts to avoid such problems, there are times when an Examiner might find some issue with your application. If that happens a written letter known as an "Office Action" is issued wherein the Examiner will detail the nature of the issue he has with the application. An applicant has six months to respond to an Office Action. If no response is filed, the application will be automatically abandoned. On your behalf, we will respond to the Office Action and deal with the cited concerns. Once the Examiner finds that the issues are resolved, he will approve the application for publication in the Official Gazette of the United States Patent and Trademark Office. In approximately two months subsequent to being approved by the Examiner, the application will be published for opposition. This allows third parties who believe they will be damaged by registration of your Mark, to oppose the registration by filing a Notice of Opposition or a Request for an Extension of Time to Oppose within thirty days of the publication of the trademark in the Official Gazette. An opposition is similar to a lawsuit, but conducted primarily through written documents. We will advise you accordingly should this occur during the prosecution of your trademark. If no opposition or Request for Extension of Time is filed within the time specified by law, then the trademark will be registered if the application was based on actual use in commerce.
If the application was filed on an Intent-to-Use basis, then a Notice of Allowance will issue. This is a notice issued by the USPTO informing an applicant that their Intent to Use Application has been approved pending filing and acceptance of a Statement of Use with evidence of use within six months of the issuance of the Notice of Allowance. If you will not commence use within this period of time, we will file a Request for an Extension of Time to File a Statement of Use on your behalf. An extension, if granted, will be for an additional six month period. A total of five extensions can be requested. Once a Statement of Use is filed and approved by the Examiner, the applicant will be issued a Certificate of Registration.
Contact the Attorneys at Trademark Law Esq.
Send us an e-mail or call us at 914-381-2728 to schedule an appointment. We work with clients in New York, Connecticut and across the nation.
