If you are a business owner looking to protect your brand, consider working with an experienced trademark attorney. Your attorney will conduct a comprehensive trademark search and also file your application with the USPTO and respond to Office Actions on your behalf. Once your trademark is registered, your attorney can monitor its use and work with you to take legal action against infringement.
Conduct a Comprehensive Trademark Search
A trademark search should always be conducted prior to filing an application with the United States Patent and Trademark Office, or USPTO. It’s done to determine whether the trademark you plan to register is already applied for or registered by another company. While there are DIY options for conducting a trademark search, they typically only reveal exact matches to a trademark. Most trademark disputes, however, aren’t caused by exact matches, but rather trademarks that may be confusingly similar. The search software used by most trademark attorneys is much more comprehensive, revealing not only exact matches to your business or product name, but similar matches to any words, logos, or slogans you wish to trademark.
It’s certainly frustrating to learn of an existing trademark, but it’s best to learn that before you submit your application and pay your fees to the USPTO. If your attorney finds a similar mark that may become an issue during the registration process, you can work together to make the changes needed to avoid the likelihood of confusion. Depending on the severity of the conflict your attorney may suggest some minor changes to your proposed trademark or suggest going back to the drawing board to create a stronger trademark before filing.
File Your Application with the USPTO
Once your comprehensive trademark search has been conducted, your trademark attorney will begin to draft your application for the USPTO. While filing with an attorney isn’t required for U.S. citizens, it’s highly recommended, because of all the detailed legal decisions that need to be made throughout the process. In addition, a recent study by the University of North Carolina found that applications filed by attorneys increased the likelihood of approval by up to fifty percent! Therefore, choosing to work without an attorney could be a costly and time-consuming mistake, if your application is rejected by the USPTO and you are forced to refile.
The USPTO commonly issues Office Actions throughout the application process. These can be requests for additional information or clarification or a full refusal of an application due to a conflict with another trademark. When you receive these Office Actions, it’s important to respond appropriately and meet the deadline provided. Failing to do so could cause abandonment of your application. Fortunately, your trademark attorney can typically respond to all Office Actions on your behalf, ensuring your application process moves as quickly as possible while saving you time to focus on your brand.