Total TM Process
Our TotalTM service makes the trademarking process efficient and clear while making sure all your needs are met. Learn more about the steps we take below.
Before trademarking anything for your business, it’s crucial to identify any potential conflicts. Since Trademarks can cover a Word, Name, Phrase, or Logo - Many companies may need multiple trademarks to be protected. Our legal team prepares for trademark filing by identifying any similar trademarks that may create a problem or opposition when filing.
After the potential issues have been identified, we file for trademarks and your trademarks are immediately considered “pending” by the USPTO. You can now use the ™ symbol.
Examination occurs typically within 3 months of the trademark being filed. If there are no issues barring registration, the application is approved and your assets are trademarked! If there are issues from the USPTO, the attorney has 6 months from the filing date to respond. This is where a legal team can really help as they may be able to quickly address the issues with the USPTO.
Approximately 1 month after the trademark is filed, the pending trademark is filed with the USPTO Official Gazette. If a legal representative of another party believes the trademark would be damaging, they can file an opposition with the Trademark Trial and Appeal Board. Additionally, another party can file an “extension to Oppose” which would allow them additional time to oppose the filing.
If the trademark application was submitted with specimens of use, then the trademark application is approved. If the application was filed as an Intent-to-use application, “Evidence Specimens” must be submitted within 6 months This means that assets getting trademarked that were not yet in commercial use with a photo, contract, or other business trade document to submit during filing need to still complete the registration process once the application has been approved.
Once your trademark is completely registered you can begin using the Federal trademark symbol. This provides many additional benefits on a national level with your trademark. Between the 5th and 6th year since registration, the trademark must be renewed with updated evidence of the assets being used. The second renewal is between years 9 and 10 and the trademark must be renewed every 10 years after that. Properly maintained trademarks can last indefinitely as opposed to other IP protections that have a finite lifetime.
Trademarks have specific requirements in order to be approved by the USPTO. A Trademark must be distinct and be used in commerce while not confusingly similar to a mark used by another party. Confusing right? What this means is that generic language can’t always be used, existing brands and trademarks have protections from copying them or potentially confusing their customers. An example of this may be Skechers creating shoes that are the same shape and color of Adidas’ trademarked shoes. This is why Conflicts Research can be so crucial to the trademark process and prevent you from filing something that may never get approved.
In order to register a trademark, the assets being registered must be unique. You are often unable to trademark generic business names that use common words or industry-related terms. A trademark is intended to identify the source of a good or service. A good example of this is the product name “iPhone”. That is a unique name that is now synonymous with Apple, so trademarking an “eyePhone” would be considered too similar.
There are a number of ways that a trademark can help your business and typically when you need them is when you least expect it. Trademarks can provide leverage in potential lawsuits from competitors making claims against your business. This goes the other way around as well. If you identify a competitor that is copying your brand or other marks, a Trademark can allow you to prevent further use or potential customer confusion. Trademarks can also be renewed and are relatively easy to maintain which makes them a valuable Intellectual Property tool.
Verify compliance with common industry practices
For those who have evidence of trademark infringement, or have received a cease and desist letter, we can also help.
It is essential that those involved in a trademark infringement case seek counsel from a trademark lawyer, as the stakes and penalties can be enormous. EmergeCounsel has extensive experience in litigating trademark infringement cases, and we have successfully negotiated and litigated trademark issues for a wide variety of clients. Contact us today for a trademark strategy session.