TRADEMARKS - GENERAL INFO

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WHAT IS A TRADEMARK?

A trademark can be anything that describes your brand. A trademark can be a name, word, slogan, symbol, logo, image, a play on words, a word formed by combining parts of other words that serves to both identify and distinguish a business or product from others in the market. It's intent is to create a brand recognition such that when people see your trademark, they immediately think of your business and the goods and/or services you provide.

Once you have trademarked your business, if someone else makes an attempt to use something similar enough to confuse customers, you have the right to legally protect yourself and stop the other party from using the similar mark. 

Trademarks can be stronger or weaker based on what type of form they take. A good discussion on what makes a strong trademark versus a weaker one can be found on the USPTO website HERE.

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WHAT IS REQUIRED TO REGISTER A TRADEMARK?

Regardless of whether your mark is a word or words, or an image, in order for your mark to be approved for registration by the United States Patent and Trademark Office (USPTO), the mark must be distinctive and in use in commerce and the marketplace. If you have a mark that is not yet being used in commerce, you can still obtain a trademark by making a good faith argument in writing to the USPTO and use the symbol at some point in the future. There are a variety of reasons why you may want to initiate the trademark registration before using the mark in commerce.

There are four different categories of distinctiveness for trademarks: descriptive, suggestive, fanciful or arbitrary, and generic.

Suggestive and arbitrary marks are considered inherently distinctive with their eligibility being determined by whoever is first to register them.

Descriptive marks, including geographic terms, and personal names must have an established secondary meaning in the consumers' mind in order for approval to be granted.  You cannot trademark a term that is considered generic.

Depending on the mark that you choose, application for trademark can be anything from rather straightforward to complex and confusing requiring the persuasive skills of an attorney.

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WHY ARE TRADEMARKS IMPORTANT?

It is a good idea to register the name of your business as a trademark along with any slogans, tag-lines or logos that you want people to readily associate with only your business.  In the event that another business tries to use the same or similar name, logo or slogan, you will have legal recourse to force them to cease using your mark. A trademarked name marks all of your products and services as yours and no one else's and can also protect you from counterfeit products.

Trademarks are usually registered at the federal level, so they are recognized in all 50 states. State registration is possible, but it provides a much more specific level of protection.

With a trademark, you retain exclusive rights to mark your products, service offerings, brochures, etc. in a way that identifies your brand, with no one else being allowed to use your symbol, name, or slogan in your particular category of the goods and/or services you provide.

Trademarks are also used as a way of protecting consumers. When businesses are responsible for any products or services bearing their trademark, they tend to take more pride in products. To maintain a good reputation, trademarked companies will often work harder to provide quality services and products. Trademarks are an important part of running a successful and client-focused company.

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WHAT IS A TRADEMARK SEARCH?

Before an application is made to register a trademark with the USPTO, we highly recommend performing a comprehensive trademark conflict search to assess the risk of your mark conflicting with another mark which could result in costly fines, penalties and legal action, as well as the need to change your company name, logo or slogan. By performing this search in the beginning stages of your business lifecycle, you will be able to steer clear of costly roadblocks before they become issues. Our comprehensive search not only looks at marks in the federal registry, but we also look in state registries, social media and other online presence that may create a conflict.

In contrast, a basic "knock-out" search simply looks for exact matches or very similar matches of trademarks registered or in the process of being registered in the USPTO trademark registry. It does not look for same or similar marks in other areas such as social media, state trademark registries or internet companies.

 

CAN YOU HELP ME SELECT PROPER SPECIMENS?

The following specimen guides should be of assistance in selecting proper specimens.

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CLASS 25 SPECIMEN GUIDE

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CLASS 35 - 45 SPECIMEN GUIDE

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OFFICE ACTIONS​ - GENERAL INFO

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WHAT IS AN OFFICE ACTION?

