Steps to Trademark Your Logo as a Philly-based Business Owner

By Josh Gerben, Esq.

Your logo is one of the most distinctive and significant parts of your business’s branding—visually appealing and eye-catching, a standout logo often acts as a key identifier for the product or service it represents. Because of this, goodwill toward your business and its offerings are associated with that logo. As a business owner in Philly, you are sure to understand the nature of industry competition and are concerned with maintaining the integrity of the brand you have built. As your business grows within Philadelphia and perhaps beyond, it is imperative that you ensure your logo, an essential piece of your branding, is thoroughly protected by a trademark registration. Filing a trademark application for your logo includes these three critical steps:

1. Perform a clearance search

There are only two things that statistically increase your chances of obtaining a trademark registration: performing a comprehensive clearance search prior to filing, and then hiring a trademark attorney to assist with that filing. Luckily, an attorney is equipped to also help with conducting the search prior to filing the application. Searches are a crucial first step; powered by industry-leading software, trademark search engines scour the federal trademark database for any mark that may be close to yours. These searches look for design elements that may be overtly similar to those in your logo, allowing an evaluation of whether it is clear to proceed with your logo or if it potentially infringes upon another already in use. Your attorney can assist with making these decisions prior to filing, ensuring that your investment in the application is worthwhile and sets you up for success. To learn more about how Gerben IP can help you with trademark registration for your Philly business, check out our services.

2. File the application

Once it has been determined that your logo has a high likelihood of achieving registration, your attorney will then draft & prepare the application. A trademark application, though it seems straightforward at first glance, is full of technicalities that are best navigated with the help of an experienced professional. Performing a clearance search and filing the application following the owner’s review typically takes about two weeks.

After submission, the timeline for the application can vary slightly: after about three months, it arrives for the first time at the desk of an examining attorney at the USPTO. If the examiner takes issue with any aspect of the application or believes it may be in conflict with another mark, they will issue a refusal known as an Office action, to which the applicant has six months to reply. If the examining attorney finds no issues, the application will be forwarded to the publication period, in which any third party can oppose its registration should they believe infringement on their own mark may occur. If no oppositions are received, the application will go back to the examining attorney once the thirty days have passed for a final review. Depending on the initial filing basis on the application, the owner may need to prove use of the trademark prior to the registration certificate being issued.

3. Maintain your registration

Once the trademark for the logo has successfully been registered, it is the owner’s responsibility to maintain their trademark through a series of renewal filings throughout its lifetime. The first renewal is due five years from the registration date, and the next is due ten years from the registration date, followed by a renewal every ten years thereafter. In order to submit an acceptable renewal filing, the logo must be actively and continually used in the marketplace in the same design as it was originally filed. For each renewal, proof of this use in commerce in association with the designated goods and services must be submitted. The trademark owner must also police the marketplace to confirm that no other parties are utilizing a design element that is similar to theirs; should this infringement be permitted, the trademark owner can lose rights within their own mark. For reference, we crafted a How To piece on additional tips for trademarking a logo here.

Ensure that your logo is fully protected and correctly maintained with the assistance of Gerben IP’s team of experienced attorneys, who can help you through these three important trademark filing steps. With a variety of Pennsylvanian backgrounds and multiple regional locations, Gerben IP is uniquely positioned to not only make sure that your Philly business’s logo is secure, but continue to safeguard that registration for the benefit of your business in the years to come.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 8,000 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.