Trademark Lawyer for your US Trademark Application

CA Trademark Lawyer to Prepare your Trademark Application

An established brand is one of the most valuable assets of your business. It is estimated that 90% of the value of the Coca-Cola company is in the trademark, and 80% of the Microsoft value is in the trademark. Much of that goodwill consists of people who buy products by these companies automatically, because of the trust in the brand. Brands are protected by Trademark Law in the US and abroad. Marks are best protected by a trademark attorney, who has the experience to navigate the pitfalls of trademark prosecution.

If you are interested in protecting your brand, you will first need to know how likely your mark is to become a Registered US Trademark, at which point you will be able to fully enforce the mark against copycats. You should consider a search, to see which similar trademarks are in the same marketplace, selling the same or similar goods and services. If a mark is too similar and in a similar market, it may be rejected as having a likelihood of confusion. Not only the registered marks should be searched, but applications as well, and common-law (unregistered) trademarks that are in use but not registered. The mark should not be generic of the product or service, nor a surname. A descriptive trademark will not register, but these marks are often the most attractive, and we can argue the overcome a descriptiveness objection, should it arise.

Once the clearance search has been completed, the trademark can be filed with the USPTO. Typically, an application is filed under a 1(b) intent to use basis for faster filing. However, use must be shown before the trademark will register, and you typically have six months after allowance to file a Statement of Use declaring that use. The mark will then register. Alternatively, you can file on a use basis right away if you have already been using the trademark with all the goods and services in the marketplace (and across state lines, one of the requirements for registration).

While the trademark application is pending, you may receive a refusal from the Trademark Office for revising the goods and services listing, avoid descriptiveness, or avoid a confusing trademark that is already in the USPTO database. The refusal must be carefully considered and argued against, so that the mark can move forward. There may be a written submission, along with a modification of the goods and services listing for the mark, to clarify the goods and services, and to avoid another trademark that overlaps (even if in a different class). Once you overcome the objections. the mark will proceed to publication.

When a trademark is published, it has passed the Examiner’s scrutiny and notice is provided to other participants in the market that this trademark is on course for being allowed. If your competitors file an opposition to the trademark during the one-month opposition period, then a mini-trial occurs, with evidence, wherein you defend your mark agains the opposition. If you are successful in overcoming the opposition, or no opposition is filed, the mark will proceed to allowance, You then have six months to file a Statement of Use, after which the trademark will register.

With over 10 years in trademark filing and prosecution, we’d be more than happy to assist with protecting your brand in the US and Internationally. We have filing contacts for foreign countries like China, Germany, United Kingdom and Canada. We can also let the marketplaces, like, know about your brand and prevent the unauthorized use thereof.

Once the trademark is registered, you’ll need to renew the registration within 5 years (6 years with late fee) with a renewal fee and a statement that you have continually used the mark during those five years. Also, you have the option of filing a Declaration of Incontestability at that time, which gives you greater rights to exclusivity of your mark.

Within 6 months of filing the trademark, you have priority for foreign filings, which may be backdated to the US filing date. For international filings, the Madrid Protocol, based on your US filing, can help with foreign filing and reduced official fees.

Please let us know how we can help your business today.


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