Once your initial application for trademark registration is filed with the USPTO, it will be assigned to an Examining Attorney ("EA") who will carefully review your mark and compare it to others that have already been registered or are pending. The EA will also critically look at your mark to be sure that it is, indeed, eligible for registration. Examples of issues that could cause concern are a) the mark is confusingly similar to another mark, b) the mark is merely descriptive of the goods or services it is sold in,  c) the specimens submitted are insufficient to show how the mark is being used in commerce or for several other reasons. 

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WHAT IS A SUBSTANTIVE OFFICE ACTION?

In some cases, the examining attorney will identify an issue with a trademark application that requires a detailed legal-based argument as a defense to overcome a potential refusal. These are most commonly received when the examining attorney believes that the applicant's mark is similar and thus confusing to another mark already registered, or pending registration, merely describes the goods or services being sold, or is simply ornamental and not operating as a trademark identifying the source of the goods/services. Additionally, there are other reasons the examining attorney may raise questions that require a written response or defense before the examining attorney can move forward with the application. These are sent to the applicant in a substantive office action. These actions are substantive because they require more than a simple one- or two-line response. Instead, they require a comprehensive and persuasive legal argument to overcome the examining attorney's reasons for potentially refusing the mark. 

 

These responses, if needed, are not included in our base price. Pricing for this service is usually quoted at a fixed fee amount that is dependent on the complexity of the office action. 

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SUBSTANTIVE VS. NON-SUBSTANTIVE OFFICE ACTIONS. WHAT'S THE DIFFERENCE?​

The actual document you receive from the USPTO can be quite overwhelming at first glance as it will be full of legal arguments, refusal text and case law. In reality, some office actions are fairly simple to resolve and more administrative in nature. These are called non-substantive office actions. Others are more complicated and are much more difficult to resolve. These are called substantive office actions and usually require the experience of a lawyer to make sound legal arguments and defenses while providing relevant evidence to overcome the EA's refusal.

 

Office actions can be both challenging and confusing, but any refusals you receive can, in many cases, be overcome. If you received an office action, you have a limited time in which to submit your response to the USPTO. Contact The Law Offices of Michael Rada to learn how we can help respond to both substantive and non-substantive office actions on your mark's application.

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WHAT IF I DON'T RESPOND TO AN OFFICE ACTION ON MY TRADEMARK APPLICATION?

You have three months from the date the office action was issued to respond. If you do not file a response with the USPTO on or before the due date, your trademark application will terminate and be marked abandoned. At this point, with some exceptions, your trademark application will no longer be eligible to be registered. For the most part, after this occurs, the only way to seek registration of that trademark is to start the process from the beginning. 

As mentioned, there are a few exceptions in that it may be possible to revive an application for a limited time after the office action due date if the failure to respond to the office action was unintentional. 

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You can learn more about this situation on the USPTO website by CLICKING HERE. 

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CAN YOU HELP WITH MY OFFICE ACTION?

Yes! Don't delay if you have received an Office Action as there is only a limited time to file a response. Let us prepare and submit your response to a USPTO office action to give you the best chance of getting your trademark approved.

• Non-Substantive Office Actions  

• Substantive Office Actions

• All Pricing Fixed Fee

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Our Office Action Services Include the Following:​

• Carefully crafted response tailored to your individual trademark and office action.

• Review of similar marks for office actions, approvals and denials by the USPTO.

• Consultation with attorney to discuss your mark and the office action response.

• We will file the office action response on your behalf.

• We will keep you up to date on progress and status once the response is filed.

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WILL MY APPLICATION GET A SUBSTANTIVE OFFICE ACTION?

The answer to this question can only be answered on a case by case basis. By performing a comprehensive search before starting the application process, we can assess your application's risk, and thus the relative probability that your application will be met with a substantive office action. Please see the section above on comprehensive search for more information. 

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INFORMATION ABOUT OUR TRADEMARK SERVICES

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HOW MUCH DOES IT COST?

