Trademark Process

There are several important steps for filing a trademark. These include:

• Identifying a trademark
• Conducting a trademark search
• Reviewing trademark search results
• Completing and filing a trademark application
• Trademark prosecution (review by the USPTO & responding to office actions)
• Publication of your trademark application
• Trademark opposition
• Trademark registration
• Foreign trademark applications

Identifying a trademark

It is likely that you have chosen a trademark or logo that your company would like to use. Before filing a trademark application, it is recommended to research your mark. It is possible to identify similar marks that might block the registration of your trademark application. It is better to find out before filing a trademark application, to avoid the added expense of registering, abandonding, or refiling your trademark.

Conducting a trademark search

Our firm has experience conducting trademark searches. We recommend conducting a limited federal trademark search, which will identify registered trademarks that might block your trademark application. We additionally can perform state and common law trademark searches. Our firm charges $350 for an electronic version of a trademark search. Our firm's trademark searches include review & discussion with a trademark attorney. A trademark search allows you to discover potentially similar trademarks, and help better position your trademark application. Other firms and companies provide free trademark searches. While that may be attractive, it is likely that they will either provide a poor quality free trademark search, or will overcharge you for later services.

Reviewing trademark search results

After our attorneys review your trademark search, we can discuss proceeding with your application. We will also give you advice on your mark. We can identify problems that may arise with your trademark application. Along with your trademark search results, we can identify possible common blocks to your application, such as similar marks, and whether your mark is merely descriptive (such as "Joe's Ten Minute Oil Change"). We can help you identify these possible problems and recommend changes. Filing a trademark application provides you with a filing priority date, which will help determine the date your trademark was in use (an important factor in trademark rights). Review and consultation with a trademark attorney is included with our firm's $300 trademark search.

Completing and filing a trademark application

After finalizing your trademark, we can assist you with completing a trademark application. This includes identifying the goods and/or services you would like your trademark to cover, identifying the applicant (yourself or a corporation), and identifying your filing basis. Once your trademark application is filed, we will keep track of all reminder dates for keeping your trademark application current. Our firm charges $500 (plus USPTO filing fee of $325) to prepare and file a basic trademark application. This includes a consultation with a trademark attorney. We provide a brief telephone consultation free of charge. To schedule a consultation, please contact us online, or call us at 310-277-0444. In office consultations, and in depth telephone consultations, are available for a $80 consultation fee.

Trademark prosecution (review by the USPTO & responding to office actions)

Once a trademark application is filed, trademark prosecution by the United States Patent and Trademark Office (USPTO) begins. They will initially review your application to make sure it is complete. Within six months of filing your trademark application, you should receive an Official Action, commonly known as an office action. An office action is a request to address concerns that the USPTO has with a trademark application. Many of these concerns take the form of "rejections." These rejections must be addressed and overcome with legal arguments to allow a trademark application to be approved.

Our firm has practice prosecuting numerous trademark applications, and drafting responses to office actions from the USPTO. We can provide many arguments that are not immediately obvious, and can work with you to address the issues raised by the USPTO. To prepare and file a basic trademark response to an office action from the USPTO, our firm charges $400. More complicated office actions require additional work, and the cost of such a repsonse can be determined after a free consultation with a trademark attorney. Responses to trademark office actions drafted by our firm are prepared by experienced trademark attorneys. More complicated office action responses can cost around $1500, however these costs well be known before proceeding with such a response.

Publication of your trademark application

Once you have addressed the concerns raised by the USPTO regarding your trademark application, it is then approved for publication. The USPTO then publishes your trademark application in the Official Gazette. This allows the general public to view your trademark application prior to approval. If any other trademark owners have concerns, they can initiate a trademark opposition proceeding.

Trademark opposition

A trademark opposition occurs when a trademark holder believes that a published trademark application infringes upon their registered trademark. A trademark opposition proceeding is operated much like a trial, and rules of evidence and levels of proof are important. We have experience with trademark oppositions, and can reach an amical resolution through mutual consent agreements, or defend your trademark application to the fullest.

Trademark registration

Once the opposition period has ended, your trademark application is approved for registration. With the payment of requisit government fees, you are granted a registered trademark. Maintenance fees and statements of use are required on a periodic basis. Our firm will keep track of these dates, and ensure that you keep your registered trademark. We will also provide you with reports about your trademark rights. Our firm can additionally monitor your trademark, and protect your trademark from potential infringers.

Foreign trademark applications

Once you have filed a trademark application with the USPTO, you can file trademark applications worldwide. If you wish to file trademark applications aboad, this must be done within six months of your trademark application in the United States. You can claim the filing date of your United States trademark application as a priority date for foreign trademark applications, including foreign trademark applications made through the Paris Convention or the Madrid Protocol (both which protect your trademark rights).We provide a brief telephone consultation free of charge.

To schedule a consultation, please contact us online, or call us at 310-277-0444. In office consultations, and in depth telephone consultations, are available for a $80 consultation fee.

InventionPatent.Net- An intellectual property information resource for patents, trademarks, and copyrights, written and edited by Owen Smigelski, Esq.

As in-house counsel, I cannot provide legal advice or information to individual clients.
I recommend consulting with:
Raymond Wagenknecht
Biotech Beach Law Group PC
Toll Free: 886-875-9562
Tel: 619-238-1179
www.biotechbeachlaw.com