In love with your Trademark?Don't risk a bad break up.™

Think APPLE®, TARGET® or DISNEY®. These are all examples of trademarks.

A trademark is defined as a word, phrase, symbol, design, catch-phrase, or combination thereof that identifies and distinguishes one “source” of goods/services from another.

You are probably wearing 20+ trademarks on your clothing and accessories right now. If you see ™ or ® symbols on your phone, watch, cap, backpack, sunglasses, handbag, lipstick, shoes, or socks – these are all trademarks.

I refer to #EveryDayTrademarks because once you start noticing them, you will see trademarks everywhere, from your kitchen ingredients to your office supplies to your entertainment channels.

A trademark helps a consumer to quickly identify the particular goods or services they want to buy (and/or to buy from a trusted “source”) and also serves to prevent unfair competition between businesses in the same industry.

Savvy brand owners like Coca-Cola and Taylor Swift own numerous registered trademarks and may protect the same mark in multiple different ways. For example, the word NIKE® , the design/logo of the NIKE® swoosh, and the catch-phrase JUST DO IT® are all different registered trademarks for just one brand.

Your trademarks are a significant intellectual property asset while you’re doing business and also when you sell your business. It is wise to consider protection of your trademark as soon as you create it and even before you have used it.

There are essentially three options:

1) By using your trademark, you can claim “common law” trademark protection, though such protection is limited to the geographical locations where you can prove use. Common law protection does not require any filings or fees;

2) You can also file for protection at the state level, which requires filing an application with your particular Secretary of State and paying a generally nominal fee. State registration protection is limited to use of the mark in that state for the applied-for goods/services; or,

3) Most clients today who are investing in a trademark seek federal protection by filing an application with the United States Patent and Trademark Office (USPTO). Fees for this process are based on the nature and number of goods/services you seek to protect. The minimum USPTO filing fee is $350 to file for goods/services in one USPTO Class. Since this is for federal protection, you must be able to provide evidence of actual use of the mark in interstate commerce on the applied-for goods or services. If you have a website or sell across state lines, you likely can prove such use. Federal protection is not guaranteed and requires that your mark and application be approved at multiple stages during the USPTO process over a many month period.

Depending on your commitment to your mark, your budget, and your long-term plans for your mark, each option can be effective. Most clients seek federal protection.

The term “intellectual property” law or “IP” refers to three different types of law: Patent, Trademark, and Copyright. While they are grouped together, they are three very different types of assets with different legal histories and origins and levels of protection. This section deals only with Trademark law.

A “mark” may refer to a trademark or service mark.

The “USPTO” refers to the federal government agency the “United States Patent and Trademark Office” or “USPTO” or “PTO”, which is the agency where all federal trademark applications are filed.

A USPTO trademark “examining attorney” is an experienced trademark attorney who will be assigned to review your application. This USPTO attorney is not “your” attorney and cannot provide you with legal advice. The attorney may refuse your application on numerous informal or substantive grounds. You as applicant are allowed up to two (2) rounds to respond and attempt to resolve or overcome any issues raised.

The goal of filing a federal trademark application is “registration” on the USPTO’s Principle or Supplemental Register.

The ™ symbol is a form of notice that is used to assert trademark rights in a mark and does not require any form of filing to use.

The ® symbol is a form of notice that a mark has been officially “registered” with the USPTO. The ® symbol may only be used after the mark has completed the entire USPTO application process and been officially registered with the USPTO.

There are many advantages to securing federal registration of your trademark, including:

*Official evidence from a federal government authority and nationwide constructive notice that you are the owner of your trademark

*The right to use the ® symbol, thus providing notice to third parties of the mark’s registered status

*The Amazon brand registry requires a USPTO Serial #/Registration # (assigned to your mark only if you file a USPTO application)

*On certain social media platforms, if your mark is being used by a competitor without your permission, providing proof to the platform’s dispute resolution department in the form of a USPTO Serial # or Registration # is the fastest way to prove that you are the rightful owner of the mark and stop the activity

*Once your mark is in the USPTO database, if a junior mark is filed which is deemed by the USPTO examining attorney likely to cause confusion with your mark and goods/services, the USPTO will refuse the junior mark by citing your mark, without any action required by you

*Once you secure registration, you have it for as long as you use the mark and comply with minimal USPTO maintenance requirements every (5) to (10) years; and,

*If you sell your business, a registered mark is a valuable asset (and more valuable than an unregistered mark); Prospective buyers will pay a greater purchase price if your mark is already vetted and USPTO registered (the many month USPTO process is too late to start at the time you decide to sell your business or first receive an offer to sell your business).

