In this article, you will learn:
- How a trademark is created
- What to look out for when registering a trademark
- Why an application may not be approved
If you already have your logo or your brand name, the next step would be the trademark search, which is a search that we perform here in our office, and it checks different databases. It does not just check the USPTO database, which is where it will be registered; it checks state databases, social media, and online databases. That helps us to know whether your mark is already registered, or if you are infringing on anyone else’s mark, prior to moving forward to the next step of the application. Once the trademark search is completed, the next step would be gathering what we need for your application which would include, for example, if you are registering your logo, obtaining a black-and-white version of your logo from your logo designer for us to use that for your application. You will also need to provide us with what is called a specimen. A specimen is an example of your trademark being used in commerce. It is a picture of the logo on the packaging, as I mentioned before. Something as simple as that can work as your specimen. Once we have that, we prepare your application, and then the next step is just waiting to get a response from the USPTO to see if there are any issues with your application or if it is going to proceed to registration.
Legal Due Diligence Done To Ensure That A Client Moves Forward In Compliance With All Measures Taken In Creating A Trademark
As I mentioned before, I always offer and highly recommend a thorough trademark search to be done before filing. This will minimize the risk of rejection of your application, saving you money in the event that the mark is already in use. It also makes sure that you are not infringing on someone else’s mark, which is very important and could cause you some legal liability.
Why The Trademark Search Is So Necessary?
The trademark search is not mandatory, but it is highly recommended. Not performing the trademark search prior to filing the application is the equivalent of having surgery without having an x-ray done beforehand. Being aware that the application is a long process, you want to make that it goes as smooth as possible and try to maximize the opportunity of the application being approved. So, by knowing if there are any issues, for example, if there are any marks that are similar already registered, we can look to see how we can file our application so that it will not be confused with the already existing mark. One way is by being careful what goods and/or services we include in the application.
The Next Steps In Creating And Protecting A Trademark
Once the mark is registered, I recommend calendaring the renewal filing dates. The first one would be five years from the date of registration, and then after that, it’s every ten years from the date of registration. Keeping track of those so that one doesn’t slip through the cracks is crucial. Trademark monitoring is also very important to become aware of any infringement on your mark.
Reviewing and Deciding To Approve A Trademark
The USPTO, which is the US Patent and Trademark Office, has examining attorneys that review your application and decide whether your mark is registerable and meets the criteria for a registerable mark in their discretion.
Reasons That A Trademark Would Not Be Approved
Being merely a descriptive mark is a big one. Another prevalent one is the likelihood of confusion with an already registered mark. This is one that I have seen the most often, and it is probably the one that is the trickiest to overcome, in my experience. However, that obstacle can be avoided or minimized greatly by simply doing a trademark search prior to filing your application.
Cases Where A Trademark Would Not Be Necessary
If your mark is generic or descriptive when you come to me and I see that it most likely will be considered generically descriptive, I would recommend not filing federally because it would not be registerable anyway; however, there are other options, such as state registration to consider. Therefore, I would not say that registration is unnecessary. If your mark meets the criteria, I would say it is crucial to register it.
For more information on Trademark Law In Florida, an initial consultation is your next best step. Get the information and legal answers you seek by calling (305) 912-4247 today.
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