A trademark is an intellectual property right used to identify the source of products and services. A trademark is typically a word, logo or symbol related to the product which the owner is allowed to use exclusively as long as it is registered to them. Because there are many aspects of a trademark which create value for a business, such as goodwill and consumer recognition, trademarks are often one of the most valuable assets to a company. Consequently, the licensing and sale of a trademark may represent a significant economic opportunity to the owner of the trademark.
The following is a brief summary of the Trademark application process. Please note this information is merely exemplary and intended only to provide some insight into the application process. The filing and prosecution of a trademark application is a very complicated process and we encourage our clients to work closely with our attorneys during the entire process. If you have any questions regarding the application process or any other matter relating to out services, please do not hesitate to contact us.
Trademark Searches: A recommended first step in the evaluation of a proposed trademark is to have a preliminary or comprehensive search performed to determine whether your trademark is able to be registered.
A Preliminary Trademark Search can be made of the USTPO and individual state records. It is typically limited to a search for “direct-match” trademark registrations or applications and is used to identify any direct matches which would preclude the ability to secure meaningful trademark protection. The search utilizes databases which are generally current to within a few weeks and may not cover common law, unregistered forms of use, or trade name use of each mark searched. The availability of the mark on a preliminary basis only addresses the fact that there are no federal or state registrations or pending applications that constitute direct hits, but does not guarantee that the mark is available for registration, or that some other party is not using it in some unregistered form. The purpose of this search is to minimize the risk that some other party has acquired prior registration rights before proceeding with the filing of the application or investing significant resources in commercializing the product or service under a particular mark.
A Comprehensive Trademark Search is a very detailed review of registered and unregistered state and federal trademarks, business names, “doing business as” (d.b.a.) listings, and common law trademark usage, including reviews of industry periodicals and publications. The search also may involve the review of international databases of foreign trademark, as well as other industry specific registries. A Comprehensive Trademark Search can be obtained from such sources as Thomson & Thomson, and can often take several months to complete.
Filing of the Trademark Application: An initial client conference will provide an opportunity for the client to meet with an attorney and identify the proposed trademark and to discuss whether a “word mark”, a “design mark” or combinations of the two are to be applied for. The planned uses for the trademark and related business issues may also be discussed. To prepare the application, the attorney will draft an application based on a “Bonafide Intent-to-Use” or “Actual Use”. The application specifically identifies the mark, the applicant, the date of first use, the classification of registration and the specific goods or services sold or provided in conjunction with the trademark. Once prepared, the application is reviewed for accuracy and then filed with the United States Patent and Trademark Office.
For more information on trademarks and the trademark registration process, please contact our office.