TRADEMARKS:

A trademark is a personal property right in a word, device, or symbol used to distinguish your goods from those of your competitors in commerce.  Congress passed the Lanham Act in 1946 to establish a database of registered trademarks and to provide remedies for improper use of any trademark right.  The PTO is the government body that examines and approves trademark applications.  When the PTO grants a trademark application, the trademark certificate gives the owner the right to exclude all others in the United States from using the exact mark or a colorable imitation in a confusing manner.  Because the level of protection provided by the federal government greatly exceeds the protection recognized by the individual states, registering a trademark is crucial for any business that wishes to protect the goodwill generated by the quality of its products and services.

The trademark application process is very similar to the patent application process in that it involves three main steps.  The first step is an initial search that determines whether other trademarks exist that will preclude you from registering your trademark, which is important for several reasons.  First, you should know whether someone else already uses the trademark before you invest substantial time and resources into advertising.  Second, if you find out that another trademark exists that precludes you from registering your trademark, you will not waste money on the preparation and prosecution of a fruitless trademark application.  Third, the information about other trademarks is crucial to drafting the language in your own trademark application.  Following the search, we will provide you with a letter setting forth our recommendations on how to proceed.

If you decide to move forward, the second phase of the application process is drafting the application.  This part of the application requires the most from you, the trademark owner.  At this stage, we will need to learn your understanding of the trademark and how you use it or plan to use it in commerce so that we can categorize your trademark in the proper context.  We may ask you for drawings, pictures, and other information that will help us define your trademark.  We may also ask you to explain the differences between your trademark and trademarks uncovered by our initial search.  We will file the application electronically and will forward you an electronic confirmation.  It generally takes around seven months after filing before the PTO examines the application.

The third phase of the application process is prosecution.  Prosecution refers to the actions taken by the PTO and our responses.  A trademark examiner employed by the PTO reviews the application for compliance with all applicable standards.  The examiner notifies us of any corrects deemed necessary in the application in an “office action,” and we negotiate with the examiner on your behalf.  Many applications involve responding to an examiner’s office action, and some applications involve multiple office actions.  Prosecution takes at least a few months and can last longer, depending on the nature of the trademark and the nature and amount of other trademarks in the industry.

At the end of prosecution, the PTO decides whether to grant a trademark.  If the PTO decides to issue the trademark, we will receive a certificate in the mail that we will forward to you.  If the PTO decides not to issue a trademark, we can appeal that decision to an appeals board and to various levels of federal courts.