Whether you are a sole proprietor looking to start a business, or a business that has been operating for years, it is important to know how to protect your brand and how to avoid violating the trademark rights of others. Over the years we have blogged about various trademark disputes and what you should know before filing a federal trademark application with the United States Patent and Trademark Office (“USPTO”). This guide to hiring a trademark lawyer to advise you concerning your trademark rights can help build a stronger brand and prevent future disputes with third parties.
What can a trademark lawyer do for you?
The Trademark Registration Process
A trademark is a word, phrase, symbol, or design, or combination thereof, that identifies and distinguishes the source of goods/services. Prior to federal registration, common law trademark rights vest in the geographic area that the particular trademark is used in. In order to be granted both broad and statutory protection for a mark, trademark owners must apply for registration with the USPTO. Application fees range from $225 to $400 per class of goods/services applied for. If the trademark applicant has not used the mark in commerce yet, but has a good faith intention to do so in the future, the applicant should file an intent-to-use application. Once the application has been received by the USPTO, it takes approximately three (3) months before it is assigned to an Examining Attorney. After the Examining Attorney reviews the application, she/he will notify the applicant of any errors or reasons for refusal, by and through what is known as an Office Action. Common reasons for refusal include situations where a mark is deemed merely descriptive or generic, or a likelihood of confusion with a similar registered mark exists. If the Examining Attorney does not issue an Office Action, the application will be published in the USPTO’s Official Gazette, providing the public with a 30-day period in which to file an opposition to registration of the subject mark. If there is no opposition, the USPTO will issue a registration certificate roughly 11 weeks after publication. In total, if there are no issues with the trademark application, it will take approximately nine (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 represent them in trademark matters before the USPTO. Notwithstanding the foregoing, hiring a trademark lawyer is always recommended for assisting applicants before and after the trademark application process has been completed, 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”); and
- Policing and enforcement of trademark rights.
If you are interested in learning more about trademark law, or if you have received a trademark office action or cease and desist letter from a competing brand, please email us at firstname.lastname@example.org, or call us at (212) 246-0900.
The material contained herein is provided from 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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