Trademark Filings Made Easy

Trademark Filing Made Easy by Gerben IP

Your company’s trademarks are some of its most valuable assets. Trademarks represent the “face” of a company—the quality, the style, the ethos—all of which are embodied when a consumer sees a particular word, phrase, logo, etc. Protecting your trademarks with professional trademark filing is essential to the success of your company. The first step towards protecting your trademarks is to hire an attorney to assist you in analyzing and filing your trademark with the United States Patent and Trademark Office. The registration process can often be confusing and you may have a lot of questions. An experienced attorney can help answer those questions, assess the viability of your trademark, and provide tailored legal advice that is specific to your unique company. Gerben IP has filed and registered thousands of trademarks since openings its doors in 2008. We would be happy to assist with your trademark filing as well. If you are not sure how to get started, keep reading or CONTACT US today for a free consultation.

What You Need to Know about Filing a Trademark

• What should I do before filing my trademark with the USPTO?
  • The first step towards protecting your trademark is ensuring that the trademark you have selected is not violating the trademark rights of another party. A comprehensive federal, state and common law search will compare your trademark with other trademarks that may be confusingly similar that could increase your risks when using or registering a trademark. Only then can you make an informed decision on how to move forward with your application. A comprehensive search will look at trademarks that are similar in sight, sound, meaning and/or overall commercial impression for goods and services that are related to your goods and services.At Gerben IP, we believe so much in the importance of a search that we provide comprehensive searches with every flat-rate registration we offer. After the search is complete, an experienced trademark attorney provides an analysis and discusses the results with you over the phone.

• Why should I register my trademark with the USPTO?
  • A trademark registration from the U.S. government is one of the essential steps to owning a strong, protectable trademark throughout the United States. Legally, it gives you certain legal “presumptions,” which means that by simply owning a registration the law will presume that (1) you are the owner of the trademark and (2) that the trademark is protectable. It also means that anyone who begins using a trademark similar to yours after you file your trademark is presumed to have known about you, because your registration is a public record. That means that no one in Florida or Maine or California or Alaska can say that they “didn’t know about you” when they began using a similar trademark.
    Practically, a trademark registration stops others from registering a similar trademark with the USPTO. It also makes enforcement easier, as you have a government document to provide to the potential infringer. Without a registration, you will be extremely limited in your ability to enforce your trademark, and may be stopped from expanding into new geographic areas in the future.

• How much does it cost to file a trademark?
  • The cost of trademark filing is split up into two types of fees: (i) legal fees (the fees you pay for an attorney’s services), and, (ii) government fees, which are fees paid to the USPTO in order to file your application. At Gerben IP, we offer a flat fee service for a trademark search and filing (see our flat fee trademark service page for more details). The government fee is $350 per class, or general category. There are 47 different classes that you can file under and an experienced trademark attorney can help you decide which classes to file under.

• Why should I hire an attorney to assist with a trademark filing?
  • The trademark application process may appear simple – put in your information, file it with the government. However, there are legal considerations at every stage of the filing process. By hiring an experienced trademark attorney, you are receiving legal advice about the availability of that trademark (through a comprehensive search and analysis), trademark ownership (who should own the trademark), advice on the goods and services, advice on “proof of use” issues, and much, much more.
    In short, hiring an experienced trademark attorney can often help avoid common mistakes made by many companies who file on their own.

• How long does the trademark registration process take?
  • The entire process takes at least 8-10 months from start to finish. However, your “federal priority date” starts the day you apply and everyone who files for a similar name after you will have to wait until the USPTO reviews your application. There are also some important milestones throughout the process. In 3-4 months, the USPTO will review your application and address any issues it finds. Within 3-4 months after that, third-parties will be given the option of “opposing” your registration based on prior rights. 3-4 months after that, the registration will issue.

• What do I have to do after my trademark registration issues?
  • Registering a trademark is just the beginning in your ongoing duty to protect your trademark. Once registered, we recommend monitoring the USPTO and the marketplace to ensure no one begins using a confusingly-similar trademark for related goods and services. You must also file a renewal between the fifth and sixth year after registration, and every ten years after registration.

USPTO U.S. Trademark Filing Data Facts

*the following data was gathered from the USPTO’s public resources

Additional Information on Filing a Trademark

Whether you run a single-member LLC or a Fortune 500 company, trademark protection is essential for maintaining a successful business. Trademarks are not just words or symbols – they are almost anything that represents your specific company. This can include words, phrases, and logos, but it can also include things like “the distinctive layout of your store (think Apple stores or Chili’s restaurants), sounds (the NBC chimes), or even colors (Tiffany Blue, UPS Brown.) Under the right circumstances, all of these can be protectable under trademark law and the key is to recognize your trademarks and then move forward to protect them with a trademark filing.

One way to start protecting your trademarks is to register them with the United States Patent and Trademark Office. By registering your trademark with the U.S. government, you can better protect your trademark from infringers, counterfeiters, and others who will attempt to piggy-back on your brand’s success. Federal trademark protection with the United States Patent and Trademark Office can be a confusing process. One misstep can mean months (or years) in delays or, in the worst case scenario, can mean the refusal of your trademark registration.

Gerben IP starts with a comprehensive search, where our team scours the USPTO databases, state trademark databases, and the marketplace for registrations and uses of trademarks that could be problematic to your use and/or registration of your trademark. Then one of our attorneys writes a legal opinion letter about your risks and discusses it with you through our One-On-One® trademark counseling service. We then prepare the application and file it with the USPTO, monitoring it from filing to registration.

Trademark protection is important and the experienced trademark attorneys at Gerben IP would like to help you protect your valuable intellectual property.