Trademark Registration, Monitoring your trademark after registration

Josh Gerben — Fri, 02 Jul 2010 00:57:15 +0000

Once you receive your trademark registration certificate in the mail, you may be asking yourself, “now what?” The process of getting your trademark was a long one, and you definitely don’t want to take the chance that you may lose the mark and have to start all over again. Your trademark is without a doubt important to you, so you probably want to know the things that you need to do to keep it safe.

First, periodic filings are required to retain your trademark. These filings are due 5 and 10 years after you get your trademark and then every 10 years thereafter. You must prove in these filings that you are using the mark in commerce exactly as the trademark was filed. The deadlines for the trademark filings are firm and missing a deadline can be extremely costly, often leading to loss of your trademark.

Second, protecting your new trademark is an essential part of retaining your trademark. As the trademark owner it is your legal responsibility to adequately police your trademark and make sure no one is infringing upon it, failure to do so can result in the loss of your trademark rights. This can be a difficult task as adequate protection of your mark requires constant monitoring of new trademark applications with the USPTO and also watching for infringing use of your trademark in commerce.

To assist with these duties and responsibilities, I offer a “Trademark Monitoring” service. This services works to ensure that 1) No one infringes on your trademark; 2) You continue proper use of your trademark; and 3) You never miss a trademark renewal. If you are interesting in this service please contact me at 1-877-350-6275.

What is a USPTO Office Action?

admin — Tue, 14 Jul 2009 20:57:57 +0000

I get a lot of calls from potential clients who have received an Office Action on their trademark application and want to know what it means. An Office Action from the USPTO can mean a lot of different things. It can be something as simple as the USPTO asking for a simple clarification on your application or something as serious as a denial of your trademark application (please note that a denial can always be appealed).

One of the most critical aspects of a USPTO Office Action is ensuring a response is filed with the USPTO within the deadline stated on the Office Action. If you receive an Office Action for something as simple as a clarification of information on your application and do not respond by the deadline your application, your trademark application will be considered to be abandoned and you will lose all priority on your trademark. Therefore, it is extremely important to treat any Office Action seriously and respond in the proper time frame.

Another critical aspect of responding to an Office Action is ensuring that you are properly responding to the USPTO’s requests. Failure to properly respond to the requests can also lead to denial of your application. Therefore, if you have been issued an Office Action it is highly recommended that you contact a trademark attorney so that the response filed is technically correct.

My law firm helps clients respond to all types of Office Actions. Even if your trademark has been initially denied by the USPTO we can e draft a legal argument to attempt to overturn the negative decision. The cost to respond to an Office Action will vary depending on the particular Office Action. I offer a free trademark consultation to clients who are looking to respond to an Office Action. I can be reached directly at (202) 294-2287 for this free consultation.

Josh Gerben, Esq.
Principal
Gerben Law Firm, PLLC
1615 L Street NW
Suite 1350
Washington, DC 20036

(p) 202.294.2287
(f) 202.315.3386

Trademark Help: by A Trademark Attorney - Trademark Armor Blog » trademark consulation

Trademark Registration, Monitoring your trademark after registration

What is a USPTO Office Action?