How do I check the status of my application?
serial number we sent you when we filed your mark, and then find the “status” indicator on the resulting page
and click on the “documents” tab to review your application information in detail.
When should I expect to hear back about my trademark?
takes 2-6 more months for the Examining Attorney to take any kind of action. As your attorney of record, our
firm will alert you of any questions or concerns issued by the Trademark Office.
Why haven’t I heard back from my attorney?
855-705-6414 to arrange a time to discuss your concerns.
How do I make an appointment with an attorney to discuss my questions or concerns?
Please call us at 855-705-6414 to arrange a time to talk.
What if I want to make changes to the mark after it is filed?
you are in the registration process, it can be very difficult to make changes to your application once it has
been filed, and most changes are not accepted by the Trademark Office. If you only need to change the phone
number or address on the application, please email us at firstname.lastname@example.org with the new information. Otherwise,
please reach out to our firm at 855-705-6414 to schedule an appointment with an
attorney to discuss your particular options.
What is a trademark?
of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that
identifies and distinguishes the source of a service rather than goods. Despite this technical distinction,
the word “trademark” is often used for either a service mark or a trademark.
Why register a trademark?
connection with specific goods or services. It also gives you access to federal courts and a streamlined
statutory system in disputes and the ability to more easily expand your protection internationally.
What is the trademark application process?
should have a trademark search done by a professional company and the results reviewed by an attorney. The
second step is to prepare and file a United States trademark application with the Trademark Office. The third
step is to monitor the progress of the application as it gets reviewed by the Trademark Office and respond to
any questions the Office has during that review.
Should I have a trademark search completed prior to filing?
Office, an attorney search and review will include things you might otherwise miss, including phonetic
equivalents and marks that seem to be different than your, but under the DuPont Test (what the
Trademark Office uses to determine if your mark can be registered), are similar.
What is “use in commerce”?
displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves
providing a service to customers in another state or rendering a service that affects interstate commerce
(e.g., restaurants, gas stations, hotels).
Do I have to have products or services offered for sale before I file?
application) application track, which allows a mark to be filed without showing use at the time of filing.
This preserves your rights on the trademark register as the first filed mark, and gives you time to put
marketing and branding together. Once you begin using the mark we will subsequently file a “statement of use”
to supplement your application with an example of how you are using the mark. This “intent to use” application
can be extended by filing extension requests every six months up to five times (for a total of thirty six
months) before the application pendency runs out.
What do the ® and ™ symbols mean?
notice and other benefits of that registration. A TM or SM means that a company is
claiming common law rights only. These are limited to the geographic region you serve. Note however the
TM and SM can be used right away to claim ownership of some basic common law rights
while your mark is pending registration. You may not legally use the ® until your mark is registered.
How long do trademarks last?
after that the mark can last forever. We can handle these maintenance requirements so you don’t have to
remember or manage them. We also offer trademark enforcement monitoring.
Does my trademark protect my brand across the entire world? Is there such a thing as an
protection you must file an application in the particular countries where you would like such protection.
Contact us for information on how we can help you do this and visit our webpage on international trademarks at
How do I get international protection?
file a unified application under the Madrid Treaty in more than 90 countries with one application and one
legal fee (however each country requires their own filing fee and docketing fee). Please visit www.dbllawyers.com/international-trademark
What is a specimen?
are offering. For goods (products), an acceptable specimen shows the mark on the goods themselves or the
packaging material of the product. For example, this would not be the front of a t-shirt showing the logo
(that is a design and “art”, and possibly copyrightable), instead, to show brand, it would be the label in the
collar, a hang tag, or the wrapper in which the clothing is sold.
For services, advertising and/or marketing materials for the service are
acceptable specimens, which are often website screenshots showing the mark on the same page as a description
of the services
What is a Trademark Office Action?
application. These can range from a question about distinctions between your mark and another mark in the
system to requirements to edit the language you use to describe the goods or services in your application.
