Table of Contents
TRADEMARK PROCESS
Trademark Timeline
Search / Due Diligence & Filing
The journey begins here. After determining that filing your trademark application makes sense via target searches, we formally file at the U.S. Patent and Trademark Office (USPTO).
Internal Review (Examination)
An Examining Attorney at the trademark office examines your application and reports findings in an Office Action. The most common rejections are descriptiveness or likelihood of confusion. Responses afford up to 6 months to answer.
External Review (Opposition Period)
Once past examination, your trademark application is published for opposition. An opposer has a 30-day window to take action, institute an opposition, or file an extension. Oppositions are uncommon.
Notice of Allowance
A formal Notice of Allowance is issued by the USPTO. If we showed the mark was already in use at the time of filing, this step is skipped. Otherwise, there is a six-month window to submit a Statement of Use with specimen pictures.
Trademark Registration Obtained
Assuming statements of use are submitted promptly, the trademark is officially granted! Now high statutory damages can be sought for infringement, and you can leverage your registration for Amazon Brand Registry.
First Maintenance Window
Calculated from the issuance date, we file two crucial documents between years 5 and 6: an affidavit of continued use and an affidavit of incontestability, making the mark highly resistant to future validity challenges.
Ongoing Renewal Window
By the 10th year of issuance, and every 10 years thereafter (20 years, 30 years, etc.), you must file continued affidavits of use and renewal applications to maintain active trademark protections indefinitely.
Trademarks
Trademarks and service marks are marks, such as those comprising words and/or logos, which represent a source of goods and services. The name “Coca-Cola” represents a particular concoction of ingredients sold by a certain company. By viewing the trademark, a consumer can recognize the source of the goods. Doing business off of another’s name and goodwill associated with the name is trademark infringement. Even more, using a similar name or logo – one in which would confuse a consumer – is also trademark infringement.
Trademarks serve many purposes. The first and foremost purpose of a trademark is to serve as a source identifier for your goods. Having the right trademark is important to ensure that your business is both marketable and protectable.
A further category of trademarks is certification marks. These marks are unique in that rather than directly selling a good or service, the user of the mark instead displays the mark upon goods and/or services of another entity to verify that a set of quality control standards have been met. Certification marks are especially relevant to the food industry, where third entities certify that consumable products are kosher, halal, Weight Watchers approved, etc.
Feigin and Fridman handles all aspects of trademark protection. Mr. Feigin has conducted extensive research into trademarks, especially on the effects of the internet and new technology on validity of trademarks.
- Search / Due Diligence & Filing (0 months)
- Internal Review: Examination by the U.S. Trademark Office (5 months)
- External Review: Third Party Opposition (7 months)
- Use of the Trademark (at time of filing or 10-16 months; extensions available)
- Trademark Issuance (12 months)
- Renewal of the Trademark (before 6th year, before every 10th year)
Rejections and oppositions afford you the opportunity to respond though also add time to the above timeline.
After determining that filing your trademark application makes sense, we file at the U.S. Patent and Trademark Office (the “USPTO”).
5 months – Trademark Examination – “Internal Review”
About six months from the date of filing (at the time of this writing – this has historically varied from about 4 months to 11 months), an Examining Attorney at the trademark office examines your trademark application and reports on his findings in an Office Action, or sometimes, by having a conversation with the Attorney of Record.
In many cases, your trademark is allowed at this point or allowed with a minor change or edit. In some cases, a trademark may be rejected outright. The most common rejections are:
a) the trademark is descriptive and is only allowable on the Supplemental Register;
b) the trademark is likely to cause confusion in the marketplace with another trademark.
If a response is necessary, we have up to six months to do so.
7 months – Publication – “External Review”
After passing through examination by the U.S. Trademark Office then your trademark application is published for opposition. Once published, an opposer has 30 days to take action by instituting an opposition or filing an extension of time and then issuing the opposition. During this time the parties often negotiate a settlement – or the opposer simply decides not to file the opposition at all. Oppositions are uncommon.
9 months – Notice of Allowance
A formal Notice of Allowance is then sent by the U.S. Trademark Office. If we have shown that your mark is in use at the time of filing, this step is skipped. Otherwise there is now a six month window to show that you are using your trademark by submitting pictures of your product with the trademark. If your mark is a service mark, advertising materials are typically submitted.
12 months – Trademark Registration Obtained
Assuming a statement of use is submitted promptly, after some more waiting and review by the U.S. Trademark Office, the trademark is then granted! Now statutory damages which are quite high can be obtained for infringing your trademark registration (in most cases) and you can use your trademark for brand registry at Amazon and other places.
60-72 months from issuance- Maintain Your Trademark
A trademark can be renewed indefinitely – as long as you’re using the mark For convenience, the timeline is now listing months from issuance and not months from filing. The issue date becomes key in calculating all future dates in U.S. trademark practice. Renewal then makes your trademark “incontestable” – only by way of fraud and abandonment (and other rare instances) can you lose your trademark.
So, between 5 and 6 years from issuance we file two affidavits: a) an affidavit of continued use and b) an affidavit of incontestability. Your Patent and Trademark Attorney typically keeps track of the deadlines though you should calendar the deadlines as well.
108-120 months from issuance – Maintain Your Trademark
By the 10th year of issuance, and every 10 years thereafter, you must file continued affidavits of use. Thus, at 10 years, 20 years, 30 years, etc.
Trademark searches
It is important to know who is using the name before you pour marketing, manufacturing, and legal fees into a name. If your trademark will not stand, then everything you’ve put behind your name is potentially lost. Still further, even if you have a domain name or a registered trademark with the U.S. Patent and Trademark Office, you still are not assured that you can keep the name!
For example, in a 1996 case (International Star Class Yacht Racing Ass’n v. Tommy Hilfiger U.S.A., Inc., 80 F.3d 749 (2d Cir.)), a full clearance search was recommended and was not carried out, and the court went so far as to consider that it may have been bad faith to keep using a mark from the time the plaintiff notified the defendant of the mark. Bad faith means high damages in addition to the loss of all the marketing dollars put into the name! This could have been avoided by spending a few extra dollars on the research up front.
Preliminary trademark searches
A Preliminary, or “Knock-Off” Search is inexpensive and generally used to decide amongst a few names. Such searches involve keyword searches such as through the U.S. Patent & Trademark Office database and regular search engines and are accompanied by a preliminary opinion. We require that at least this level of search be conducted before filing a trademark application with this law firm.
Full clearance searches
As noted above, this is the preferred type of search and is recommended before filing a trademark application. Such a search comprises not only keyword searches but also “Soundex” searches which are searches of uses in commerce which sound the same as your proposed mark. For example, if you want to use the name “kit kat”, a full clearance search would also search “cit cat” and “kite cat”.