Trademark Registration 2019-02-19T11:14:42+00:00

Trademark Registration

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Creating and developing a business requires a lot of time and effort and a registered trademark is an invaluable asset and tool that you need to take into consideration in protecting your brand and expanding your business.

The process of registering a trademark is very simple and includes:

  • A comprehensive searchof the federal database
  • Reviewing your application and filing it with the USPTO
  • The help of an attorney to get you through the process for a period of 30 days*

How does all this work?

You fill-in our questionnaire

We require you to fill-in a very simple questionnaire that we have designed to obtain the most relevant information about your business in no more than 15 minutes.

You provide an image of your trademark (name or logo)

In the situation where the trademark you are registering is a name or a logo, you will need to include a sample in the application. If you are already using your trademark in commercial activity, you will also need to provide proof of use such as photos of your products, instruction manuals, packages, snapshot of webpage etc. bearing the trademark you wish to register.

We’ll start the trademark search process

We offer a basic federal direct-hit search or a Comprehensive Trademark Search which casts a much wider net by searching to reveal potential conflicts beyond those that are simply identical. We’ll conduct the trademark search and provide a list enabling you to discover potential conflicts. If you believe a conflict exists, you’ll be able to modify your application, proceed as planned, or cancel your application before filing (fee for trademark searches will not be refunded).

Filing in your trademark application

All you have to do is answer a few questions and your application for trademark registration will be created automatically with the help of our specialized, easy to use, step-by-step software. The completed application will be sent to you by email for electronic signature.

Submitting in the application with the USPTO

The next step after signing the application is submitting it together with the supporting materials with the U.S. Patent and Trademark Office (USPTO). We will do this for you. Your application will then receive a serial number and you will be sent an email confirming the receiving of your application.

USPTO application review

After your application is received, it is reviewed by the USPTO which will decide if it is approved or not.

What can you register a trademark for?

Things that are eligible for registration as a trademark:

  • Names, either we are talking about the name of a company, the name of a product line, or a sub-entity that has direct connections with marketing and sales activities that involve your products or services.
  • Company logo or another design or symbol that you are using in developing brand recognition.
  • Company slogan or another phrase that you are using as a brand to identify and promote your products or services.

Things that are not eligible to register a trademark for:

  • Ideas can be protected only in the form of an invention or a patent.
  • Creative Works (movies, songs, books, etc.) can be protected only by copyright, not by trademarks.
  • Software can also be protected by copyright, while you can protect the name or the logo of a specific software as a trademark.

Why work with us?

  • In submitting successful trademarks application, we have the experience of the top 40 law firms combined
  • You benefit from lifetime customer support
  • We offer 100% satisfactionguarantee
  • You will be using a specialized online process crafted by experienced attorneys
  • 100% transparency. No surprise pricing. What you see is what you get.
  • We are upfront and reliable, and that is why 90% of our customers recommend us to friends and family
  • Documents submitted by our company have among the highest rates of acceptance by courts and government agencies in all 50 states.

Let us help you with your Trademark Registration application

You need a federally registered trademark, so you can protect your brand nationwide. Registering your trademark gives you legal presumption of ownership and exclusive right to use your name, logo or slogan nationwide and to use the symbol announcing your ownership for the trademark.

A registered trademark also offers you the legal base to bring action against infringers using the same trademark or a similar one while creating confusion in the mind of consumers and taking advantage of the notoriety of your brand.

Registering a trademark is extremely easy when you are working with professionals. We can help you step-by-step. Start protecting your brand today.

Trademark Registration

Use the trademark as much as you can. In the U.S. you earn certain rights and protection without having to register a trademark.

Using the trademark without federal trademark registration gives you common law rights with the level of protection depending on the jurisdiction involved. Remedies are in this case determined from interpretation of relevant case law(s).

One of the limitations of trademark protection under common law rights is the geographical coverage. Under the common law rights, your trademark rights may only cover the geographic area in which you are using the trademark.

In this case, problems may occur when your territory overlaps with the territory of another common law owner, with a similar trademark on similar products or services. Generally, the period of time for which every owner has used the trademark is taken into consideration and the owner first to use the trademark in the contested market, wins. But for each case facts and circumstances are examined and exception may occur.

