Once hired, the first step TAF Legal takes is to conduct a comprehensive clearance search. TAF Legal will also discuss factors such as descriptiveness and likelihood of confusion, for example. The next step is to file a trademark application with the USPTO. It currently takes approximately 10 months before an Examiner looks at your application. The Examiner may issue an Office Action, to which you 3 months to respond. If you overcome any Office Action with your response, you will receive a Notice of Publication, and your trademark will be published in the Official Gazette. Other parties will have 30 days (plus extensions) to file an Opposition to your trademark. If nobody files an Opposition, congratulations, you should expect to receive your digital registration certificate soon!

In the United States, priority is based on first use in commerce. Other jurisdictions may have a first to file policy. If you file an Intent to Use application, you can establish a priority date based on that application if you use the mark before another user and do so continuously.

If you have a good faith intention to use the mark for goods or services, you can file an Intent to Use application. Such an application requires additional filings within six months of receiving a Notice of Allowance. You are also permitted to file a total of five requests for a six-month extension. If the required filings are not timely made your trademark will be abandoned.

When filing an application alleging use of a trademark, you have to provide proof of that use for goods and/or services in commerce. For goods, the specimen must show actual use of the mark on the goods, on containers or packaging for the goods, on labels or tags affixed to the goods, or on a display associated with the goods. For services, the specimen must show direct association between the mark and service, such as letterhead, business cards, or invoices if they create a direct association between the mark and services you provide.

A mark that is not distinctive, but can be in the future, may have the opportunity to be placed on the Supplemental Register. The Supplemental Register has a maybe-it-can-be-a-trademark-maybe-it-can’t-be vibe. Although marks on the Supplemental Register don’t get all of the benefits of marks on the Principal Register, marks on the Supplemental Register have some rights such as the right to sue in federal court and use ® .

There are groupings or categories of goods and/or services, also known as International Classes. Your trademark application would list all classes in which you use the mark to sell goods and/or services. Goods can be found in classes 1-34 and classes 35-45 are for services. Filing fees are based on the number of classes in which you use your mark.

An Office Action is when the USPTO believes there is a reason your mark should not be registered after examining it, so they are refusing registration, but giving you an opportunity to respond. Office Actions can range from a simple request for clarification, to complex issues which would require a legal response in the form of a brief. You must respond to an Office Action from the USPTO within 3 months of receipt. You can ask for an extension for a fee. TAF Legal can respond to Office Actions on your behalf.

You can only use ® if you have a trademark registration. In the United States, that registration applies to the Principal Register and the Supplemental Register. If you are asserting any rights prior to filing, during filing, and after filing, you can use ™. If you provide services, you can use ℠.

As long as you continuously use your trademark in commerce and file the appropriate maintenance documents, your trademark will not expire. You will need to file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year of registration, and every 10 years after that. TAF Legal can help you file those maintenance documents.