News / January 5, 2016

4 Steps to Protect Your Trademarks

Clients often ask us: What is involved in registering a trademark? We are happy to define and simplify the process for you – there are four basic steps: 1. Trademark Clearance What is a trademark…

/ Written by Catherine Cavella

Clients often ask us: What is involved in registering a trademark? We are happy to define and simplify the process for you – there are four basic steps:

1. Trademark Clearance

What is a trademark clearance? This is a critical first step in the registration process where a trained trademark professional researches and analyzes your proposed trademark to determine how available the mark is for use and registration. The benefit is obvious – proper clearance of your proposed trademark prevents you from investing time and resources in a mark that may get you sued or cannot be secured.

2. Preparing and Filing a Trademark Application

Once your trademark is cleared, a trained trademark attorney prepares your trademark application based on your goals and the results of the trademark clearance and analysis. The more time, thought and analysis put into crafting your application and trademark registration strategy, the greater your potential opportunity and value.

The owners of the most valuable brands invest in high-level trademark attorneys to develop strategic, integrated trademark strategies.

Once you have reviewed the application prepared by your trademark attorney, you sign off and the attorney submits the application on your behalf. Your attorney may enable you to sign and have the trademark application submitted electronically.

The application is submitted to the United States Patent and Trademark Office (USPTO) along with filing fees of approximately $300 per trademark class paid electronically, and a confirmation of the trademark filing is sent back to the filer, with a time-stamped filing date.

The time-stamped filing date is the official priority date for your trademark application. Once your trademark is officially registered, your rights to your trademark revert back to that filing date. Any application filed later that is in conflict (even an application time stamped one minute later) is suspended or refused based on the filing date.

3. Prosecution Phase and Official Registration.

You may receive an initial refusal from the USPTO called an Office action, or you may not – it depends on many factors including USPTO policy and the individual examiner assigned to your case.

A thorough trademark clearance search and analysis enables your attorney to prepare your trademark application with the goal of avoiding potential Office actions. There are no guarantees and trademark examiners vary widely, however proper clearance and analysis prepares your attorney to better argue against an Office action, which can often be overcome.

I have practiced trademark law for 25 years and examiners are becoming stricter as more and more applications are filed. Many trademark applications may still go through without one, however it is prudent to expect and prepare for at least one Office action.

Once your trademark is officially registered with the USPTO, your trademark attorney will notify you and provide your printed certificate of registration.

4. Trademark Registration Maintenance

Unlike patents and copyrights, trademarks never expire. However, your trademark registrations will expire unless they are maintained. You may reapply as long as there has been no lapse in use, however, you will lose your priority. Letting your trademark registration expire is likely to harm you – and may prevent you from regaining registration of your mark.

Even if you succeed, it will cost you much more to reapply than to maintain your registrations.  Your trademarks are valuable assets – don’t let them lapse!

How do I maintain my trademarks?

You must prove you are using the trademark with a filing in year 5
You must renew and prove you are using your trademark every 10 years thereafter, in years 10, 20, 30, etc.
There is no limit to how many times you can renew your trademarks

Ready to dive in?

We are here to answer all your questions.

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