We’ll schedule a consultation via telephone, Skype or Zoom to go over the mark that you’d like registered. During our consultation, I’ll perform a trademark viability analysis of the type of mark that you’d like federally registered.
The first and foremost criteria for selection of a mark is that the chosen mark is distinct and not generic or too descriptive. We’ll discuss the strength of the mark that you’d like federally registered. You’ll want a mark that you can defend against others who might try to use the same or similar mark.
Once you’ve signed our engagement form, we will conduct a comprehensive federal, state, and common law search. Our search of federal and state trademark databases is done utilizing software provided by CORSEARCH. Corsearch is an industry-leading trademark search software that we use on every trademark search. Using a professional-grade trademark search software ensures that your trademark search is as accurate as possible. Our search works to identify any potential issue with your desired trademark prior to making a trademark filing. I will provide you with an opinion memo with the results.
Following our consultation, I will provide you with a questionnaire to complete and will request that you submit a “specimen” of the mark you’d like registered. The USPTO requires specimens because they want to see how the mark is viewed by the public. I will provide instructions on what type of specimen to submit with your application. Once you provide the required information and materials and assuming the mark is available, I’ll prepare and file your trademark application with the USPTO.
A USPTO attorney examines every application for compliance with federal laws and rules. If the application doesn’t comply, then the USPTO will send a refusal letter known as an Office Action. I will draft any responses to an Office Action.
If there are no objections from the examiner, or if you overcome all objections, the examining attorney will approve your mark for publication in the Official Gazette, a weekly publication of the USPTO. If you receive no opposition or overcome any opposition, your mark will be registered.
Congratulations you’re almost there! If the mark is based on a mark that is already used in commerce, and no party files an opposition or requests to extend the time to oppose, the USPTO will register the mark and will send you a certificate of registration. I will mail out your registration certificate with trademark maintenance instructions directly to you.