Yes, Daly Law provides trademark search, application, office action, continued filing, and protection services. We highly suggest working with a licensed attorney when filing for a trademark to receive experienced legal advice and reduce errors. However, we know that some businesses can’t afford legal fees on top of government filing fees. It is our mission to provide as much free information and resources as possible. This blog is intended to assist individuals filing on their own. If you would like to work with Daly Law throughout this process or run into issues, feel free to contact us.
Things To-Do Before You File
1. Pick a name, slogan, and/or logo you want to register.
If you are a brand new business, you should create a unique and strong brand name to register as a trademark. If you are already "in business", you may already have a brand to work with.
2. Determine the class you will file under.
You can learn more about selecting the appropriate class for your trademark here.
3. Determine the goods and/or services you will offer or already offer through your brand.
You can learn more about listing the appropriate goods and/or services on your application here.
4. Perform a free or comprehensive trademark search.
You can learn more about free and comprehensive trademark searches here.
Filing Your Application
Once you complete the steps listed above, you are ready to proceed with filing your trademark application. Your application and all related documents can be filed online using the Trademark Electronic Application System (TEAS). The USPTO website provides a step by step process for filling out your application.
Review of Your Application
After the USPTO determines that you have met the minimum filing requirements, an application serial number will be assigned and your application will be forwarded to an examining attorney. (This happens roughly 6 months after the filing date.) The examining attorney will then determine whether your application will move on to the next steps of the process.
If the examining attorney believes changes need to be made to your trademark application or that your mark is confusingly similar to another mark that is already filed or registered, an office action will be issued. Examples of office actions include:
The description of your logo needs to be amended to be more clear.
You need to clarify certain goods and/or services on your application.
You need to differentiate your trademark from a registered trademark in a corresponding class.
Responses to office actions must be filed within 6 months. Failure to response to an office action with all requested changes will result in an "incomplete response" and your trademark application will be denied.
Publication & Oppositions
If you correctly respond to any office actions and all outstanding issues are resolved, the examining attorney will approve your mark for publication in the Official Gazette.
Once the trademark is published, any interested party has 30 days to oppose the registration of your mark by filing a statement of opposition, or requesting an extension of time to do so. If no oppositions are filed, your mark will proceed to the next step of the registration process.
If you filed your application based on an “intent to use”, approximately six weeks after the end of the publication period, your mark will receive a “Notice of Allowance.” A Notice of Allowance means that your mark has been approved to proceed to registration, pending your filing of a Statement of Use. The deadline to file a Statement of Use is 6 months from the date of receiving the Notice of Allowance.
If your trademark application was filed based on “actual use,” and your mark has not been opposed by any parties, your trademark will get registered approximately six weeks after the end of the opposition period.
A trademark must be renewed every 10 years from the registration date to avoid expiration. You are also required to file a declaration of use between the 5th and 6th year after your mark has been registered, in order to keep your mark active. The declaration of use must contain a specimen or proof of current use of your mark on your identified goods. If the trademark has not been used and the declaration of use is not filed, the registration will be cancelled.
To avoid invalidation of your registration, you should take proper steps to prevent others from using your trademark or a mark confusingly similar to yours, without your permission. That can be done by searching your trademark for infringement and taking appropriate action to stop infringers.
It’s important to remember that if your trademark changes over time, you cannot make changes to your registration, and will need to file a new application for the new mark.