Application


The easiest way to monitor your application for trademark registration is to visit this link, enter the 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.

The Examining Attorney is assigned to your application usually after two to three weeks, thereafter it usually 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.

We encourage you to check your email spam folder for any emails from the domain “dbllawyers.com” or call us at 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.

We can make changes to the address of your company, however for almost any other changes, depending on where 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 trademarks@dbllawyers.com 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.

Generally, a trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source 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.

A registered trademark gives you exclusive nationwide rights to a word, phrase, symbol, or design in 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.

The first step is to make sure no one else is using a similar mark in the same “stream of commerce”. You 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.

Yes, always. While you certainly can do a preliminary search yourself using Google or even the Trademark 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.

For goods, “interstate commerce” generally involves sending the goods across state lines with the mark 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).

No – in fact many applicants are taking advantage of the Trademark Office’s “intent to use” (also called a 1b 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.

The ® means that a trademark has been registered with the USPTO and benefits from the national registration, 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.

As long as you pay the maintenance fees after the first five years, after the ninth year, then every ten years 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.

No. A United States trademark protects your brand in the United States and its territories. For international 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 www.dbllawyers.com/international-trademark.

File a trademark in the country where you would like protection. We can file in any country for you, and even 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

A specimen is a real-world example of how you are using your trademark on goods and/or in your services you 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.

 

Office Actions


“Office Action” is the term for any kind of question the Trademark Office might have while reviewing your 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.

A disclaimer is language you put on file with your application acknowledging that you will not possess 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.

You ordinarily have 6 months from the date the Office Action issues to provide a response.

 

Types of Trademark Office Actions


This is usually a very minor issue that is easy to overcome.

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.

This is usually a very minor issue that is easy to overcome.

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.

This is a moderately complex issue but one that can often be overcome.

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.

This is a moderately complex issue but one that can often be overcome.

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.

This is usually a very minor issue that is easy to overcome.

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.

This is a complex issue that may be difficult to overcome.

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.

An advisory 2(d) refusal will issue if the Examining Attorney feels that there is a likelihood of confusion 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 response anyway.

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.

This is a complex issue that may be difficult to overcome.

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.

This is a complex issue that may be difficult to overcome, but there are different ways of approaching it.

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.

A third option to overcome a descriptiveness Office Action is to amend your application to seek registration 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.

A mark that is seen as primarily a surname is basically treated the same as a descriptive term. See above.

This is a moderately complex issue but one that can often be overcome.

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.

Congratulations! Your “intent to use” application has been approved. In order to get a full registration, 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).

After the 5th anniversary of your registration, you must demonstrate that you are still using the mark in 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


To keep your trademark, you must file a Declaration 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.

During the examination of a pending trademark application or after a trademark has registered the owner may 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.

U.S. Customs & Border Protection (CBP), a bureau of the Department of Homeland Security, maintains a 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.