In short, seeking USPTO registration is an investment of time and money, but once achieved, it yields substantial benefits for the lifetime of the mark’s use.

The following is the response to this question from the very authority that will review and approve (or not) your application: The USPTO’s own website www.USPTO.gov:

“Most applicants use U.S.-licensed trademark attorneys for legal advice regarding the use of their trademark, filing an application, and the likelihood of success in the registration process, since not all applications proceed to registration. A U.S.-licensed private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.”

So, officially “No” you are not required to engage an attorney to file your USPTO application, but even the USPTO acknowledges that having an attorney will help you to avoid the “many potential pitfalls” of the process.

I will add that the application on the USPTO website can be deceiving because it appears to be an easy click-through form. However, much strategy and thought should go into preparing for and completing every “box” on that form.

During the USPTO review process, an experienced USPTO trademark “examining attorney” (who is not your attorney and cannot provide legal advice) will be assigned to review your application and may raise informal or substantive legal grounds for “refusal”. You have two rounds in which to address those grounds and resolve them. If you cannot resolve them satisfactorily, your application will be deemed “abandoned”, will not be allowed to progress to registration, and you will lose all time and filing fees paid to date. Many such grounds for refusal can be resolved by an experienced attorney.

There are also complicated deadlines in the USPTO process which are solely your duty to meet. If you miss a deadline, your application may be deemed abandoned.

Many applications are refused for a myriad of substantive and technical reasons in which case all of the time and fees the applicant had invested to date are then lost. Therefore, if your mark will be foundational to your business, consider engaging an attorney to maximize your chances of achieving registration.

The short answer is: Once you are committed to (or as I call it, “in love with”) a mark, take steps to protect it as soon as possible.

The USPTO is a government agency and the USPTO process is slow and cannot be expedited.

If you are seeking USPTO federal trademark registration, know that from the time of filing a USPTO application, if your mark is already in use, allow (9) months to 1 year to complete the entire process through to registration, assuming your mark is approved and registers. If your mark is finally refused at any point, you will have to re-start the entire process, which will add time to the process.

If you are filing an intent-to-use application, more time will be required after that initial review period until you can show use of the mark.

Once we file a USPTO application, you and I will control the process on our side to the extent we can (which means preparing our filings professionally so to facilitate a more efficient USPTO review, and responding quickly if the “ball is in our court” during the process) but during much of the process, the timeline will be out of our control.

That is why acting quickly to protect a new mark and filing your USPTO trademark application well ahead of any prospective deadlines you have is the best strategy.

Briefly, Yes, and Yes.

When you file a USPTO application, you must select a “basis”: either “in use” or “intent-to-use”.

If you have used your mark on goods or services in interstate commerce, you can file “in use” and provide evidence of that use at the time of filing. However, if you have not yet used your mark in interstate commerce at the time of filing, you can file an intent-to-use application. In this case, you have no proof of use yet but warrant that you have a good faith intention to use the mark in the future.

Many clients avail themselves of the intent-to-use option as a form of due diligence or vetting of their mark before investing in it or sharing it with customers or the public. An intent-to-use application requires most of the same steps as an in-use, such as filing the mark and identifying the goods and services.

The application under either basis progresses through the standard phases of the USPTO process. However, with an intent-to-use application, if approved, proof of actual use of the mark in interstate commerce on the applied-for goods and services must then be filed before the mark will be registered.

Generally, allow (9) months to one year to complete the first part of the process (whether an in-use or intent-to-use application), but with intent-to-use the mark cannot register until use is filed and approved. The showing of use is within the client’s control. An intent-to-use applicant has up to (3) additional years after the mark is approved in which to show use, with periodic (6) month check-in points along the way.

The intent-to-use approach is slightly more expensive as there are additional filings and fees, but clients often feel that in the grand scheme, such additional amounts are worth it if they seek the security of the mark’s approval before launching.

