What is a Trademark? 

Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and indicate the source of the goods. Trademarks, unlike patents, can be renewed forever as long as they are being used in commerce. Trademarks are registered with the United States Patent and Trademark Office (USPTO).

 

 

There are times when you may desire a combination of copyright, patent, and trademark protection for your work. You should consult an attorney to determine what forms of intellectual property protection are best suited to your needs.

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How long does it take to Register a Trademark in the US?

According to the USPTO, it takes around 9 months to register a trademark (on average). But, in our experience, there is no ‘average’ trademark application. 

More specifically, our firm can generally prepare and file a trademark application within 24-48 hours as soon as we receive all necessary information from the client. Once filed, the USPTO takes 3-4 months to assign the application to a trademark examiner and for the application to be reviewed by the trademark examiner. Once the trademark application is reviewed by the trademark examiner, the trademark examiner will determine whether the trademark is registrable. 

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If the trademark examiner determines the mark is registrable, then then the USPTO approves and publishes the trademark, which can generally take another 3-4 months. Then it takes around another month for the USPTO to issue the trademark registration certificate. 

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If the USPTO finds grounds for refusing to register a trademark, then it will issue a letter (also called an office action), and request a response from the applicant. If the grounds for refusal contained in the USPTO’s office action are non-substantive (say a missing item or description, or a required disclaimer) and can easily corrected, then this office action can be quickly responded to And the application will continue to publication and registration. 

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However, if the grounds for refusal are substantive, then you will need to prepare a substantive response to the office action that overcomes each refusal or satisfies the requirements of the office action. The amount of time this can take varies widely. 

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Additionally, if you file a trademark application on an ‘intent-to-use’ basis, (i.e., you are not currently using the trademark) then you will need to file a ‘statement of use’ in order to prove current use of the mark before it can register.

Please contact us today for a free consultation and we can provide you a more accurate estimate as to how long it may take to register your trademark.

 

Should you Trademark Your Name or a Logo (or both)?

There’s no easy answer, and it may be a question of your priorities. If you want to protect both your word mark (name) and design mark (logo) as trademarks you'll need to submit a separate trademark application for each name or logo. You can also file a trademark application for a logo which contains your word mark.

 

Depending on your trademark and the goods and services covered, (as well as whether there are any potential competitors using similar marks) there may be advantages or disadvantages to filing for only the name or only the logo or both. Please contact us for a no nonsense analysis that will fit your budget.

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What is a USPTO Office Action?

A USPTO office action is a written communication from an examiner at the United States Patent and Trademark Office (USPTO) to the applicant of a trademark application, which either rejects one or more of the claims in the application, or raises objections or requirements for the application to be considered for grant. The office action typically includes an explanation of the reasons for the rejection or objections, and may require the applicant to provide additional information or make amendments to the application in order to overcome the issues raised.

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Does an Office Action Mean I was Denied Registration?

Receiving an office action from the USPTO does not necessarily mean that your trademark can't be registered. An office action is a routine step in the trademark registration process and is issued when the examining attorney has identified an issue or concern with the application. The action will typically explain the reason for the rejection or objection and may require the applicant to provide additional information or make amendments to the application in order to overcome the issues raised.

 

The applicant has the opportunity to respond to the office action by providing evidence or arguments to overcome the rejection or objections. If the applicant can successfully overcome the issues raised in the office action, the application will proceed to the next step in the registration process. If the applicant is unable to overcome the issues raised in the office action, the application may be denied registration.

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What Happens if You Don't Respond to an Office Action?

If an applicant does not respond to a USPTO office action within the time period specified in the action, the application will be considered as abandoned by the USPTO. Once an application is considered abandoned, the applicant loses the right to pursue the trademark and will not be able to revive the application. If the applicant wants to pursue the patent after the application is considered abandoned, they must file a new application and start the process over again, incurring additional fees.It is important to note that the USPTO offers a 6 month grace period to revive an abandoned application if the delay in response was unintentional.

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Do You Need an Attorney to Apply for a Trademark?

Yes, if you are a foreign-domiciled trademark applicant. You must be represented at the USPTO by an attorney who is licensed to practice law in the United States.

 

No, if you are a trademark applicant domiciled in the United States or its territories. Nevertheless, we strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the registration process.

 

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Who Runs this Website? 

BuildingBlockchainBrands.com is a service of the law firm of Falcon Rappaport & Berkman LLP (“FRB”). FRB is a full-service law firm with offices in New York City and Long Island, NY.  FRB is a full-service law firm with additional practice groups including:

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• Intellectual Property (Transactional and Litigation)

• Emerging Technology

• Corporate & Business Law

• General Commercial Litigation

• Real Estate

• Trusts & Estates

• Taxation (Domestic & International)