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garbis law, llc
intellectual property law
filing a trademark application
A trademark is a word, name, symbol, design, sound, or combination of all of those that identifies the source of the goods and/or services. Mere use of a mark, even without registration, can help you establish limited trademark rights, but a federal trademark registration takes your business and brand to a different level.
Without a federal trademark registration, any right to the mark will likely be limited to the state you are operating in, or even a narrower geographical area within that state. By securing a federal trademark registration, you provide constructive notice to potential users on a national level and a subsequent user cannot assert a good faith use because they were not aware of the mark. As a result, your rights are not geographically limited and you can generally stop someone with a confusingly similar mark, regardless of where they are located in the United States.
application process
01.
search.
prior to applying
A search is performed to determine what potential marks, if any, may block your application. Once completed, an opinion will be provided analyzing the risks and likelihood of approval.
02.
Filing.
Submit application
After the search has been completed and the results reviewed with you, the application will be filed and the waiting game begins (typically 3-4 months before hearing back).
03.
Examination.
yes or no?
Within 6-7 months of submitting the trademark application, it will be assigned to a specific Examining Attorney at the USPTO for review. From there, it can go a few different ways.
04.
Office Action.
Not approved.
If the Examining Attorney issues an Office Action, this means that your application has not been approved. This does not necessarily mean that all hope is lost. You typically have 6 months to submit a response to an Office Action.
05.
publication.
Approved.
If no Office Action issues, or one is overcome, the application will be approved for publication. This opens a 30 day window for others to oppose your application if they feel it would be damaging to their brand.
06.
registration.
time to celebrate.
If approved and no oppositions were filed, the application will continue on to registration. The total time for the entire trademark process can take anywhere from 9-12 months if there are no issues, to multiple years if there are.
F.A.Q.
Please browse through some of the most commonly asked questions I receive about trademarks.
how much does a trademark cost?
When should i file a trademark application?
Yesterday.
Getting the process started as early as possible will provide the most benefits. A trademark application can even be filed before you have started using the mark, as long as you have a bona fide intent to use it. This essentially allows you to reserve a mark for up to three years after allowance of the application by the USPTO.
Read more: When Should I File?
how much does a trademark cost?
Depending on the type of application you file, the current government filing fee is either $250 or $350 per class of goods/services. If you have multiple classes of goods and/or services within your application, the fees can start to add up, as each separate class requires an additional filing fee.
To receive a flat fee quote including legal fees, please contact me to schedule a consultation.
When is my trademark "in use?"
When you file a trademark application, the form will ask you for two dates of use. One of them is for the date of “first use in commerce,” while the other is “date of first use anywhere.” At first glance, you might think these are the same, and they very well may be. Knowing the difference, however, will allow you to file a more accurate application.
The date of “first use in commerce” is asking when you began using the mark in the sale or transport of goods or the rendering of services in “interstate” commerce between more than one state or U.S. territory, or in commerce between the U.S. and another country. Contrast that to “first use anywhere,” which is limited to local use that does not cross over state lines, and you might end up with two different dates.
Is my mark guaranteed to register?
No. The fact that a trademark application has been filed does not guarantee that it will register. Once submitted, the application is assigned to an Examining Attorney for review. The Examining Attorney will search the USPTO database of identical or similar marks in the same and similar classes to determine whether or not to allow your application. If all goes well during the Examining Attorney’s review, your application will continue on to a publication period, where anybody can oppose it if they feel they would be damaged by your registration. If there is no opposition, then it will continue on to allowance. An opposition can significantly delay you to the point where you might even consider abandoning the application. As you can see, there are a number of factors that come into play when applying for a trademark registration and having an attorney on your side to help you navigate the process can come in handy.
Which is better? State or Federal application?
Typically, the answer here is a federal trademark registration, as it provides stronger protection. There are times, however, when both state and federal trademark applications can, and should, be utilized.
what are common law rights?
Common law rights arise from the continuous use of a trademark without securing a federal registration of that mark. The protection provided by common law marks is geographically limited to the region the mark is being used.
ready to file?
how can i help?
312.952.3085
