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Continued from Trademark Page
The Trademark Process
To obtain a federally registered trademark, it is necessary to file a trademark application in the United States Patent and Trademark Office. Before filing the trademark application, however, it is advisable to first conduct an extended trademark search to determine whether your preferred trademark is available for your use, and the search will help determine whether your use of the mark would infringe on the trademark of another. This is helpful even if you do not plan to seek a registered trademark. If you learn through the search that another company is already using a similar mark, you might be encouraged to choose a different trademark for your product or business.
We can perform an extended trademark search of the federal, state and unregistered marks to determine whether there are other uses of the same or similar marks that might cause confusion and help you to avoid infringement problems in the future. If the search reveals no confusingly similar marks, we can prepare and file an application for a state or federal trademark to begin the process of obtaining a registered trademark. The trademark application specifies the goods and services that you intend to promote using the mark. We can file a federal trademark application for you even if you are not currently using the mark in commerce, as long as you have a genuine intent to begin using the mark in commerce within the near future. We strongly recommend that you start the trademark process by having us perform an extended trademark search.
Examination and Prosecution
After filing, the Trademark Office will assign the application to a Trademark Examiner - an employee whose job it is to review trademark applications. The Trademark Examiner will conduct his or her own search to look for existing trademarks that are similar to your mark. Then, based upon what is found in the Trademark Examiner’s search, the Trademark Examiner might either allow or reject the trademark application.
If the trademark application is allowed by the Trademark Examiner, the trademark application will usually “issue” as a trademark within a few months. If any aspect of the application is rejected, however, the Examiner will issue an “Office Action” explaining the reason(s) for the rejection. Some rejections are based on existing trademarks, that the Trademark Examiner believes are too similar to the existing trademarks, other rejections or objections arise when the Trademark Examiner contends that the application violates some Trademark Office rule or regulation.
In response to an Office Action by the Trademark Examiner, the applicant generally has a number of options. Once the Office Action is reviewed by you and your attorney, an appropriate Response can be prepared and filed. The Response may include an “amendment” to change the scope of the good or services that the trademark application seeks to protect. The Response may also address any other matters raised by the Trademark Examiner in the Office Action with legal arguments as to why the application should be approved. This process ends once the trademark application is allowed or the applicant decides to discontinue prosecution. If the applicant’s position is sound, allowance can generally be obtained with few prosecution steps.
Once an application is allowed, a trademark will generally issue within a few months. Federally registered trademarks are valid for 10 years, and unlike patents, are continuously renewable provided the owner of the registration or its attorney files periodically an appropriate affidavit or declaration of continued use or excusable nonuse under Section 8 of the Trademark Act, and an Application for Renewal under Section 9 of the Trademark Act prior to expiration.
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If you have further questions, please refer to our Frequently Asked Questions (FAQs) , or contact us to get started.
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