A trademark is any word, phrase or design–such as your business name, brand name, slogan or logo–that identifies you to the public as the source of your products or services.

In the United States, trademark rights are established through use in commerce, and you obtain certain limited rights in an unregistered trademark you use. However, to secure more expansive rights and increase protection of your investment in a trademark, a federal trademark registration is highly recommended.



TRADEMARK APPLICATIONS

To obtain a federal trademark registration, you must first file an application with the U.S. Patent and Trademark Office (PTO). You can file an application for a trademark you are currently using, or for one that you plan to use in the near future.

If your mark is already in use in commerce, you will need to show proof of use when you file the application. Proper specimens for a product are labels, tags or product packaging. For a mark used in connection with services, advertisements, brochures or web pages promoting the services are acceptable.

If the mark is not yet in use in commerce, you can file as "intent to use", but you will need to start using the mark before the end of the application process, and filing proof of use will incur additional fees.

The application will need to identify the products or services with which you are using (or plan to use in the future) the mark. This identification needs to be somewhat specific (e.g., pants, shirts) rather than general (e.g., all clothing products).

The Patent and Trademark Office classifies products and services into a set of 45 different classes, based on an international classification used by the trademark offices of most countries. The number of classes your products and services fall into will determine the filing fees charged by the PTO during the application process.

If you would like us to assist you with filing a new application, please download the New Application Worksheet, fill out the requested information, and then e-mail the completed form back to our office at trademarks@briangibbons.com. We will then contact you to discuss what further materials will be required.

The standard fee for our services in handling the filing of a basic application covering one class of goods or services is $625 (which includes the PTO filing fee), with an additional fee of $325 for each additional class of goods or services.



TRADEMARK OFFICE ACTIONS

After an application is filed, it is reviewed by one of the PTO's examining attorneys. They will investigate whether any other prior-registered marks might prevent your registration, as well as whether any technical issues need to be dealt with before your application can proceed.

Some applications achieve approval from the examining attorney without the need for further action. In many cases, however, the PTO will raise issues that need to be dealt with before the application can proceed in a letter referred to as an "office action".

If no response is made to that office action (or the issues are not satisfactorily dealt with), the application will not receive approval from the examining attorney. The deadline for responding to an office action is typically six months from the date it was issued. However, if you are already past that deadline, it is sometimes possible to file a petition to revive an application within a limited amount of time.

If you have received an office action and would like us to assist you in filing a response, please contact us, and provide us with the serial number of the application. We will review the office action, and discuss your options for proceeding, at no expense to you.

Office action responses are typically performed on a flat fee basis quoted before we begin any work.



TRADEMARK PUBLICATION

When an application is approved by the examining attorney, it is then published in the PTO's Official Gazette, to give others the opportunity to file any opposition to the trademark becoming registered. This is referred to as the "publication phase".

If a third party has an objection to your application, they can file a notice of opposition, which starts an opposition proceeding before the Trademark Trial and Appeal Board. An opposition proceeding is similar to a court proceeding, and if you do not defend against an opposition, your trademark application will be rejected and you will be unable to register your trademark in the future.

If you would like our assistance in defending against an opposition that has been filed against your trademark application (or you wish to file an opposition against someone else's trademark application), please contact us to discuss the matter further.

Opposition matters are handled on an hourly basis, after a free initial consultation.



TRADEMARK NOTICES OF ALLOWANCE

If an application was originally filed as intent-to-use, the PTO will issue a Notice of Allowance after successful completion of the publication phase.

A Notice of Allowance means that you have six months to file a Statement of Use, showing proof of use in commerce of your trademark. If you are unable to make that filing by the deadline, you can instead file a request for a six-month extension of the deadline. If you do not file either a declaration of use or extension request by the deadline, your application will be deemed abandoned.

If you need to file an extension request, our standard flat fee for assisting you in doing so is $250 (which includes the PTO filing fee) for an application covering one class of goods or services, plus $150 for each additional class.

If you are ready to file the Statement of Use, our standard flat fee for assisting with that is $300 (which includes the PTO filing fee) for an application covering one class of goods or services, plus $150 for each additional class.

After you show use of the mark in commerce (or if you have already proven your use of the trademark earlier in the process), then assuming the PTO has no further issues that need to be dealt with, they will then issue a Certificate of Registration for your trademark, which completes the trademark application process.



TRADEMARK MAINTENANCE

A trademark registration can last indefinitely, so long as the appropriate maintenance filings are made.

After the 5th anniversary (and before the 6th anniversary) of your registration date, you need to file a Declaration of Use, showing that the mark is still in use in commerce on the registered goods or services.

After the 5th anniversary of your registration, you can file a Declaration of Incontestability, stating that you have continuously used the mark in commerce without challenge. This is optional, but grants certain benefits, so we recommend filing this declaration at the same time you file the Declaration of Use.

After the 9th anniversary (and before the 10th anniversary) of your registration date, and every 10 years thereafter, you need to file both a Declaration of Use and an Application for Renewal.

If you are ready to make one of the above filings, please contact us to discuss the matter further. Maintenance filings are handled on a flat fee basis, which will vary based on which filings are being made and how many classes are involved.