Your business is growing–online orders are being placed like never before, your storefront has a line around the corner, and the inquiries are pouring in. One of the best ways to encourage this growth and protect the company you have built is by registering the most prominent parts of your brand–your business name, logo, and even slogan–as a federal trademark. As a Miami business owner, you understand the facets of your competitive industry and are concerned with maintaining your company’s upward trajectory. As your company grows within Florida and throughout the country, it is imperative that you ensure your booming business is protected by a trademark registration. Filing a trademark application includes these three imperative steps:
Performing a Comprehensive Clearance Search
There are two key factors that are proven to increase your chances of success when filing a trademark application: carrying out a clearance search before filing the application, and hiring an intellectual property attorney to facilitate that search and, later on, your trademark application. Trademark searches are an essential yet often overlooked first step when filing an application for a federal registration. Your attorney will use specialized software to comb through the existing trademark database to find any mark that may be overtly similar to yours and pose a threat to it achieving registration. These searches take into account nuances like phonetic and stylized similarities, ensuring that you have a clear understanding of the risk analysis prior to investing your resources into the application. Your trademark attorney will also provide you with a summary of the findings and help you to decide how to proceed, allowing you the very best chance of success with your application.
Filing your Application
After the trademark in question has been determined to have a high chance of registering, your attorney will draft the trademark application for you. While the application form itself may seem like a simplistic document, upon further inspection, it is full of legal jargon and potential pitfalls for an inexperienced applicant. By enlisting the help of an attorney, most of these technical errors can be avoided.
From start to finish, performing a clearance search, reviewing it with the applicant, and drafting the application can take about three weeks. Once you have approved of the application draft, it will be submitted to the USPTO for review. After approximately five months, it will arrive in front of one of the USPTO’s examining attorneys, where it will be heavily scrutinized and compared against other marks on the federal register to certify there is no likelihood of confusion with any existing trademarks. If the examiner believes there may be a conflict or requires further clarification within the application, they will issue an Office action. The applicant has three months to reply to this refusal. If the examining attorney does not issue an Office action, the application will instead be published for opposition, which consists of a thirty-day period in which any third party can oppose the application should they believe it may infringe upon their trademark rights. Once clear of the publication period, the application will be reviewed a final time by the examining attorney and then approved for registration. 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.
Maintaining the Registration
Once your trademark application has successfully achieved registration, the owner retains the responsibility of maintaining the registration throughout its lifetime. This maintenance consists of several renewal filings: 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 trademark must be in active and consistent use in connection with the goods and services listed. If the mark is no longer in use, it could potentially be canceled, so it is important to keep the trademark active. For each renewal filing, proof of this use in commerce demonstrated in association with the designated goods and services must be submitted. Additionally, the trademark owner must also police the marketplace to confirm that no one else is using a mark similar to theirs; should this infringement be permitted, the trademark owner can lose rights within their own mark.
To help with these responsibilities, many trademark attorneys offer monitoring services to keep track of your trademarks, send alerts for upcoming renewal deadlines, and survey the trademark register for any new marks that may infringe upon yours.
Ensure that every element of your growing business is fully protected and correctly maintained with the assistance of Gerben IP’s experienced Miami IP attorneys. With a variety of backgrounds and ties specifically to Miami, our team is distinctively positioned to help you grow both your business and your intellectual property portfolio. Please reach out to an attorney at Gerben IP today to get started.