Michael J. Foycik Jr., Esq.

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Preparing a US Trademark Application

To start, the trademark owner will have chosen a word, phrase, or design as their trademark. The trademark is what is applied to the goods or services, and is NOT usually the company’s name. For example, a company named XYZ which sells garments will attach a label to those garments with a trademark such as the fashion designer’s name, and NOT with the name of their company. To claim trademark rights, the symbol “TM” can be used, preferably as a superscript after the trademark. Alternatively it can be written in parentheses after the trademark. Example: If the trademark is “Wise“, it can be written as Wise™.

A US Trademark Lawyer, also called a US Trademark Attorney, can prepare a US Trademark Application for filing with the USPTO. The US Trademark Lawyer will draft a trademark application using a description of the goods/services together with a drawing showing the trademark, where the “drawing“ is often just the typed word in capital letters. That format encompasses all variations of that mark, within the laws pertaining to how marks are used. For example, the typed drawing in all capital letters will encompass an infringing use of the mark in script letters, or as part of a larger drawing.

The draft application is sent to the owner of the trademark, and changes can be made if necessary. We do not add any additional charge for making changes to the application at this stage. When the draft is finalized, the owner signs a form claiming ownership of the trademark application. Once it is filed, it receives a Serial Number and an Official Filing Receipt, and thus becomes an official US Trademark Application.

At some point in this process, it is advisable but not necessary to perform a US trademark search. The US trademark search can find prior art trademarks that show the extent of the closest prior marks and whether the mark has been registered at an earlier time. If an expired trademark is discovered which is very close to the application, then that expired trademark might or might not mean the mark is available to other applicants. If a pending US Trademark Registration covers the mark and is in the same or similar field of goods as the applicant’s mark, then it is possible that infringement could occur. It is important to know if a product or service might infringe an existing unexpired US Trademark Registration. If no USPTO registration exists which covers the trademar, then it is possible that the trademark can be registered. As noted above, it is not necessary to conduct a trademark search prior to filing a new trademark application.

The Role of the US Trademark Office in Examining the Trademark Application

The US Trademark Application is examined in due course by a trademark examining attorney. The US trademark examining attorney will usually be an expert in the particular class of goods or services in which the trademark resides. The US trademark examining attorney will conduct a US Trademark search of the prior trademark literature, and will make a search report and send it to the applicant along with a first Office Action on the merits.

If an application is finally rejected, that rejection can be appealed. In that case, it is taken up for review by a board of appellate examiners. Each appellate examiner is likely to be a USPTO Trademark Attorney or USPTO Trademark Lawyer. If the appeal is refused, it can be taken further to a US District Court, in which case the USPTO is represented by the Solicitor’s Office. In that case, the Solicitor in Court will be a USPTO Trademark Lawyer or USPTO Trademark Attorney. Such higher appeals are not frequent, but are more likely to occur when the trademark is particularly valuable.

The Role of the US Trademark Attorney in the Examination Process

The US Trademark Attorney or US Trademark Lawyer considers the Office Actions received from the USPTO, and transmits the Office Action to the applicant along with any advice or comments on how to respond. The US Trademark Attorney or US Trademark Lawyer then responds to the Office Action, usually by providing legal arguments in support of registrability.

If the Office Action is a Notice of Allowance, then the response by the US Trademark Attorney or US Trademark Lawyer may be to file any required forms and/or transmit any fees due (often no fee is required), along with a transmittal form required by the USPTO. When no response is required, then the US Trademark Attorney or US Trademark Lawyer so informs the applicant, and a Certificate of Registration will be received in due course from the USPTO via the US Trademark Office.

During this time, the applicant may be commercializing the trademark. In this case, a successful trademark might be licensed or assigned, or distribution agreements may be made. In all these cases, the US Trademark Attorney or US Trademark Lawyer performs an important role in making sure these agreements serve the interests of the inventor.

The Role of the US Trademark Attorney after the Trademark is Registered

Once the trademark is registered, it can be enforced against competitors. In that case, the US Trademark Attorney or US Trademark Lawyer normally first sends a warning letter to the infringing competitor. If the infringement continues and no licensing agreement or assignment agreement is reached, then a lawsuit can be filed by the US Trademark Attorney or US Trademark Lawyer in a US District Court or in a state court.

The filing of a lawsuit, and the defense of such a lawsuit, are usually referred to as US Trademark Litigation, or simply Trademark Litigation. Such lawsuits can be fairly short, and many businesses consider it commercially economical to conduct Trademark Litigation to protect their rights.

Foreign Entities

Foreign entities must be represented by an attorney or lawyer, in order to obtain a patent or trademark, and in order to maintain a lawsuit in the US. In a Trademark case, the US Patent Attorney or US Patent Lawyer can be appointed as the Domestic Representative of the foreign entity.