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If you have been using your trademark in commerce in connection with your products or services for an extended period of time, you may already have what is known as a common law trademark. These marks are established through use in the marketplace and are only valid regionally, so it is imperative that you file a federal trademark application to secure rights outside of Philadelphia.
There are two ways to greatly improve your chances of obtaining a federal trademark registration: hiring a trademark attorney and performing a clearance search. Trademark applications are legal documents full of technicalities that are best completed with the assistance of experienced counsel that understands these nuances and can ensure errors are avoided. A study completed by the University of North Carolina demonstrated that 83% of applications filed after hiring a trademark attorney are approved by the USPTO; this number is especially impressive when compared to the only 57% success rate of applications filed without attorney assistance. Additionally, should you receive a refusal of your application, having a trademark attorney on your side equips you to respond correctly with the best chances of overcoming that obstacle and still attaining a registration.
Furthermore, a trademark clearance search can be performed to confirm that your trademark is unique enough to achieve a registration. While you may have common law rights within Philadelphia and the surrounding suburbs, the USPTO takes trademarks from across the country into consideration when examining your application. When applying for a trademark, there is always the chance that the USPTO will refuse the application based upon overt similarities to a mark already in existence, regardless of the location of the business. That said, if the search reveals several established marks that greatly overlap with yours, you can make the needed changes and proceed with an edited mark, preventing the waste of additional time and funds on a blindly submitted application. If your search comes back clear, you can have increased assurance that your chances of registering your trademark are high.
Filing an Application
The entire trademark process typically takes between eight to ten months. Should the application receive a refusal, which comes in the form of an Office Action, or an opposition from a third party that believes your mark could infringe upon theirs, this timeline could be extended. Hiring an experienced trademark attorney to assist with submitting the application and responding to any notices that may be received from the USPTO helps to move the application along in a timely manner, as well as keep the projected timeline as brief as possible.
Performing a clearance search, having a consultation with the trademark attorney, and the application drafting and submission will typically take about two weeks total with our trademark law firm. An application is filed after a client has reviewed and signed the document. After about three months in the queue, the application will reach an examining attorney for review. If the examiner finds any issue with the application, an Office Action is issued. If no Office Action is issued the trademark is forwarded for “publication:, which refers to a thirty-day period in which the application is “published for opposition” other parties are able to challenge the application should they believe the registration of your trademark could interfere with theirs. Once the thirty days is complete, the application returns to the examining attorney for a final review. Depending on the initial filing basis of the application, the application owner will need to prove use of their mark for the registration certificate to be officially issued.
Once the trademark is successfully registered, it is the owner’s responsibility to maintain their trademark through renewals–the first renewal filing is due five years after the registration date, the second is needed ten years from the initial registration date, and then a renewal is due every ten years thereafter. Additionally, the owner must police the marketplace nationwide for trademark usage that may infringe upon their registration. Ensuring that other businesses are not utilizing marks that could possibly infringe upon yours is essential; if permitted, the trademark owner can lose rights within their own mark, and failure to police can be used against them should an enforcement matter take place.
One of the easiest ways to secure the success of your trademark application and the continued validity of the subsequent registration is to obtain the help of experienced trademark counsel. If you’re a Philadelphia-based business considering a trademark registration, look no further than Gerben Law Firm. With several regional offices and multiple knowledgeable attorneys with Pennsylvania backgrounds, Gerben Law is in a unique position to best help you gain a federal trademark registration and assist with navigating complex intellectual property matters.