The USPTO database is a public record so any mark you file can be searched by a competitor or any other third party at the time you file it. However, the third party would have to know to look for the mark and even if that competitor saw your mark and then tried to use the same or a similar mark, the USPTO record would still reflect your earlier filing date.

There are several considerations to evaluate when comparing an online company versus your own private attorney when filing your USPTO application:

If your goal is to achieve federal trademark registration with the USPTO, then understand that the entire USPTO application process is more sophisticated than it might appear. Merely “filing” an application alone does not guarantee that your USPTO application will be approved and registered. In fact, the many-month, multi-step process is filled with landmines where your application could be refused or opposed; if it is, you lose all fees paid and all time spent to date and have to start over.

Most fundamentally, with a private attorney you have an ongoing professional relationship. The attorney is not just completing the narrow act of filing a form, but will strategize with you to develop a game plan for your mark and application. With an online service you may not even be dealing with an attorney.

Before you file, if I am engaged by a client, I will first conduct a search or “due diligence” to ensure there is minimal risk of a senior mark posing a potential conflict with that mark. Online companies may not conduct a search or may confine the search to a narrower scope than is advisable.

There are many important decisions to make in preparing your USPTO application. Once a USPTO application has been filed, certain terms are “locked in” and cannot be amended. Which form of your mark will you file? Which goods and services should you protect? Which of your “specimens” or evidence of use in commerce to file? I have experience with what the USPTO accepts and will guide you on these decisions. An online service may accept what you deliver without strategy or nuanced direction.

Next, the USPTO will assign an experienced trademark “examining attorney” to review your application. This USPTO attorney is not “your” attorney and cannot provide you with legal advice. Substantive legal issues may be raised which must be overcome for the application to move ahead.  I have had success overcoming such issues. An online company may not have the experience or time to work on such issues.

I bill on a reliable, predictable Flat Fee basis which includes an Unlimited Pass™ for all of the communication you need with me, which allows you to ask as many questions as you like and to understand your options and the USPTO process throughout the entire year-long process.

If you’re serious about your mark or even in love with it (!), make a serious evaluation as to the strongest strategy for getting it properly filed, approved and registered to meet your goals on your timeline.

The ™ symbol is a form of notice that is used to assert trademark rights in a mark and does not require any form of filing to use.

The ® symbol is also a form of notice that a mark has been officially “registered” with the USPTO. The ® symbol may only be used after the mark has completed the entire USPTO application process and been officially registered with the USPTO.

The USPTO trademark application process is a multi-phased government process which cannot be expedited. Allow (3) – (6) months after filing to receive an initial review and (9) months to one year to complete the process and be registered (assuming the mark is in use, approved (and not refused) and not opposed along the way).

An intent-to-use application will require more time as the mark cannot be registered until proof of use has been filed.

The length of time will depend on a variety of factors such as the USPTO Examining Attorney’s determination of any legal issues or grounds for refusal and whether any third parties oppose the mark.

As a self-employed person myself, I understand how precious a small business owner, entrepreneur, or creative client’s time is.

Some clients attempt to file their USPTO application on their own. This option can appear time efficient since “filling out the form” on the USPTO website technically does not take much time. However, after you file, it will take months to learn if your application is approved or refused. If your application is refused by the USPTO or you miss one of the many complicated USPTO deadlines, you may lose all filing fees paid and many months of valuable time and have to start over.

A second option is using an online filing service. This option may be more affordable than a lawyer but that discount will be reflected in the depth of analysis their (generally non-lawyer) team will do and the amount of work they will expect you/the applicant to do, such as preparing your own specimens or evidence of use.

The third option is engaging an attorney. While it is likely the most expensive option, that investment should maximize your chance of registration and also actually save you time.

I include in one Flat Fee rate all of the actions required to file your application and see it through the entire USPTO process.

Before we file, I will sift through search results and present the client with summaries of options (I love my color-coded charts!) such that the client can quickly compare options and make informed decisions.

I have taken USPTO-sponsored classes on what the USPTO expects as “specimens” or evidence of use and I will prepare the specimens of use for you to those specifications.

I will be the attorney of record throughout the USPTO application process from preparation, filing, and all responses, and provide you with focused, time-efficient options for next steps.

I will also track all USPTO deadlines and review a daily summary of impending dates.

