Staton Law Firm

Processing Your Applications

So what actually happens when you file a trademark application or a copyright application? Does your attorney simply fill out a form and send it in? How come it takes so long to receive the registration? This section will answer these questions and more. Before I get to that, though, I must issue a legal disclaimer. The process described below is for information purposes only and does not constitute legal advice nor does your reading this information mean that you are my client or that I am your attorney. Let's begin.

Copyright Application Process

To file a copyright application, you need to fill out the applicable two-page form and file in in the Copyright Office with a copy of the work that you want to copyright. The exact requirements vary depending on the type of work that you want to register, but the process is the same.

Trademark Application Process

The trademark application process is long and often complicated. Generally, the United States Patent and Trademark Office—trademark attorneys refer to this Office as the “PTO”—will not even look at an application for 4–6 months and a registration typically does not issue for 12–18 months. Fear not, however, as trademark rights in the United States are based on use, not on registration.

Pre-application

Before filing a registration, we often advise clients to screen their proposed trademark for potential conflicts. Because trademark rights are based on use, if another person used the same or similar mark before you, your application for your trademark may be denied. We tell clients to think of 10 potential trademarks and submit them to us for screening. We also ask you for the class of goods or services in which the marks are to be used. Examples include software or apparel or banking services. We then screen the names by conducting basic searches and return to you the list of trademarks that survived the screening process. From that new list, we ask you to choose one or two of your favorites trademarks for a full search.

Full search? Yes, we conduct a much broader search of your trademarks using large commercial databases. These databases search throughout the United States and the Web for prior uses. After the database completes the search, we review the results and send you our opinion on whether or not you should proceed with your application. Please note that while this pre-application process is not required, we highly recommend that you take advantage of it.

Application

There are typically 2 types of applications that you can file: a use-based application and an intent-to-use application. Use-based means that you are already using your trademark in connection with your goods or services. Intent-to-use means that you are not using your trademark in connection with your goods or services now, but that you will use your mark in the near future. This section presumes that you want to file a use-based application.

Your application must contain six items to be accepted by the Patent and Trademark Office. First, you must include the word mark, stylized mark, or combination mark that you want to register. Second, you must include the classification for the goods or services in which your mark is to be used. Third, you must include the date of your first use of the mark anywhere. Fourth, you must include the date of your first use of the mark in commerce. Fifth, you must include a specimen that shows your use of the mark in commerce. Sixth, you must include a filing fee.

After filing your application, an examiner will review it for any errors or legal deficiencies. If the examiner finds something wrong with your application, then they will issue an office action detailing their findings. You have the opportunity to respond to the examiner's objections and you can correct any mistakes or otherwise conform your application to satisfy the examiner's objections. After fixing any errors or overcoming the examiner's objections or if the examiner finds no errors and has no objections, then the examiner will publish your application for opposition.

Opposition Period

After the examiner publishes your application for opposition, any person who thinks that they might be damaged by the registration of your trademark can file an opposition to your application. An opposition must be filed within 30 days from the date of publication. If a person files an opposition, then you and that person proceed as if that person had filed a lawsuit in federal court, with some slight modifications. For example, no trial is held. Rather, the parties submit trial briefs to the Trademark Trial and Appeal Board.

If no person files an opposition, then the PTO will register your trademark and send you a certificate of registration with a shiny badge.

Post-Registration

A trademark can be protected for as long as you use it. Of course, there are some formalities that you must complete to keep your registration. The first formality must be met in the time period between year 5 and year 6 after the date of your registration. During this time, you must submit a statement of use to the PTO that certifies, under oath, that you are still using your trademark in connection with the goods or services listed on your registration. You must file another statement of use in the time period between year 9 and year 10 after the date of registration. During this time period you must also file an application for renewal. Assuming that the PTO accepts your renewal application, you must file a statement of use and an application for renewal every 10 years afterwards.

We Can Help

Registering trademarks can be a confusing and frustrating process, but we're here to help. With our low fees, years of experience, and commitment to protecting your business assets, we can make the process run smoother, quicker, and efficiently. Give us a call at 704.464.3903 and we'll get your application under way.

The information contained on this web site is provided for educational or entertainment purposes only. It does not create an attorney/client relationship between you and Staton Law Firm, PLLC. Choosing an attorney is an important decision that should not be made solely on the basis of advertisements. You should know that Larry Staton Jr. is licensed as an attorney in North Carolina and Florida.