FAQ – Federal Trademark Application

Q: I just filed a federal trademark application, what does that mean?

A: You have started the process to acquire federal rights in your name/logo/etc. You now own an application that represents powerful potential rights. One of these rights is the right to the filing date if the application is allowed to register. This means that even if it takes a long time to actually register the mark, once the mark is registered, the rights are established as of the day the application was filed. This can be very important leverage. You can license and/or sell these rights. Moreover, the United States government now holds proof of your intent to acquire those rights. If somebody comes along after and tries to acquire those same rights, your application will be a serious (possibly impossible) obstacle for them.

Q: Can I put the ® image next to my trademark now?

A: No. Until your registration is complete, you cannot use the ® image. Doing so without a real registration puts you at risk for liability. Until then, continue to place TM near your mark.

Q: What should I do next?

A: You should be moving forward with your business. Sometimes that means going to trade shows, making deals, networking, engineering your product/service, selling, marketing, etc. Anything you can do to build success around your product/service will increase the value of your property. The more you use your mark, the stronger and more valuable it will become. Be sure to keep records of your use. For example, you should keep examples of your marketing materials and know where you used them. Old brochures, advertisements, banners, and etc. are all good examples. You should have photographs of your product and packaging and screenshots of your website(s). Anytime you make changes, you should keep a copy somewhere.

Q: What if somebody starts to copy me?

A: Some people are horrified to find out that they may have been copied. However, copying by others in the marketplace is the single best indicator of strong value in the property. Therefore, copying might be the best thing that can happen to you. At a minimum it gives you leverage against a competitor.

Q: What should I do if I think somebody is copying?

A: If you are copied DO NOT contact the infringers. Instead keep careful records of proof of their copying, including taking photographs, saving their advertising materials and, where appropriate, buying some of their products/services. Let your attorney know that you have been copied and they can start the process for making sure you can capitalize on your leverage.

Q: What happens next with my application?

A: Your application will go through an examination process. A lawyer with the US Trademark Office (Trademark Examiner) will review the application to determine if it should be allowed or not. It is common for applications to be rejected on one or more grounds. For example, if someone else owns a confusingly similar mark, your application might be rejected. Sometimes actions must be taken or strategies revised and sometimes arguments must be prepared to persuade the Examiner that the application should be allowed. Where the Examiner cannot be persuaded, it may be necessary to appeal the Examiner’s decision to the Trademark Trial and Appeal Board.

Q: Tell me more about getting my registration.

A: There are many requirements that must be satisfied before you can be allowed to have a trademark registration. One of the most important requirements is that we prove to the US Trademark Office that we (the person or business listed on the application) are actually using the mark (listed on the application) with the goods/services (listed on the applications) in interstate commerce. Sometimes your application already includes this proof. More often, with new businesses, it does not yet include that proof because want to secure the name as early as possible to keep others from taking it before you get to market. If we have not yet proved to the government that we are using the mark, then we will eventually have to do so. If the application is allowed, we will have six (6) months from the date it was allowed to prove use.

Q: What kind of expenses should I be expecting?

A: Depending on your attorney, the costs can vary. From our experience, you should expect some minor costs for keeping track of the application, giving you notifications, and doing status checks. These might end up being a few hundred dollars over the course of a year. If the application is allowed and you need to prove use in interstate commerce, expect to pay about ½ to 2/3 what you paid for the application to prove use. If the application is rejected, you can pay anywhere from a few hundred to a few thousand for dealing with those issues, depending on the issues and the plan of action. Deadlines for responses can be severe and the penalties for missing deadlines even worse, so being prepared with funding is critical. We recommend that you budget for between about $400 and $3,000 for the twelve (12) month period after filing to make sure that you have funds available in case you need them.

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