Unlike the common law rights, federal trademark registration establishes nationwide protection to registered trademarks independent of the area or areas where they are being used.

You make sure your future opportunities of expanding nationwide are safe.
You can use the registration notice “®” which implicitly notifies others of your trademark rights.
Application and registration alerts other companies that might want to use the trademark that it is already in use.
It provides you access to federal courts and includes the possibility of greater recovery of damages for infringement.
Gives you the possibility to deposit a copy of the registration certificate with U.S. Customs in order to protect yourself from importation of goods that utilize infringing marks.

You can use the ™ without any formal filling to inform the public that you are claiming trademark rights. You can use the ® symbol only if the trademark is federally registered.

The act providing for a federal registration system and establishing remedies for trademark infringement is The Lanham Act, first introduced as a bill in 1945, by Congressman Fritz Lanham, and passed by Congress on July 5, 1946.

You are eligible to obtain federal trademark registration in the conditions of using the trademark in interstate commerce in direct association with a product or service. If you are using a trademark only in advertising, it does not generally constitute use for reason of obtaining federal trademark registration, unless if falls under the service exception.

The definition provided by the Lanham Act for “commerce” is “any commerce lawfully regulated by Congress”. “Use in commerce” is defined by Lanham as the bona fide use of a mark in the ordinary course of trade, generally comprising interstate commerce or between the U.S. and a foreign country.

In this situation you have the common law rights and you can also choose to obtain a state trademark registration. State trademark registration is quick and cheap and functions as a public record, alerting others to your common law rights within that state and can also provide certain statutory rights. If you think you will need to use your trademark in interstate commerce, the next step should be consulting your trademark attorney and filing a federal trademark application based on intent to use.

Every country has its own trademark laws, and trademark rights do not extend from one country to another. There are over 200 countries with individual trademark laws and while many of the basic concepts found in U.S. trademark law hold true in some of the other countries, there are many differences that make consulting an attorney necessary when dealing with international trademark situations.

The main criterion used by the courts and the Trademark Office to avoid confusion between trademarks is the relationship between the goods/services for which the trademarks are used. Meaning that a trademark similar to another might be accepted for registration if the goods or services are different enough. There are only a few exceptions representing famous brands that have monopoly over every used of the mark.

It means that your trademark should be unique enough to distinguish your goods or services from the goods and services of another owner.

FEDERAL TRADEMARK REGISTRATION

You can file one of two types of trademark applications:

Use-based
Intent to Use (ITU)

The condition for obtaining a federal trademark registration is to file for a trademark that you are already using in commerce, in direct association with your products or services. You need to file a use-based application when the trademark has been used in commerce prior to the time when you are first considering to file an application.

When you are filing for a trademark that has not been used in commerce, you need to file an ITU application on the basis of good faith intent (bona fide intention) to use the mark in commerce. In this case, the use of the mark in commerce is required before issuing the registration.

This expression means that the declared intention to use a mark in commerce is in good faith, meaning without deceit, and not merely to reserve a mark.

Once filed for registration, an ITU application constitutes constructive use of the trademark chosen for registration, which gives you a nationwide right priority on the trademark you have applied for, until you can prove use.

The right of priority has effect only on parties who subsequently start using the mark on similar goods or services and only on subsequently filed applications.

The application fee depends on the form used in the Trademark Office and it ranges from $275 to $375 per international class. ITU applications involve additional fees as the registration progresses.

Goods and service are placed by the U.S. Patent and Trademark Office into the International Classification System.

The International Classification System has currently 45 classes and it is being used by most countries to categorize trademarks and as a guideline for filing trademark applications, searching trademarks and maintaining records.

Because it is rarely better to wait until the actual use of the trademark, the ITU application is preferred most of the time.

You must confirm proof of use in no more than 36 months from Notice of Allowance date.

The Notice of Allowance is issued once your Intent-of-Use application passes the initial examination and is published for opposition. It also establishes due dates representing six-month increments from the mailing date of the Notice of Allowance, within which you must file either a Statement of Use or an Extension of Time.

You can request up to five additional six-month extensions after the initial six-month filing period for the Statement of Use. In order to obtain an extension you are required a bona fide intention to use the mark and you have to pay a fee of $150 per class.