My Flat Fee includes an Unlimited Pass with me/your attorney, for all of the communication you/the client needs with me, whether via calls, emails, texts, or otherwise, which allows you to ask as many questions as you like and to understand the USPTO process.

As to which option to choose, it will be a time (and cost and risk) evaluation as to how to proceed. In deciding, be sure to evaluate not just time it will take the fill out the application, but all of the requirements and landmines of the USPTO process in light of your timeline and goals for use and registration of your mark.

Whether you file your USPTO application on an in-use or intent-to-use basis, in order to achieve registration, you are required to at some point file acceptable “specimens” or evidence of actual use in interstate commerce of your applied-for mark with your applied-for goods and services. USPTO applications which are otherwise acceptable can be refused due to the failure to provide acceptable specimens.

I have taken USPTO-sponsored classes on what the USPTO expects and will accept as “specimens” and I will evaluate your uses of your mark and prepare your specimens of use for you to those specifications. Some USPTO attorneys are more demanding than others as to specimen requirements. If I am your attorney of record, you will not have your application refused due to issues with specimens.

If you file your USPTO application on your own, use an online service, and even engage certain lawyers, you may be expected to prepare your specimens yourself. To prepare them properly requires expertise and time. When evaluating how to file your USPTO application, factor in the preparation of your specimens.

It’s not you.

The USPTO trademark application process includes multiple deadlines throughout the many month process. There are also different deadlines if you file your application on an in-use versus intent-to-use basis.

While USPTO-issued written communication generally includes information about the next deadline, it may be buried in fine print or confusing to calculate. Some deadlines are months or even many years into the future, which can make them hard to track and remember.

Also, with each step in the process, the burden is on the applicant to understand and comply with all deadlines. The USPTO will not remind you. If you miss some deadlines you can pay a fee and restore the application, but if you miss others, your application may be deemed “abandoned” without recourse and you will have to start the entire process over, losing all time spent and fees paid to date.

I have an excellent professional service that monitors all of my USPTO application deadlines and reports to me daily. I follow behind and check those deadlines as well.

While registration of any mark is not guaranteed and there are many grounds on which an application may be prevented from registering, losing rights based on the technicality of a deadline is a real possibility for the uninitiated but is also avoidable with experience.

Yes. Trademarks can be lost in a variety of ways, including abandonment (due to failure to file certain required documents by a USPTO final deadline or due to non-use for 3+ consecutive years), failure to police unauthorized uses resulting in dilution of the mark, genericide (when a trademark becomes a common word for the product), or failure to file other required maintenance or other documents with the USPTO.

Similarly to owning real property, owning “intellectual” property requires proactive steps such as protecting, policing, and maintaining your property (in this case, your trademarks).

Please contact us for a complimentary review of your specific mark and facts as fees are customized to each client’s case.

In general, we try to bill on a Flat Fee basis for every legal matter. A Flat Fee is a one-time total fee for all actions required for that legal matter. This provides the client with predictability and control. The Flat Fee includes our popular “Unlimited Pass™” of communication between attorney and client in all mediums to be sure the client understands the legal process and can ask questions, and take as much time as is needed to understand and be educated on their matter.

USPTO applications are great candidates for a Flat Fee rate because the application follows a certain predictable course (albeit with certain landmines built in)! Our Federal Trademark Application Package includes all steps in the entire year-long USPTO process, including evaluating and selecting the best mark to file, searching for senior, conflicting marks and other due diligence pre-filing, defining goods/services to file, deciding which filing basis on which to file (in-use or intent-to-use), preparing and filing the application (including required “specimens” or evidence of use), being the attorney of record and handling all communication with the USPTO, responding to any grounds for refusal, and seeing the application to resolution (the goal of which is registration). It also includes the tracking of all USPTO deadlines and advice on using the mark on websites, packaging, and other uses.

In addition to legal fees, the USPTO requires a minimal filing fee of $350 (or $550 in certain cases) per Class of goods/services to file a USPTO federal trademark application. Those costs are required even if you file yourself. If we are engaged, the client pays that direct cost to us and we pay it directly to the USPTO.

If a Flat Fee is not possible, then an hourly rate will be applied, and we will discuss a projected budget.

We would love to chat with you about how we might work together to accomplish your goals within your budget.