Because Examiners receive bonuses for initial Office Actions, it is very common (more than 70% of all
trademarks in the US) to get a first Office Action. Contact us for help with responding to your Office Action.
What is a disclaimer?
exclusive rights to a term or design used in your mark, apart from your mark as shown. It is merely a
statement that the disclaimed words or designs need to be freely available for other businesses to use in
marketing comparable goods or services. An example would be for the made up mark “Kidrite Shoes”, the owner
would have to disclaim the word “shoes” if they were selling shoes, as that word merely describes the goods
being sold and could not therefore be exclusively owned by the trademark owner.
What is the deadline for my Office Action?
Types of Trademark Office Actions
A disclaimer will be requested if the Examining Attorney feels that a portion of the mark cannot be approved.
Most often, the disclaimer will be of a portion of a mark that is descriptive of what you do or sell. For
example, if you wanted to register the trademark, “FroYo Kingdom” for a frozen yogurt shop, you would have to
disclaim the term “FroYo” because it basically describes what you are selling.
Receiving a disclaimer requirement does not necessarily hurt your overall chances for approval. Usually,
merely disclaiming the disputed portion of your mark will overcome the issue. However, if the challenged term
is critical to your brand, you may want to refuse the disclaimer and present arguments that the term does not
need to be disclaimed. We typically recommend accepting a disclaimer unless the term is critical to the brand.
If you accept the disclaimer, the trademark will not be altered, and the application will usually be approved
with the disclaimed portion still included. However, there will be a note added to the application noting
which portion of the term is disclaimed. This means you would not be able to use the trademark to challenge
other companies’ use of just the disclaimed term.
Amendment to the Identification of Goods/Services or International Class Number
A goods or services description amendment will be requested if the Examining Attorney feels that a portion of
the listed goods or services is unclear, overly broad, or would fit better in a different group. We typically
recommend accepting a proposed amendment unless doing so would adversely impact the scope of your rights or
would not accurately describe your products or services.
Submission of a substitute specimen/ Drawing
A substitute specimen or drawing will be requested if the Examining Attorney feels that the specimen or
drawing is not compliant with technical requirements, or if the specimen does not clearly show the applied-for
mark used in connection with the applied-for goods or services. We typically recommend submitting a
replacement drawing or specimen. However, the replacement specimen typically must have been in use as of the
time that the original specimen was filed.
Significance of the mark / Request for Additional Information / Translation Statement
The Examining Attorney will request additional information about the meaning of a term in the trademark or
about your goods or services if she feels that there may be a potential issue if the term is interpreted in a
certain way. Responding with more information is easy, but we usually want to consider the ramifications of
the additional information on the application before determining the best way to respond. Sometimes saying too
much or responding in the wrong way can cause bigger issues to arise.
Amendment to description of the mark
A mark description amendment will be requested if the Examining Attorney feels that the verbal description
of a deisgn mark is unclear or incomplete. We typically recommend accepting a proposed amendment unless
doing so would not accurately describe the design.
Likelihood of Confusion (Section 2(d))
A “Section 2(d)” or “Likelihood of Confusion” refusal will issue if the Examining Attorney feels that there
is a likelihood of confusion with a prior-filed trademark registration. Two marks do not need to be
identical in order to cause a likelihood of confusion, nor do they need to be used in connection with
identical products or services. If the marks are too similar and are being used in connection with related
products or services, the Examiner may find a likelihood of confusion. The inquiry is therefore highly
subjective and reasonable minds often will differ about whether two marks are confusingly similar.
In order to overcome a Section 2(d) Office Action, you need to submit an defense of your mark that analyzes
all of the relevant likelihood of confusion factors as they apply to the marks at issue.
Advisory Refusal (Prior Filed Pending Application):
with a prior-filed application that is still being reviewed. But because that prior application has
not yet registered, the issue is only advisory and does not require a response, but you can submit a
If you decide not to respond to this advisory issue (and assuming you have addressed any other
non-advisory issues), your application will be suspended until a final decision is made to register the
cited application or until that application is cancelled.
