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We recommend that our clients have us conduct a Trademark search prior to filing their proposed marks. We conduct a comprehensive search that includes both federal and state trademark applications and registrations. By doing so, you will have an idea of what has been registered or applied for at the federal level as well as in each of the 50 state trademark databases.
Filing a Word-Mark or a Word Plus Design MarkOnce the search has been conducted and you have decided to go forward in the Trademark registration process, you have the option of filing a word mark, consisting only of the literal element of the mark; a word plus design mark, consisting of the logo and any literal elements contained in the mark exactly as it appears in the logo; or you may choose to file both the word mark and the word plus design mark for each proposed mark.
If the mark is going to serve as the branding element of the product, we advise that a word plus design mark is filed. However, if you will be using the proposed mark in situations where the logo will not be used or in situations where you will be using the proposed mark in connection with a different logo, we advise that you register the word mark for the literal element of the mark.
In general, the word mark offers a broader range of protection, however, the branding aspects of marketing the product often require a logo. As such, it is often advantageous to register both the word mark and the word plus design mark for the same Trademark.
As only one trademark can be filed per application, filing both the word mark and the word plus design mark requires filing two separate applications.
Is the mark currently being used in Commerce?A federal trademark will only issue if the mark is currently being used in commerce; however the applicant has the option of filing a trademark application that is not yet being used in commerce. If the mark is not being used in commerce at the time the application is filed, it is said to be an "intent to use application". If an application is filed as an "intent to use" application, it must be converted into an "actual use" application prior to being registered.
What to Expect after Filing Application with USPTOApproximately 4-5 months after filing the application with the USPTO, we will receive a response from an examining attorney from the USPTO who will either (1) accept the application as filed, (2) request additional information, or (3) reject the application.
Once any rejections are overcame the application is published in the USPTO 's' Official Gazette and third parties are given a period of Thirty (30) days to oppose the registration of the proposed mark (the Opposition Period). The USPTO typically issues the Registration Certificate within Twelve (12) weeks of the expiration of the Opposition Period.
If the application goes through the application process without objection/rejection from the USPTO or opposition from a third party, the application process should take approximately Nine (9) to Twelve (12) months to complete.
Once an application is approved and registered, a Registration Number is assigned to the trademark and the trademark owner can then use the ® symbol on advertisements or other printed and / or electronic materials.
A Declaration of Use and associated USPTO fee (stating that the trademark is in continual use) must be filed between the 5th and 6th years after the registration date and then a second Declaration of Use and associated USPTO fee (stating that the trademark is in continual use) must be filed between the 9th and 10th years after the registration date. After the second Declaration of Use is filed, all subsequent Declarations of Use and associated USPTO fees are filed in ten (10) year intervals.