Choose your mark.

The words “brand” and “logo” are often used when talking about a trademark.  It is how the public will identify you with your products or services.  It can be made up of words, designs, or overall look and feel (also known as trade dress).

Examples:  Nike, Inc. owns the rights to use the word NIKE on their products; the word NIKE is a trademark. Nike, Inc. also owns the rights to use the swoosh symbol on their products.  That design symbol is another trademark.  Tiffany LLC owns the rights to use the robin's egg blue in their retail stores.  That color in their stores is a trademark. 

Run a preliminary or comprehensive trademark clearance search.

Before you invest too much money into your brand, you should run a clearance search to make sure that no one else has already registered your trademark.  Although you can choose to run the search yourself, given the technical nature of the searches, it is advisable to retain an experienced trademark attorney to run one for you.  Depending on your budget and your needs, you may only opt for a preliminary trademark search to knock out whether there are any well-known registrations in existence with your exact trademark.  If you plan on pushing your trademark for large scale operations right away, running a more comprehensive trademark search is advisable. A comprehensive search will take into account not only the mark itself as it is written, but also variations that are similar to it.

File your application

You can file a trademark application with the USPTO (United States Patent and Trademark Office).  A registration with the USPTO will afford you trademark protection across the United States.  There are also international filings available.  Contact Nasser Law for more information if you have questions on international filings.

Examiner Assignment

Approximately 1 to 3 months after you file your application with the USPTO, an examining attorney will be assigned to your case.  The examiner’s job is to make sure your application is filled out as accurately as possible according to their rules and that there are no conflicting marks that would bar your registration.

Office actions

After the Examiner reviews your application, he or she may issue an office action.  An office action is an initial refusal.  Some office actions are more innocuous than others, so don’t be alarmed if you receive one.  You will have up to 6 months to respond to an office action.  If you receive one, however, and you are not currently represented by an attorney, please call us to either advise you on how to address the office action or to respond for you.  In many cases, it is best to hire an attorney to respond to the office action for you so that you do not inadvertently give up any of the rights you are seeking under your trademark application.

Approval and Publication

If your application meets all the requirements, and there are no bars to your registration, the Examiner will approve your trademark for publication.  That means that a notice will print in the Trademark Official Gazette (TMOG) telling the public of your plans to register your trademark. Approximately one month after approval, your trademark will publish in the TMOG.

The public will have 30 days from the publication date to oppose your trademark application if they feel they will be harmed by your registration.  If no one opposes your mark, you will receive a registration certificate a few months later.

Occasionally, someone will oppose your trademark application.  This usually happens when the owner of a similar prior trademark registration, which did not show up in the Examiner's trademark search, believes that your mark is so similar to its mark, that your trademarks will likely be confused by the public.  If you receive a notice of opposition, please contact us right away as you must formally respond before the Trademark Trial and Appeal Board (TTAB) to protect your application.

Renewals

Your trademark registration will require maintenance documents about every 5 years.  Usually you or your attorney on file will receive a courtesy notice from the USPTO before it becomes due.