Trademark Attorney Services for Your Henderson Business

The top 5 questions Henderson businesses have about obtaining a trademark.

What aspects of my business would benefit from trademark registration?

A trademark registration will protect anything that represents your brand in the marketplace. Business owners commonly register business and product names, slogans, and logos. However, even smells, sounds, and colors can be registered with the USPTO in order to protect your brand from infringement.

Can I file a trademark application if I’m not yet selling my product or offering my service?

If you aren’t using your trademark in commerce at the time of your application filing, you will need to submit an Intent-to-Use form when filing. Once your trademark application has been approved, you will receive a Notice of Allowance. You will then have six months to either submit a Statement of Use, showing that you are now selling your goods or services, or file a six month extension. You will be able to file five extensions before you must submit a Statement of Use. Failing to do so will result in cancellation of your trademark registration.

What is an Office Action, and how do I respond if I receive one?

Throughout the registration process, it is not uncommon for the USPTO to issue Office Actions. Your examiner may issue an Office Action for a variety of reasons, often to seek clarification or ask for additional information. You may also receive an Office Action to let you know your application has been rejected. If you receive an Office Action from the USPTO, be sure to respond appropriately and in a timely manner. Most actions require a response within six months, but time is often needed to find and compile documents and information to respond. Work with a U.S. attorney to ensure that the Office Action receives a proper response. As a part of our reasonable, flat rate trademark registration services, the attorneys at Gerben IP will even respond to non-substantive Office Actions on your behalf.

Why are trademark applications typically rejected by the USPTO?

One of the most common reasons for rejection from the USPTO is that the mark is confusingly similar to an existing registered mark. A trademark application will also be rejected if the mark is generic or descriptive, like Good Pizza or Shoe Store, for example. Marks including surnames or geographic descriptors often face more rejections from the USPTO as well.

How often do I need to renew my trademark registration?

For new trademark owners, your first renewal deadline will occur between five and six years after the date of approval, then again between the ninth and tenth year. After that, you will need to renew your trademark every ten years. Keep in mind that you can only maintain trademark ownership if you meet these renewal deadlines and you continue to use the mark as it appears in your trademark application.

Common misperceptions about trademarks heard around Henderson, NV.

I should trademark my business name but copyright my logo.

A trademark is anything that represents your brand in the marketplace. This includes your business name, but also your product names, slogans, logos, and more. Contact Gerben IP to learn which aspects of your business could benefit from trademark registration.

The USPTO will conduct a trademark search, so I do not need to do my own search prior to filing my application.

An examiner at the USPTO will conduct a comprehensive trademark search once you’ve submitted your application and paid your filing fees. However, if the examiner finds a confusingly similar trademark is already in use, your application could be cancelled and your filing fees lost. Work with an attorney to conduct a comprehensive trademark search prior to filing with the USPTO. Then, if a similar mark is already in use, you can make changes to your own mark or create a new one that will not cause a likelihood of confusion in the marketplace.

Another business has already registered the trademark I wish to use, so I cannot register it myself.

This may not necessarily be true. The USPTO may still approve your application if it doesn’t not cause a likelihood of confusion in the marketplace. Dove, for instance, is a well-known trademark for both a chocolate company and a soap maker. Because consumers aren’t likely to confuse the two companies, they were both able to obtain trademark registration. If you are unsure about the availability of your preferred mark, contact Gerben IP.

The USPTO will ensure that no one is using my registered trademark without my permission.

The USPTO examines applications and makes determinations about approval, but they do not police your mark once it’s registered. As the owner of a trademark, monitoring your mark is your responsibility. Fortunately, many trademark attorneys, including those at Gerben IP, offer trademark monitoring services. They will alert you to any potential infringement and take action to stop it quickly.

I can begin using the ® symbol as soon as I submit my application to the USPTO.

The symbol ® indicates that your trademark has been registered with the USPTO. Using it prior to obtaining trademark registration is a fraud and could result in the rejection of your application. While your trademark application is pending with the USPTO, use ™ instead.