Answers to some common questions about federal trademarks.
Can you help me if I don’t live in Colorado?
Yes. I am licensed only in Colorado, but trademark registration happens through the United States Patent and Trademark Office.
Attorneys who are licensed, active, and in good standing in any U.S. state are authorized to represent clients before the USPTO in trademark matters, no matter where the client is located. That authority comes from federal regulation (37 C.F.R. § 11.14), so for work in front of the USPTO, where you live generally doesn’t matter. It doesn’t stretch to state-law questions, though, and I don’t take those outside Colorado.
I can run your comprehensive clearance search, prepare and file your application, respond to office actions, and keep your registration alive over time, whether you are down the street or three time zones away.
My federal trademark clearance searches and opinions consider state registrations and common-law use only as they affect the risks of federal registration and use. I do not file state trademark registrations or handle state-law claims or disputes outside Colorado.
If you need legal assistance with something outside federal trademark practice, I will help you find an attorney in your state to handle those state-specific issues.
What does a federal trademark actually protect?
It most commonly protects a business, product, or service name used to connect the goods or services to a particular source. Logos without words and slogans can also be registered trademarks.
There are even ways that sound, motion, distinctive packaging, recordings of voices saying a specific phrase, colors, distinctive product shapes, scent, flavor, and a couple of other wacky things can qualify for trademark registration and protection.
Some of these categories have a very high bar to clear.
Many people confuse trademarks with their intellectual property cousins. Patents protect inventions and how they work. Copyrights protect creative works.
Identical and similar names can exist on the federal trademark registry at the same time, but typically only if the names will not cause confusion for consumers.
For example, Delta is the brand of an airline and a faucet.
I have been using my name for years. Don’t I already own it?
You have some limited rights, called common law rights. A federal registration gives you rights across the entire country and puts your claim on the public record.
Doesn’t registering my LLC or buying the domain protect the name?
Both may help establish some rights, but nothing as extensive as federal trademark protections. A state will register your LLC under a name that infringes someone’s federal trademark, and a registrar will happily sell you the domain.
Neither grants nationwide rights.
How long does trademark registration take?
The USPTO has been issuing its first response between four and six months after filing, but this is subject to change. A straightforward application often reaches registration in roughly twelve to eighteen months.
Nothing can speed up the USPTO’s timeline, but simple mistakes can result in unnecessary fees and delays.
What does a trademark cost?
If you hire an attorney, the total cost consists of the fees the attorney charges for the research and legal work plus the fees charged by the USPTO for processing your trademark application.
If you choose to file it on your own, it would just be the USPTO charges, which saves you money up front.
But you really should factor in the possible downstream costs associated with an application containing simple or fatal mistakes.
A lot is riding on the form and substance of the trademark application and responses. There’s a reason there are lawyers who work exclusively in this area of law. See my full cost breakdown here.
Why is the clearance search a separate fee?
Because I want to put you in control of your expenses. I could bundle it into the cost of preparing the application, but that would combine fundamentally different stages of the registration process.
The comprehensive clearance search gives you an idea of where your potential or established name sits in the broader marketplace. You may not want to use the name after the search, or you may be even more confident in the strength of the name.
No search can cover every possible conflict - marks that were filed with the USPTO within a few hours of the search are not public record yet and will not show up. Similarly, not every operating business will appear on a state, county, or local public registry. These unregistered businesses will probably not appear in search results.
While there is no risk-free federal trademark application, a comprehensive federal trademark search can discover and help you account for problems before you find out about them in a cease and desist letter.
You can then make an informed and intelligent decision regarding the risks and benefits of your established or potential brand.
What happens if the comprehensive clearance search comes back bad?
This is a definite possibility. If it comes back with bad news, I’ll tell you, in writing, and provide my analysis of the risk of moving forward.
I try to take some of the sting out of the bad news by offering a secondary courtesy search on an alternative name when I advise against filing due to the existence of one or more high-risk conflicts.
Sometimes the best answer is to change the name or rebrand. Sometimes it’s to narrow the scope of the application. Sometimes the risk is real but manageable.
I provide the information and analysis of risk. The decision is yours to make with as many of the facts in front of you as possible.
Do I need to be selling already to file a trademark application?
No. If you are already selling, you file an in-use application. If you have not launched, you file on an intent-to-use application, which reserves your place in line and lets you prove use later when you actually start selling.
What is a federal trademark class?
The USPTO sorts goods and services into forty-five categories. You register in the ones that cover what you sell, and you pay a government fee for each.
Getting this right matters more than it seems. Even assuming you could receive a registration in the wrong class, it wouldn’t protect what you want it to protect, so the trademark would be nothing more than an expensive lesson.
In reality, it shouldn’t even be possible to register in a class of goods or services you don’t sell because an in-use trademark application requires proof of use in commerce. Intent-to-use applications allow you to file now and show use later, but they still require proof of use before they can proceed to registration.
It’s unlikely this would be missed by an examining attorney, but stranger things have happened.
Do I need a trademark attorney?
It’s definitely the better way to go. I recognize that answer will likely come across as self-serving, but it’s true.
If you are based outside the United States, the USPTO requires you hire an attorney. If you are in the U.S., you are allowed to file on your own.
Whether you should is a very different question. Many of the applications trademark attorneys are asked to rescue were completed correctly in form but incorrectly in substance. Some are riddled with avoidable mistakes.
Like most business decisions, this one boils down to balancing upfront costs against downstream costs and risks.
USPTO examining attorneys make independent legal determinations. No trademark attorney can guarantee registration.
Check out my blog for real world examples of trademark disputes playing out in the news.
What is a USPTO office action?
A letter from the USPTO examining attorney raising a problem with your application. They are very common, and they range from a technical request for clarification to a full refusal on the grounds that a mark is too close to another mark on the USPTO registry.
What happens if the USPTO refuses?
I let you know and respond with your permission. I respond to the first non-final office action at no additional charge. If there are additional office actions, I will quote you a fee for responding and get your go-ahead.
There is a deadline, the response has to be argued rather than merely filed, and an unanswered office action abandons the application.
If the refusal becomes final, I’ll explain your options and refer you to other counsel for that work.
It’s incredibly important you provide up-to-date contact information and keep me informed of any contact information changes.
Once the trademark registers, am I done?
No. There is a required filing between years five and six, a renewal between years nine and ten, and then a renewal every ten years after that.
Miss any of these filings and your registration might be cancelled. See my fee breakdown.
Will the USPTO stop other people from using my name?
No, and this surprises people. The USPTO examines applications against marks on the registry. They don’t take it upon themselves to police the marketplace.
Enforcement is up to the trademark owners.