A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services. Although federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant's claim of ownership of the mark, legal presumption of ownership nationwide, and exclusive right to use the mark on or in connection with the goods/services listed in the registration.
While having a trademark attorney is not required, the cost of having an intellectual property attorney ensure that your trademark is truly protective is usually insignificant in comparison to the time and capital invested in developing your product or service.
There are several steps that that must be accomplished in order to obtain trademark protection. Not every trademark procurement follows the exact same path. However, this will give you a good overview of the process that we will pursuing to help you obtain your trademark.
We help you determine whether you need trademark, patent, or copyright protection. If you are going to be investing a large amount of money into marketing your product or service, trademark protection provides a rock solid means of preventing others from capitalizing on your investment.
Identify your mark format. While the number and variety of trademarks issued is enormous, most fall into one of three overall categories: a standard character mark, a stylized/design mark, or a sound mark.
Identify clearly the precise goods and/or services to which the mark will apply. This is essential. Without clear identification to a product or service, your trademark will be literally worthless.
We will search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration.
Together we identify the proper "basis" for filing a trademark application. A trademark application must specify the proper "basis" for filing, most likely either a current use of the mark in commerce or on an intent to use the mark in commerce in the future. Understanding the distinction between these filing bases, and the implications of selecting one, are important considerations before starting the application process.
Next, we will file the application online through the Trademark Electronic Application System. Hettinger & Hettinger, P.C. has extensive experience with online administrative law filings.
The USPTO will review your application. After the USPTO determines that you have met the minimum filing requirements, an application serial number will be assigned and the application will be forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees are not refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter to us (known as an Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact us by telephone or e-mail. If the examining attorney sends an Office action, we will respond to the Office action. While this must be done within six months of the mailing date of the Office action in order to avoid having the application declared abandoned, we will normally respond in a much shorter time.
If the examining attorney raises no objections to registration, or after we overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send us a notice of publication stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before a hearing board within the USPTO. If no opposition is filed or if the opposition is unsuccessful, we enter the next stage of the registration process via a notice of allowance.
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet.
Within six months from the date of the notice of allowance you must either use the mark in commerce and we will submit a statement of use for you or, if necessary, we may request a six-month extension of time to file a statement of use.