10 Step U.S. Trademark Process

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(1) INTAKE.

  • Share what you want to protect via the Trademark Easy Application Maker™

  • I will confirm with you potential search parameters and/or trademark(s) based on the information you provide

  • I will also provide you with estimated costs and a representation agreement needed to proceed to the next steps

(2) RESEARCH.

  • If you elect to conduct a search, I will conduct further research based on the parameters authorized

  • The search may review U.S. Federal & State (and perhaps other countries if elected) trademark registers as well as certain internet use where trademark owners may have gained rights through use

  • You will receive a report 5-7 business days following payment outlining search results and potential obstacles to registration

(3) ANALYSIS.

  • Following receipt of report, you can let me know if there are any questions, and we can assess whether or not to proceed with a trademark application

(4) PREPARATION.

  • I prepare an application based on your instructions and related analysis

  • You will receive a draft application for review and signature

(5) FILING.

  • Upon receipt of your signature, I will file your application on your behalf in the U.S. Patent and Trademark Office (USPTO) or relevant agency

  • After filing an application, you can seek protection in many other countries and use the benefit of this filing date within 6 months

(6) PROSECUTION.

  • USPTO: About 8-10 months after filing (currently times are slow!), an examining attorney reviews your application

  • I monitor status, communicate with the USPTO as applicable, and keep you apprised of your application

  • On issues that may arise and require additional legal analysis, I contact you, inform you of any issue, and provide any related fee estimate

  • Filings are updated in this stage as necessary or abandoned

(7) OPPOSITION PERIOD.

  • Following approval by the examining attorney, your application is published

  • I will inform you of this period

  • Third parties have opportunity to object to application

(8) PROOF OF USE.

  • Proof of use and dates of first use in U.S. commerce are necessary to obtain a U.S. registration

  • Use-based applications provide proof of use with application, intent-to-use applications provide following publication when a “Notice of Allowance” is issued

  • I will let you know when it is time to assess your use/dates of first use and we can work on filing proof or extending the time period to do so

(9) REGISTRATION.

  • If approved, your application becomes registered!

  • Congratulations!

  • Important benefits afforded under law including legal presumption you are the owner and your mark is valid

  • Can use registration symbol - Ⓡ

  • U.S. Registration is listed in the USPTO database as public notice to anyone searching trademarks

  • Registration can last forever, so long as you continue to use your mark in commerce and make appropriate filings between the 5th/6th year, 10th year, etc.

  • Can use as a basis to file in other countries

(10) UPKEEP.

  • Maintain trademark and its registration through use in commerce

  • Consider watch services to review U.S. register for any applications filed that may be similar to yours

  • Proof of use between 5th and 6th year of registration

  • Actively police marks

  • Can record U.S. registration with U.S. Customs and Border Protection to aid in stopping importation of goods with an infringing mark