This is Brian Hall, a trademark attorney with Traverse Legal, PLC. I represent trademark applicants and trademark owners throughout the world on all matters related to trademarks. Today, I will be answering the question that I often receive from prospective clients concerning what to do before registering a trademark.
There are several steps that are important before pursuing a trademark application in route to a trademark registration. The first, and most important, is determining whether or not that trademark is available. And this is important for two reasons. The first, you wouldn’t want to file a trademark application only to be denied because someone else had already filed the same or similar mark in connection with the same or similar goods or services. Equally important, you wouldn’t want to pursue a trademark that someone else has been using and subject yourself to claims of trademark infringement, which could lead you to federal court litigation. So, it is important to conduct what’s known as a trademark availability assessment or sometimes called a trademark clearance.
Such a performance is usually done by a trademark attorney. A Trademark attorney will be able to search the USPTO database in such a way that he or she may identify marks that would create a likelihood of consumer confusion, and the trademark attorney can also search what is known as common law sources. So, for example, a Google search or other search to see what else has been used by entities in connection with their business. By performing these initial searches to determine whether or not your trademark is, indeed, available, you are mitigating the likelihood of facing issues either in your application process or in federal court, such as litigation.
Once the trademark attorney has, indeed, determined that the trademark is available for registration, the next step is to actually register that trademark. In order to do so, an application with the United States Patent and Trademark Office, or USPTO, needs to be completed. There are several items that are necessary as part of a trademark application. The most important of which is showing either your intent to use that trademark, or actual use of the trademark.
A trademark attorney who has filed and registered multiple trademark registrations will be able to assist you throughout this process. I typically work with my clients by identifying whether or not they have used the mark, and If they have used the mark, determining where they have used the mark, so that I can use what’s known as a specimen to show use of the mark to the USPTO, and, ultimately, filing the application and working with the client should the examining attorney assigned to that trademark application issue any office actions.
An office action is essentially the examining from the USPTO pointing out deficiencies in the application or requesting arguments related to it, so, while individuals and business entities may from time to time try and register a trademark on their own without the assistance of a trademark attorney, more often than not they will need a trademark attorney to assist them throughout the registration process.
Once the mark is actually filed, and the application is pending, it can be anywhere between 6 and sometimes 18-months before a trademark registration is acquired. However, during that time frame, it is important to continue to use the trademark and protect it under common law rights. Should you be successful in registering a trademark and acquiring a trademark registration number from the USPTO, there are additional items that you need to do in order to maintain your rights. For example, you should actively monitor third party use of your trademark, identify any unlawful uses and pursue any action necessary in order to make those uses stop. This affirmative protection of your mark, through monitoring or otherwise, will enable you to continue to claim exclusive rights of that trademark in connection with the goods or services that you use.
So, to recap, the process of registering a trademark can be relatively straightforward with the help of a trademark attorney. Therefore, it is always advisable to use an expert who has done these registrations in the past and can provide you with the information you need to give you the best chance of a successful trademark registration.
This has been Brian Hall answering the common question of prospective clients: what are the benefits and most important pieces of a trademark registration?
You’ve been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.