Intellectual Property | Trademarks

TRADEMARK REGISTRATION

Your business name, logo, and/or the product you sell is perhaps a company's most valuable asset. It is essential to protect these valuable assets with a federal trademark registration.


THE TRADEMARK REGISTRATION PROCESS:

1. Conduct a trademark search to determine if the business name, logo, or slogan you seek to register has already been registered.
2. Prepare and file a federal trademark application with the United States Patent and Trademark Office (USPTO).
3. The trademark application will be assigned to an examining attorney at the USPTO (approximately 3 months after filing the trademark application).
4. The examining attorney will review the trademark application and may approve it, or issue an office action.
5. If an office action is issued, it must be responded to within six (6) months to preserve the trademark application.
6. If the application is approved, the trademark is then published for opposition in the USPTO Official Gazette.
7. During the thirty (30) day publication period, the general public may file a formal opposition to the registration of the trademark.
8. The proposed trademark will be granted registration if there is no opposition.

HOW LONG DOES IT TAKE TO REGISTER A TRADEMARK?

The USPTO takes approximately one (1) year to process a trademark application, however, the process can take longer depending on the number of office actions and/or and opposition to the trademark occurs. When the USPTO issues an office action, it is essentially a rejection. Substantive office actions are generally based on defects in the trademark itself and can be difficult to overcome. A typical substantive office action is a “2(d)” refusal, commonly referred to as a refusal on the basis of a “likelihood of confusion”. In this situation, the examining attorney may have made the opinion that a proposed trademark is too similar to a previously registered trademark. Overcoming a “2(d)” refusal requires a persuasive and substantive response citing legal precedent. Non-substantive office actions are issued for technical defects in the trademark application, and as such are usually easier to overcome. The applicant is afforded a time period of six (6) months to respond to either type of office action, or the application will be considered “abandoned” and the applicant’s filing fee will be forfeited.

HOW MUCH IS THE USPTO FEE TO REGISTER A TRADEMARK?

Generally, the USPTO charges a $325 filing fee per international class of goods or services for each trademark.

WHY SHOULD YOU HIRE MONTANAROLAW?

Hiring an attorney is always recommended when filing a trademark application. The process is essentially a legal proceeding with a government agency that will ultimately decide whether you get trademark protection for your intellectual property. Hiring MontanaroLaw to file your trademark provides you with an expedited registration process, as we are equipped to correctly file the trademark application and monitor the application status during examination.

MontanaroLaw is there every step of the way to respond to any office actions and alert you of next steps throughout the process. " Call us today for a free consultation.