I.     WHY SHOULD I GET A TRADEMARK? WHAT ARE THE BENEFITS?          

Let's say you are starting your business or have a new product and wish to protect the good will of the company or product name, logo, symbol, design, slogan, or even the overall look of your product to distinguish it from those sold by others. Obtaining a federal registered trademark issued by the United States Patent and Trademark Office ("USPTO") will afford you the protection and exclusive right to legally prevent others from using a similar name or likeness that identifies your product or business. Trademarks are everywhere from large corporations like Nike and Federal Express, to small mom-and-pop shops.  Doing so protects trademark owners in the event that someone tries to confuse the public by presenting a very similar name, logo or slogan.  Also see this article.

View the Trademark Basics Video Here.                                                                                                                                
                                                                                                     

II.           THE TRADEMARK PROCESS

Although filing a trademark may not initially appear to be as complicated as the patent application process, the trademark application process is laden with subtleties in which those not proficient in the area of trademark law would be oblivious to.  This is why it is necessary to consult with an attorney that specializes in this area of law to apply for your application.  Go to our copyright page for additional information regarding copyrights.

Based on your proposed mark, we can assess its strength and determine the right approach for registration.  If we determine the mark can be trademarked, we highly recommend that a comprehensive search is ordered.  Although it is not required, a comprehensive search will help assess if there are others that may have already claimed the name or rights in it.  If you blindly apply for a trademark without conducting a search and later find that others have used or are using the mark, then you are essentially placing your mark at a higher risk of rejection, opposition and/or litigation.  Further, you should be aware that not all searches are created equally.  With us, you can be assured that your trademark search will include a comprehensive search including the USPTO, State, Common Law, Internet and Domain Names.

Once we obtain the results from the search, we analyze them and you will receive an opinion from a trademark attorney.  We will then prepare and submit the application to the USPTO.  As with patent applications, trademark applications are reviewed by an examiner at the USPTO and will either be accepted or rejected.  Typically the examiner will issue an OFFICE ACTION.  NOTE: Non-attorney trademark filing services DO NOT respond to office actions and will leave you stranded.  As such your mark will not get issued.  We will prepare all responses to any and all office actions so that your mark will issue.  Mr. Cohen has consulted clients, prepared, and filed hundreds of trademark applications and office actions.

We perform the following trademark services:

• Comprehensive US and common law searches
• International searches
• US registration
• Foreign Trademark Registration and Madrid Protocol Application
• Office Action responses for simple formalties or to respond to complex rejections such as likelihood of confusion
• Statement of Use
• Section 8 and Section 15 Declarations
• Trademark Appeals
• Trademark Oppositions
• Petitions
• Trademark Opinion Letters
• Resolution of US Customs seizures based on trademark infringement

III.   POST-REGISTRATION

Once you have received your trademark registration, the work is not finished.  You must continue to use your trademark in interstate commerce to keep it alive to avoid abandonment of your mark.  Further, the USPTO requires that certain filings are made and fees are timely paid.

Section 8 Declaration

This declaration must be filed at the end of the 6th year after the date of registration, and again at the end of each successive 10 year period after the date of registration.  The Section 8 can be filed one year prior to the six year deadline.  The purpose of this declaration is to show the USPTO that you are still using the trademark and have not abandoned it.  A fee must be paid per class of goods and services and a specimen proving the continued used must be filed along with the declaration.  If you fail to timely file the Section 8 Declaration, your application will become abandoned (although there is a 6 month grace period).  This is why it's critical to contact an experienced trademark lawyer to properly and timely file this declaration. 

Section 15 Declaration

This declaration is an optional filing, but is highly recommended.  The Section 15 Declaration is a sworn statement claiming that your trademark has gained certain "incontestable" rights.  What this means is that the "incontestable" registration status prevents third parties from contesting the validity of your trademark in future proceedings.  As a defense to trademark infringement, defendants typically claim that your trademark is invalid.  Although there are some technical exceptions, filing this declaration prevents any infringer from using this defense.  This declaration can only be filed after the mark has been in continuous use for at least five consecutive years subsequent to the registration date of the trademark.  The Section 15 declaration must be executed and filed within one year following a 5-year period of continous use of the mark in commerce.

For additional information see:

http://www.uspto.gov/web/trademarks/workflow/prfaq.htm

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