A Statement of Use can only be filed after the Notice of Allowance has been issued or within a given six-month extension. It can’t exceed 36 months from the date the Notice of Allowance has been issued. It is the document that provides you with the opportunity to prove use of the mark in commerce on all or some of the goods or services and it costs $100 per class.

Use-based and ITU applications are being examined after submission, for technical and substantive problems, by attorneys and paralegals at the Trademark Office evaluating elements like potential conflicts on the register, trademarks that are merely descriptive and the accuracy of the description and classification of goods.

After your application is examined you will receive form the Trademark Office either a Notice of Publication, if no issues are found, or an Office Action stating the concerns of the examining attorney, if there are issues with your application.

You need to send your reply to the examining attorney in no later than six months from the mailing date of the Office Action. If your response is satisfactory the application will be published for opposition.

If you fail to respond on time, you will lose the application. In the case of an unsatisfactory response, further Office Actions can be issued. If a satisfactory response to an issue fails to be achieved, your application may be finally rejected.

You application will be published in printed materials such as the Official Gazette which informs the public of applications for trademark registration with the United States Patent and Trademark Office (USPTO). This offers third parties the opportunity to file a notice of opposition or request an extension time to file the opposition and stop registration of a published trademark. The opposition notice or extension request must be filed within a 30-day deadline beyond the publication date.

The party challenging your application will usually obtain an extension of time to oppose the published trademark which generally finishes by reaching an amicable settlement. If settlement is not possible, your case will go before the Trademark Trial and Appeal Board of the U.S. Trademark Office.

For use-based applications this is the final step and the certificate of registration will be issued shortly. For ITU applications, the next step is the Notice of Allowance and once the Statement of Use has been submitted and accepted, the certificate of registration will be also issued.

You will change your trademark notice from ™ to ®.

In order to maintain registration of your trademark you need to inform the U.S. Trademark Office periodically of its continued use, by filing a Section 8 Affidavit and renewal filings.

By filing a Section 8 Affidavit of Use you affirm that the registered trademark is still being used in commerce in connection with all or some of the goods and services mentioned in the initial registration.

You need to file a one-time Section 8 Affidavit:

after the five-year mark and before the sixth anniversary, after the issuance of the registration
another Section 8 Affidavit in ten years from the initial registration date
after that, you will have to file a Section 8 Affidavit all subsequent ten-year periods while you still want the trademark registered.
You can file the affidavit at any time after the nine-year mark of each ten-year increment.

The affidavit must be accompanied by an example of the trademark and a filing fee of $100 per class. If you need an extension, you can request a 6-month grace period over the six-year and ten-year deadlines, but you need to pay an additional cost of $100 per class.

If you fail to file the Section 8 Affidavit the federal registration of your trademark will be cancelled.

Section 9 is a request for renewal that you need to file every ten years from the registration date along with the Section 8 Affidavit and for which you pay a fee of $400 per class. You can also request a six-month grace period over the ten-year deadline at an additional cost of $100 per class. If you fail to file the Section 9 renewal, the federal registration of your trademark will be cancelled.

The combined fee for filing both Section 8 & 9 renewal is currently $500 per class.

These are the only documents that you are required to file. If you want to make your registration incontestable and immune to challenges, you can choose to file a Section 15 Affidavit, at any time after your mark has been used continuously for a five-year period. The fee for filing a Section 15 Affidavit is currently $200 per class.

Periodical affidavits and renewals makes it possible to eliminate trademarks that are no longer in use. From the Trademark Office database.

You can sell your trademark through an assignment which grants the buyer all rights to the trademark, including the good will associated with it. If you want to exclusively or non-exclusively rent your trademark to others, you can do that through a license.

A trademark assignment needs to be recorded in the Trademark Office if the assignment involves applications or registrations, in order to avoid complications associated with subsequent filings. In order to maintain the federal registration, the disruption in the chain of title needs to be explained and recorded. The fee is $40 for the first trademark record, and $25 for each additional trademark record.

If you choose to rent your trademark there is no need for record because it does not affect the ownership of the trademark.

Any actions that change the status of the owner such as name changes, merger or changes in the state of incorporation need to be recorded.