Trademark Applications Done Right

Trademark Applications From Gerben IP’s Experienced Trademark Attorneys

A federal trademark registration is essential to effectively protect a trademark. Look at any successful company and you will likely see a portfolio of registered trademarks in the United States Patent and Trademark Office. Trademark applications can be tricky to file and an experienced trademark attorney can give you personalized advice to protect your trademarks.

Things to Consider Before Filing a Trademark Application

• Who can own a trademark application?
  • Anyone can own a trademark application, including individuals, companies, governments, even religious organizations. However, a trademark applicant must be the true owner of a trademark and should not be attempting to register someone else’s trademark in order to stop a competitor from registering their trademark, or in an attempt to hold the registration “hostage.”
• What classes should I file for?
  • Your trademark application should be filed for the goods and services that you are either using or (in the case where you are reserving rights) plan to use in the near future. All goods and services are organized into general classes and the government filing fee is determined by the number of classes you apply for. There are 47 trademark classes (called international classes).
• How does the USPTO determine who should get a trademark?
  • The USPTO attorney that reviews your application will take a number of things into consideration, including: (1) whether someone else has already registered a similar trademark for related goods and services (2) whether the trademark is “merely descriptive” of the goods and services you are applying for and (3) a number of other potential refusals according to the USPTO rules.
• Can I appeal the USPTO’s decision if they deny my trademark application?
  • If the Examining Attorney issues an Office Action denying your application, then you will have six months to respond with arguments (or changing the application to comply with the Examiner’s issues). If you do not respond, the application will be abandoned. A skilled trademark attorney can evaluate the likelihood of success and draft an Office Action response for your specific issues. If the Examiner still refuses, then he or she will issue a “final refusal.” You will have one more chance to make arguments before being required to appeal to the Trademark Trial and Appeal Board. Each of these responses is a nuanced legal issue requiring legal analysis and an attorney can help you determine the best course of action.
• When should I file my application?
  • You should file your trademark application as soon as possible. If you have not yet begun using the trademark in commerce, you may consider filing an “intent to use” application to reserve rights. You can reserve rights for up to four years.
• How long does it take for my trademark application to mature into a trademark registration?
  • It can take over ten months to obtain a trademark registration. However, your “priority date” begins the day you apply and everyone who applies after you will have to wait for the USPTO to review your application.

USPTO U.S. Trademark Filing Data Facts

*data was gathered from the USPTO’s public resources

Additional Information on Filing a Trademark Application

Very successful business owner knows the value of an effective brand. Consumers are surrounded by trademarks every day, so when a business owner can create a strong, protectable brand, then the business has a truly valuable asset. Filing a trademark application is an essential step towards building a strong brand. That being said, filing a trademark application with a lawyer that can help you properly complete the application form is imperative.

What could go wrong if you try to file a trademark application on your own? Imagine you are a business owner and own three different businesses entities. One is a car wash business you’ve owned for years and the other is an electronics start-up. You decide that you do not want to “tip off” competitors that you are about to release a brand new electronic device, so you file the trademark application in the name of the car wash business. This business has no interaction with the electronics start-up. The USPTO will not likely challenge the ownership. In fact, the USPTO will likely approve your application and issue a registration. Then, a few years later you end up suing a competitor for trademark infringement. However, in response to the lawsuit the competitor files counterclaims and is able to successfully cancel your trademark registration on the grounds that the wrong company was identified as the ‘applicant’ on the original application. This is a scenario that can easily happen if an improper owner is listed in a trademark application.

What else could go wrong? Imagine you are a new company creating a social media app. However, you want to be able to start “advertising” so you identify your services as “advertising services” in class 35 in your trademark application. This would not be the correct way of identifying your services and the USPTO would likely refuse your trademark application.

Another thing that could go wrong? You file your trademark application yourself and get an e-mail notification back from the USPTO asking you to fix some items in the application before it can be approved. Your inbox is packed, so you read it and decide you will deal with it later. Six months go by and you do not respond. Nine months after the Office Action issued, you decide to look at your application and find that it has been abandoned. You will have to now re-file your application because of the missed deadline.

The bottom line is that your brand is critical to ensuring your success in today’s competitive marketplace. By hiring an experienced trademark attorney you can ensure that you are taking every step possible to properly protect your trademark.