Trademark Law

Registering a trademark is a very specific legal procedure, and it is important to follow the guidelines to the letter to protect a company’s property. While it is possible to proceed on one’s own, it isn’t advisable; a trademark is the symbol by which a company or product is associated, and it is essential to protect that symbol.

This is a basic guideline to the steps required to register a trademark; a qualified trademark attorney can help make sure that these steps are properly executed.

Perform a Search of the USPTO Database

This search is to ensure that the mark under consideration is not already registered or under consideration.

Be Clear in Intent

Before the registration process starts, the potential owner should clearly define these three elements of their trademark:

  • The mark itself
  • What product(s) and/or service(s) the mark represents
  • Which person or legal entity has the right to claim ownership of the mark (whether or not sales of goods and services have begun)

Each application for registration must include a clear and distinct image of the trademark under consideration. It must also include specification of each product and service that the trademark will be used with. This means specific items, not merely choosing one of the 45 classes defined by the trademark office.

The trademark application, including a copy of the trademarked image when appropriate, is filed at the United States Patent and Trademark Office. Once approved, it will also appear in the Official Gazette, which is a weekly publication used to provide public notice of a pending registration issuance. Finally, if no other companies oppose the application, a certificate of registration will be issued.

Each applicant must define whether the trademark they want to register is already in use at the time the application is filed or is only intended for use in the future.

Determining Appropriate Trademark Application Fees

Each trademark must have a separate application with corresponding fees. The required fees depend on the number of classes of goods and services within the application.

All application fees are non-refundable, regardless of whether the USPTO approves the application, so make sure everything is in order beforehand.

Why hire a trademark attorney?

It is more important than ever to retain an experienced trademark attorney. As technology advances, more legal gray areas are created, such as in the case brought against Lanham Act.

A trademark attorney can assist at any stage of the process, including:

  • Performing database searches for possible conflicts with pre-existing trademarks
  • Filing procedures during the process and legal response in the case of refusal of a trademark application
  • Protecting the owner of the trademark in the case of violations
  • Providing a defense in the case of actions against a company or individual by another trademark owner

Learn about who owns the trademark for Santa Claus