Whether you are looking to start a business or have been operating a business for years, it is important to know how to protect your brand. A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods/services. Over the past few years, there have been various notable trademark cases and changes to the federal trademark application procedures implemented by the United States Patent and Trademark Office (“USPTO”). Because trademark law is constantly evolving, it is highly recommended that mark owners hire an experienced trademark lawyer. Hiring a lawyer for guidance concerning your trademark rights can help you build a stronger brand and prevent future disputes with other mark owners.
What Can a Trademark Lawyer Do for You?
Trademark Application: To get broad statutory protection for a trademark, the owner must apply for registration with the USPTO. Without federal registration, common law trademark rights vest in the geographic area that a particular trademark is used. In contrast, even if a mark has not been used in commerce, an applicant can apply for registration on an intent-to-use basis if he/she/it has a good faith intention to do so.
Trademark Registration Fees and Timeline: Trademark application fees range from $225 to $400 per class of goods/services applied for. Once the USPTO receives the application, it takes approximately 3 months before it is assigned to an Examining Attorney. After the Examining Attorney reviews the application, she/he may issue an Office Action, notifying the applicant of any errors or reasons for refusal of registration. A mark is commonly refused if it is deemed merely descriptive or generic, or there is a likelihood of confusion with a similar registered mark.
If there is no Office Action, the application will be published in the USPTO’s Official Gazette. From the publication date, the public has 30 days to file an opposition to registration of the subject mark. If there is no opposition, the USPTO will register the mark roughly 11 weeks after publication. In total, if there are no issues with the trademark application, it will take approximately 9 months for the mark to proceed to registration.
Employing a Trademark Lawyer
Applicants located in the United States are not required to hire a trademark lawyer to assist them with the application process. However, foreign-based applicants are required to have a licensed United States attorney prepared and file their applications. Notwithstanding the foregoing, hiring a trademark lawyer is always recommended for assisting applicants throughout the trademark application process, specifically in the following areas:
- Providing a comprehensive search for existing common law, state, and federal trademarks that may bar registration on a likelihood of confusion basis;
- Identification of the correct class of goods/services, accompanied by a valid specimen showing use of the mark in commerce;
- Preparing and filing the trademark application;
- Responding to any Office Actions;
- In the event that an opposition is filed, representation before the Trademark Trial and Appeal Board (“TTAB”);
- Responding to any Cancellation Proceedings; and
- Policing and enforcement of trademark rights.
If you are interested in learning more about this topic or require assistance in connection with registering a trademark, responding to a trademark Office Action, and/or replying to a cease and desist letter from a competing brand, please e-mail us at: info@kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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This blog post was originally published on February 10, 2020 and updated on January 24, 2022.
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