A question from new clients arises often. They ask me: what does the process of filing a trademark consist of? Briefly, I will lay out the process we use here at the Roe Law Firm.
First, you must determine whether you need to register a trademark or a copyright. Please refer to the article I previously wrote regarding the differences between trademark vs copyright.
Second, you should have a consultation with a qualified trademark attorney specializing in intellectual property. He should have a discussion with you regarding the nature of your business and the nature of the intellectual property, which you wish to protect. He should also discuss with you an overall comprehensive IP strategy, including trademark surveillance and enforcement. Your attorney should discuss with you the costs of a trademark filing. Our straight forward / nothing's hidden pricing is available for you.
Third, your trademark attorney will perform an extensive search for potentially conflicting trademarks, whether in or outside of your industry or geographic area. International searches are not necessary unless the trademark filing is part of a comprehensive global IP strategy. Global searches can be performed upon request.
Fourth, if a conflicting trademark is not discovered, your trademark attorney will proceed to the next step in the process; if a conflicting trademark is discovered, your trademark attorney will determine if the conflicting trademark has priority over your proposed trademark or if the trademark can be licensed or determine if any potential future dispute can be resolved before it becomes a problem. Your trademark attorney will then provide you with an opinion letter.
Fifth, provided the search does not uncover any conflicting trademarks, which create a prohibition to filing, your trademark attorney will process the trademark filing (application) within 5 days of our retention.
Sixth, the United States Patent and Trademark Office (USPTO) will examine the trademark filing and may approve it or request additional information via an office action. Unlike other law firms and trademark registration service (s) we handle basic office actions at no additional cost (additionally, so as to ensure enforcement of your trademark we also provide one free cease and desist letter should someone else start using your trademark). Most office actions are favorable resolved and the trademark goes on to be registered.
Seventh, there is then a period for others to register oppositions to the filing of your proposed trademark. This occurs infrequently and when it does occur it can often be resolved with the party filing the opposition.
Eighth, the time between the submission of the trademark filing with the USPTO and their recording of the trademark on the principal register is currently somewhere between 6 months to 1 year.
Once, your trademark is recorded on the principal register you may use the Â® symbol (and in fact must use the Â® symbol) in conjunction with your trademark. You must also renew your trademark periodically. If properly renewed, you can maintain exclusive use of the trademark indefinitely.