Business Patent Law, PLLC

Trademarks and Service Marks

Trademarks and Service Marks: Title 15 of the United States Code

There are slight differences between the law of Trademarks and the law of Service Marks:

In the most general terms, United States Registration grants the owner the right to prevent others from palming off a potential infringer’s goods or services as those of the Federal Registrant. Very importantly, only the owner or licensee of a Federal Registration can legally affix the symbol ® near of the mark.

Under current law, a wise domain name owner will also pursue the appropriate Trademark or Service Mark registrations.

Trademark Registration Procedures

If you are interested in securing a Trademark/Service Mark, the following information outlines the steps associated with securing the experienced services of Business Patent Law, PLLC to obtain your Trademark/Service Mark.

The USPTO charges filing fees for each International Class in which you seek registration. Those fees and the Nice Agreement’s listing of International Classifications can be found on the USPTO.gov website.

Sometimes, an Application for Registration requires professional drawings.  Business Patent Law, PLLC does represent creative Trademark/Service Mark owners who use the services of their own draftsman.  If necessary, a professional draftsman prepares the required drawings depicting the Applicant’s Trademark/Service Mark. Business Patent Law, PLLC contracts with a professional draftsman for this purpose.

An Application for Registration of a “sound” Trademark/Service Mark is more expensive than other types of Applications for Registration.

Prior to conducting an Availability Search, rendering an Availability Opinion and preparing and filing an Application for Registration of Trademark/Service Mark, Business Patent Law, PLLC can provide an estimate of costs associated with the filing of the Application for Registration.  Business Patent Law, PLLC requires an initial retainer prior to preparing and conducting an Availability Search, preparing an Availability Opinion and/or filing the Application for Registration in the USPTO.

Step One – Availability Search

Conduct an Electronic Federal Trademark Availability Search

Word Mark Search

This search is the most straightforward type of availability search. By way of illustration, Counseling The Creative® is a Word Mark.

Combination Word and Design Mark – Electronic Only Search

This search is more difficult than a Word Mark search, but less arduous than a Design Mark search.

By way of illustration, this:

is a combination Word and Design Mark.

Design Mark Search

This search is more complicated than a Combination Work and Design Mark search. By way of illustration, this:

is a Design Mark.

More Extensive and Expensive Availability Search

Depending on your company’s needs, an extensive search can be conducted that can uncover international, State or common law Trademark/Service Marks. Extensive searches are more expensive than Word Mark, Combination Word and Design Mark and Design Mark searches, but less expensive than pre-trial searches.

Do-It-Yourself Availability Search

You can, as the creative intellectual property owner, conduct your own availability search — but not all intellectual property searches are created equal. An inexperienced or less-than-thorough search can result in being denied the Registration, after incurring the expense of making the Application for Registration.

Step Two – Determine which Type of Application for Registration to File

In-Use Application for Registration

If the Mark is already used in interstate or international commerce, an in-use Application for Registration can be filed in the USPTO.

Intent-to-Use Application for Registration

If the Mark is yet to be used in interstate or international commerce, an intent-to-use Application for Registration can be filed in the USPTO.

An intent-to-use Application for Registration requires more USPTO fees and more attorney time and is more expensive to file in the USPTO.  Additional fees associated with an intent-to-use Application for Registration are:  within six months of the issuance of a Notice of Allowance, either an Allegation of Use or a Request for an Extension of Time to File an Allegation of Use must be filed in the USPTO. To determine what your USPTO fees will be, visit USPTO.gov.

Step Three – File the Application in the UPSTO and Wait for the Trademark Examiner’s Office Action

In approximately 6-9 months after the Application is filed in the USPTO, Business Patent Law, PLLC receives a UPSTO Office Action that includes a Notice of Allowability or a Refusal to Register the Mark.

Approval – For an in-use Application, if the Trademark Examiner approves the Application for Publication in the “Official Gazette,” and no other person opposes registration of the Mark, in approximately 4-6 months after publication for Opposition in the Official Gazette of the United States Patent and Trademark Office, the Applicant should be in possession of the US Trademark Registration.  For an intent-to-use Application, if the Trademark Examiner approves the Application for Publication in the “Official Gazette,” and no other person opposes registration of the Mark, in about 3 months after publication for Opposition in the Official Gazette of the United States Patent and Trademark Office, the Trademark Examiner will issue a Notice of Allowance.  Within 6 months subsequent to the Notice of Allowance, the Applicant must file either a Statement of Use of a Request for an Extension of Time in which to file a Statement of Use.  Within 2-4 months after the Statement of Use is filed, the Applicant should be in possession of the US Trademark Registration.  There are attorney’s fees associated with the post-filing phase of an Application for Trademark/Service Mark Registration.

Refusal – When a Trademark Examiner refuses to approve the Application for Publication in the “Official Gazette” or refuses to issue a Notice of Allowance, Business Patent Law, PLLC can prepare and file a Response in the USPTO. This document is a factual/legal argument attempting to convince the Trademark Examiner of his/her erroneous reasoning in refusing to register the Mark.  The more arguments made by the Examiner, the more counter-arguments the Applicant must set forth in rebuttal.  If the counter-arguments are successful, the procedures set forth in the “Approval” section above are followed. There are attorney’s fees associated with the post-filing phase of an Application for Trademark/Service Mark Registration.

If the Applicant’s counter-arguments are not successful, Business Patent Law, PLLC can discuss potential strategies and costs associated with filing an appeal to the Trademark Trial and Appeal Board.

Madrid Protocol International Trademark Applications

The Madrid Protocol is a Treaty that allows the Applicant to file an international Trademark/Service Mark Application in multiple jurisdictions through the filing of a single Application via the USPTO. Importantly, the international Application for Registration can be filed in a single language.

If the Applicant desires to file a Madrid Protocol International Trademark Application, Business Patent Law, PLLC can discuss those costs with you.

If you have any other questions on Trademark/Service Mark registration, please contact me to make an appointment.

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