Our prices are competitive and affordable. All prices are fixed price. Please set up a consult or send us your information using the "Let's Get Started" button above so that we can discuss your needs and optimal pricing that works for you.

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WHY THIS PRICE COMPARED TO OTHERS ON THE INTERNET?

• We provide full and comprehensive service and do better, and have no hidden fees all at a reasonable price. 

• You get what you pay for. With us you work with a licensed attorney and can actually talk to your attorney. You won't deal with paralegals and we are not hidden behind a website.

• We keep in touch with you and provide status on your application every step of the way!

• We are consistently called by applicants who need help cleaning up their registration that was botched by one of the online services costing these clients far more in the end than they would have paid if they just contacted us first.​

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WHAT'S INCLUDED?

• Detailed intake process to minimize the chance of errors

• Knock Out Search in all plans

• Comprehensive search report and risk assessment

• Written analysis of search results 

• Your Trademark Application Filed with the USPTO

• Consultations with your licensed attorney

• Responding to informal office actions

• Time-tested process to ensure efficiency and client satisfaction

• All electronic process for speed and efficiency. No need to mail documents.

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WHAT'S NOT INCLUDED?

Responding to substantive office actions or oppositions from third parties are not included in the initial fixed price fee. Not all applications receive office actions from the USPTO, but many do.

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Also, if your application is a 1(b) "Intent to Use" application, you will be asked to pay an additional USPTO fee ($100 per class as of Jan, 2021) when the Statement of Use certification is filed later in the application process.

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Although more uncommon, other additional fees could be incurred during the application process.

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CAN I GET A COMPREHENSIVE TRADEMARK SEARCH?

• Absolutely. This is critical and we highly recommend this level of search.

• Your comprehensive search results are analyzed by a licensed attorney, before we recommend moving forward with a trademark filing.

• The comprehensive search includes: federal registry, websites, social media, state registries, various databases, and common law trademarks.

• The search is a predictive tool. Your search result will include an opinion letter as to how likely your trademark application will be met with an office action by the USPTO examining attorney. We do this by assigning a risk factor to your potential application. A "high risk" application is one that we feel has significant impediments and thus will likely be met by at least one substantive office action that will be difficult to overcome. A "low risk" application is one where we believe that no significant impediments exist and that the application should have little issue being approved. Most applications are rated as "medium risk." These are those applications where we believe impediments may exist, but that they more likely than not can be overcome by a solid response to the substantive office action. 

• While the search is a valuable predictive tool, it is never a guarantee as the final say as to what impediments exist and whether they can be overcome lie exclusively in the hands of the USPTO attorneys.

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​YOU'RE AN ILLINOIS ATTORNEY. HOW CAN YOU HELP ME IF I AM IN A DIFFERENT STATE?

Trademark law is covered by Federal Law, which means that an attorney who is properly licensed in any state can represent clients throughout the entire United States. We routinely represent clients from all over the nation efficiently and without issue as everything is handled by telephone calls and email. There is never a need to see your attorney in person, but when the personal touch is needed, we are happy to jump on a video conference.

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HOW LONG DOES THE PROCESS TAKE?

In most cases, you will receive your search report within 7-10 business days of providing the requested information. The trademark application process can take between 13-16 months depending on what additional requests the USPTO examining attorney may make. Keep in mind that as soon as your application is submitted you accrue at least some trademark protection as your mark will now appear in the USPTO database as a pending mark, with protections over any similar later marks that may appear.

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CAN YOU GUARANTEE MY TRADEMARK WILL REGISTER?

No. Nobody can. However the comprehensive search option will go a long way to better understand what you may be facing in your application and surface any potential conflicts that may exist.

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DO YOU TAKE INFRINGEMENT AND LITIGATION CASES?

No. Because our focus is on helping trademark and servicemark owners navigate through the confusing waters of the trademark application process, we concentrate on clients with that need. We do not take cases involving trademark infringement or litigation matters.

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