If your familiarity with the legal system is crime shows on TV, you may think of prosecution as taking someone to court- as in “Shoplifters will be prosecuted”.
But the word literally means to pursue or accompany. With this understanding, trademark prosecution is simply following a course of action to its completion. In other words, once an application to register a mark is filed, the prosecution refers to following the progress of the application and responding to any challenges, until the trademark is either registered or abandoned.
This is the process by which a mark is evaluated for registrability. Selection refers to an attorney reviewing the trademark to determine its strength, based on level and class, and then proposing changes if needed to the trademark under consideration.
Trademark clearance searches are reviews of common law marks, meaning unregistered, as well as pending, abandoned, existing, and expired trademarks to see if there are any potential roadblocks to registering your mark.
Searches run anywhere from $250 to several thousand dollars, depending upon the level of confidence you want to achieve. We generally charge about $500 , including both fees and out of pocket costs, for a fairly thorough search that includes the federal and all state trademark databases, as well as Internet and non-registered uses. Note that simply searching the trademark office database is not sufficient. Trademark rights accrue from use, not registration, so that someone else may have superior rights even though they never filed to register their mark.
One option is to simply file a trademark application (cost about $550 through our office), and let the trademark office do the search for you. In fact, that is what many people choose to do. They just file for registration, use the mark, and then see what happens. If someone sends them a cease and desist letter, they choose another mark. That is a risky process, but that is what most people do. It just depends on your tolerance for risk.
A trademark specimen is a sample of your trademark as used in commerce. The USPTO has some examples of acceptable specimens here. In most cases, you will be required to show that you are using your mark in real life, and the specimen is real-life evidence of how the mark is being used in the marketplace with the goods or services. This will show what consumers are seeing when they consider your product, and how the trademark connects the product or service with the brand.
The USPTO calculates fees on a per class basis. If the mark covers several classes, then fees will need to be paid for all classes covered. The USPTO fee information page can be a fun and engaging read for anyone interested.
There is an electronic filing system, TEAS, and depending on the options selected, the USPTO fees will be $225 or $275 per mark per class.
Attorney and/or paralegal fees will apply if filing through a legal firm.
No. Trademark filing services market themselves as cheap alternatives to attorneys that will file your application to register a mark for a low flat fee plus any associated costs the USPTO would charge.
These services take a complex process and treat it like an item on an assembly line. But applications need to be properly selected and cleared, prepared, and then followed up on through the publication and any challenges that result. None of this can be expected when paying less than $100, as several services advertise.
Every trademark is tied to a product (goods) or service. The USPTO separates these into 45 classes: 34 for goods and 11 for services. Using properly crafted descriptions of goods and services upfront minimizes delay and avoids non-substantive office actions requiring modifications. The USPTO maintains a searchable trademark ID manual where you can use pre-approved descriptions in drafting the identification of goods and services.
No. It’s very important to pay attention to drafting the identification of goods or services. Once the application is filed, the identification is practically frozen. It may be possible to clarify some items or itemize a broad description, but the general rule is that the original identification of goods/services can’t be broadened.
Use of the ™ symbol means the user is claiming rights to the mark with respect to the good and services which the mark represents, but it hasn’t been registered with the USPTO. That may mean the registration is pending, or it may mean only that the user is claiming rights in a common law sense.
The ® symbol is used only for those trademarks that have been registered with the USPTO.
Generally, from 9 months to several years, but many applications are fully processed within a year.
If there are no objections to registration, the mark will be approved for publication in the “Official Gazette”, which the USPTO publishes weekly. A notice of publication will be sent stating the date of publication. Once published, any party who believes it may be damaged by registration of the mark has 30 days from the date of publication to either file an opposition to registration, or a request to extend time to oppose. If no opposition is filed, or the opposition is unsuccessful, the application proceeds to the next stage of the registration process.
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette and has consequently been allowed. It does not mean the mark has registered yet. It’s just another step on the way to registration. Notices of Allowance are only filed for applications that have a filing basis of intent to use a mark in commerce.
A statement of use is a form stating the date the mark was first used, the date the mark was first used in commerce (meaning in business conducted across international or state lines), a declaration that you are now using the mark in commerce, and a filing fee.
Once a notice of allowance has been received, you have six months to either file a statement of use, or request an extension of time to file a statement of use.
Once the statement of use is filed, the USPTO will review the statement, and either send an office action if there are still any requirements to be satisfied, or if approved, your mark will be registered within two months.
The Registrant may sue in federal court regardless of diversity.
The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.
The registrant may use the circle R registration symbol: ®.
The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d).
Registration is constructive notice that the owner of the mark has the right to use the mark throughout the entire U.S., even if the mark is not being used in a specific geographical area. 15 U.S.C. § 1057(c) and 15 U.S.C. § 1072. This means that the owner can prevent a person or entity from using the same mark or a confusingly similar mark anywhere in the U.S. unless the other mark was used before the date of first use of the registered mark.
Registration is prima facie evidence that the registered mark is valid, the registrant owns the mark and has the exclusive right to use the mark in commerce. 15 U.S.C. § 1057(b).