U.S. Trademark Registration Process
Preclearance of a Mark:
When a client first proposes a potential mark for use in connection with goods or services, it must be precleared. This is done to ensure there are no other "confusingly similar" marks in existence which could either pose an infringement risk or oppose the registration of your mark. A preclearance begins by searching an online database for any state or federal registered marks which are confusingly similar to the proposed mark. You can begin the process on your own by searching the Internet; however, the search process is complex and requires the opinion of an experienced trademark lawyer. We engage an internationally recognized trademark search vendor to conduct a search of thousands of databases containing records of registrations. company names, product names, domain names, news articles, trade directories, and other relevant sources. The search results are forwarded to us and a trademark attorney will analyze the various search results and prepare a legal opinion regarding the availability and registerability of the proposed mark. This opinion will be sent to you in a letter advising you of the results and recommending an approach.
Federal Registration:
After a successful preclerance, you can begin use of your mark. You can also choose to pursue registration of your mark with the U.S. Patent and Trademark Office to better protect your rights. Although applications can be filed online by anyone using the Trademark Office's website, or by certain nationally advertised online "legal" services who are not lawyers, we do not recommend filings unless the party seeking protection understands that the registration may or may not result in rights arising for the filer. In addition, such filings are often rejected by the Trademark Office for a variety of reasons. Thus, using such a provider or a do it yourself approach may end up costing you more in the long and can even result in legal liability for you. It is for this reason that consulting with an experienced trademark lawyer prior to spending money to file an application to register a mark is strongly recommended. When we assist with a filing, the progress of the mark will be reported from application to publication to registration. If any difficulties develop during the registration either from a Trademark Office Examining Attorney or a third party, we will keep you informed and render advice as needed.
Trademark Maintenance:
We assist clients in properly using their marks to avoid inadvertent abandonment through improper use or otherwise. We also help clients with registered marks by tracking the progress of their marks on our trademark docketing system and notify the owner of various post-registration requirements that must be met to avoid a loss of rights.
1. Affidavit of Use and Incontestability. Between the fifth and sixth anniversary of a mark's registration date, the owner must file an affidavit or declaration stating that the mark is still in use and evidencing the same. We will notify the client when an Affidavit of Use is needed and prepare the appropriate papers. The Trademark Office does not make notifications. After such papers are signed, we file them, along with appropriate specimens of use, with the Trademark Office. U.S. federal law also allows the owner of a registered mark to establish the "incontestability" of a registration by filing an appropriate affidavit or declaration. This filing may be made after any five year period of continuous use. Once this filing is made and the mark is "incontestable," the registration is conclusive evidence that the registrant owns the mark, has properly registered the mark, and has exclusive rights to use the mark in commerce in connection with the goods or services identified in the registration (subject, in each case, to certain exceptions). Through our database/docketing services, we will inform the client when such a filing is possible. We draft the affidavit with the appropriate information, and file it with the Trademark Office.
2. Renewal of Registration. Registrations must now be renewed every ten years by filing a renewal application along with relevant specimens of use. We will notify the client when a renewal is needed and draft and file the appropriate application.