If you decide to respond to this advisory issue to avoid the additional delay of a suspension, you can argue
that the prior application does not create a likelihood of confusion. If those arguments are successful, the
application will proceed. If not, the application will be suspended as discussed above.
Ornamental Use Refusal
An “ornamental use” refusal will issue if the Examining Attorney feels that you are using the mark in a
merely ornamental or decorative manner. The typical example is when the mark is displayed on the front of a
t-shirt. Because a trademark must serve as an indicator of the source of a certain product or
service, displaying the name on the front of a shirt dies not necessarily indicate who made the shirt. While
there are a few different ways to respond to such a refusal, we typically recommend trying to file a
substitute specimen that shows the mark being used in a more source signifying manner.
Merely Descriptive/Generic/Deceptively Misdescriptive
A descriptiveness or genericness refusal will issue if the Examining Attorney feels that the mark describes
some aspect of your products or services, or if the term is entirely generic as applied to your products or
services. For example, “hoppy” would be descriptive in relation to beer, whereas “beer” is generic in
relation to that same product. Marks can also be refused as geographically descriptive, which often occurs
when a geographic place name is included as part of the mark (as in the case of “New York Pizza”).
A company can overcome a descriptiveness Office Action in two ways, though the first is much more effective.
You can trademark a descriptive term if you have established “acquired distinctiveness.” The most effective
means of establishing acquired distinctiveness is through five years of substantially exclusive use. The
other means of arguing against a Section 2(e) Office Action is argue that the mark is not actually
descriptive because, for example, consumers in that industry might understand the term in a different way.
The Supplemental Register
on the Supplemental Register. While a registration on the Supplemental Register does not provide all the
protection of a registration on the Principal Register, it still has the following advantages:
You can use the registration symbol ®
Your mark will be protected against future registrations of a confusingly similar mark;
You can bring an infringement suit in federal court; and
The registration can serve as the basis for a filing in a foreign country under international treaties.
We typically recommend amending to the Supplemental Register if the mark is clearly descriptive and you have
not been using it for five years.
Failure to function as a trademark
A trademark must serve as an indicator of the source of a certain product or service. Occasionally, the
specimen submitted will show the mark presented in a different context, for example, not referring to it as
a brand name or displaying it in a very insignificant manner. In such cases, if possible, we recommend
trying to submit a substitute specimen that better shows the mark being displayed to the public as a brand
name or source signifier.
Notice of Allowance/ Statement of Use
you now have to demonstrate that you have starting using the mark. You have six months to do this, or you
can request an extension of time for an additional six months (which can be further extended for up to three
years, if need be).
Renewals: Section 8 & 15
order to keep the registration going. We recommend filing both the section 8 and the section 15 affidavits
at this time, which gives the additional benefit of “incontestability” to your mark. After that, you will
need to file renewals every ten years.
Post Registration Actions
When do I have to renew my trademark?
of Use and/or Excusable Nonuse under between the 5th and 6th years after the
registration date. Subsequently, you must file a Combined
Declaration of Use and/or Excusable Nonuse
on or between the 9th and 10th-year anniversaries after the registration date,
and every 9th and 10th-year period thereafter. Click here to file now.
How do I transfer my trademark to my company or another person?
change or some owners transfer their ownership from themselves as individuals to an entity (like their own
LLC). This should be done by filing an Assignment
with the USPTO with the Assignments Recordation Branch. Click here to file an Assignment now.
How do I register my trademark with US Customs and Border Protection?
trademark recordation system for marks registered at the United States Patent and Trademark Office. Parties
who register their marks on the Principal Register may record these marks with CBP, to assist CBP in its
efforts to prevent the importation of goods that infringe registered marks. The recordation database
includes information regarding all recorded marks, including images of these marks. CBP officers monitor
imports to prevent the importation of goods bearing infringing marks, and can access the recordation
database at each of the 317 ports of entry. To
register with CBP now, click here.