I find that a lot of clients believe that if they are able to register the trademark as their business name when they register an LLC or Corporation that their trademark is “available for use.”   This, however, is not the case.  Trademark law in the United States is complex.  In order to know if a trademark is “available” for use, a full federal, state, and common law trademark search should be conducted by a professional.

My best advice to business owners is that before you open your doors, or start to market that new product or service, conduct a trademark search with a professional that can give you a good legal opinion as to whether or not it is safe to proceed.  And please, whatever you do, do not think that you can use any of the “free” searches available on the internet to ensure your trademark is available.   Those trademark searches are legally worthless.

If you would like to retain my firm to conduct a trademark search for you, please click here or call us at 1-877-350-6275

1. How much will the lawyer charge to conduct a trademark search and draft your trademark application;
2. How much will the U.S. Government charge to file the trademark applications (to register a trademark you are filing an application with a United States Government entity called the United States Patent and Trademark Office).

As of August 2009, I charge an affordable flat legal fee for my services of either $195 or $475 depending on the package of service you prefer. For $195, I will conduct a basic trademark search and draft and file your application. This option includes a federal trademark search in which I will determine if anyone has previously registered your trademark. While this search is extremely thorough, I would suggest the comprehensive trademark search package which is $475. This second option is considered a full legal clearance because it looks for any trademarks that could present a legal issue.  In addition to searching federal trademark databases, it searches state and common law trademark databases.  This is because if another company has registered a similar trademark at the state level, or has developed common law rights in the trademark, this company may be able to sue you for trademark infringement even once you file your federal trademark application.  Therefore, the comprehensive search results come with a letter from my law firm detailing all the legal risk associated with your proposed trademark.

The government filing fee to register a trademark is $325 or $275 per class of goods and/or services. The difference in price depends on a number of factors, however, I can normally qualify my clients for the reduced filing fee of $275.

Therefore, the total cost to register a trademark is:

1. The Legal Fee, plus,
2. The U.S. Government Filing Fee.

For more information on how much it costs to register a trademark please view all options on our website: www.trademarkarmor.com.

Once we have completed a thorough and detailed trademark search and found no conflicting trademarks, our next step is to assist you in drafting and filing a trademark application that we are confident will be approved by the USPTO. The application is ultimately filed online using the Trademark Electronic Application System or TEAS.

There are a few elements of the application that I would suggest preparing prior to beginning the application process. These items include: a scanned JPEG file of the drawing of the mark and a scanned JPEG file of an actual example of how the trademark is being utilized in commerce. By offering my legal advice and assistance in the preparation of these critical components of the application, I make certain that your application is as well assembled as possible.

Furthermore, the trademark application will require that you specify the mark type as either standard characters or special form. A standard characters mark is one that does not contain any design element. In contrast, a trademark that is categorized as special form does include a design element. I will help you make the decision as to which type of trademark is appropriate for your product once we review your file.

The next section of the application pertains to goods and/or services information where you will need to complete of list of goods and/or services for your application. After reviewing the description of your product we will draft a legal description of your product that is appropriate for the application.

After we complete the application, you will receive an email which will allow you to review and approve the application for submission to the U.S. Government. At that time your application will be filed and your product name will be well on its way to receiving trademark protection. For any questions on how to trademark a product name please contact Josh Gerben Trademark Attorney.

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

Once a trademark application is submitted to the U.S. Government for review and approval, it takes between 6-18 months to receive a trademark registration certificate.  There is no option to pay a rush or expedited fee to the USPTO to move the trademark registration process any faster.  To many of my clients, waiting to see if the USPTO will approve their trademark seems like an eternity.  A whole brand can be built in 6-18 months and to have the USPTO deny the trademark application at that time could be devastating.

The best solution to this problem is to hire a competent trademark attorney that can give you an opinion on the registerability of your proposed trademark.  A trademark attorney can conduct a trademark search and give you an opinion on whether or not a proposed trademark is capable of registration with the USPTO.

Another piece of good news is that the USPTO trademark application process is first come, first servce.  This means that your trademark carries all the weight of a registered trademark as of the date you file the trademark.  No one else can try to register a same or similar trademark after the date of your filing, so long as your trademark application is ultimately approved by the USPTO.

Therefore, having the combination of a trademark attorney’s opinion that your trademark will most likely be approved by the USPTO and the fact that you have priority on your trademark as of the filing date should provide some sense of ease to a trademark applicant.

For more information on conducting a trademark search or registering a trademark contact Attorney Josh Gerben at Trademark Armor.

While anyone can go on the USPTO Web site to conduct a trademark search, it is virtually impossible for an unskilled searcher to determine if a US trademark is capable of achieving registration.  This is because the USPTO search engine is not robust enough to do a thorough US trademark search without the skill of an experienced searcher.  In order to determine if a US trademark is capable of achieving registration, the US trademark searcher must break down the trademark into multiple parts and look for similar marks in categories containing related goods.  Therefore, it is highly recommended that a US trademark lawyer is hired to conduct a US trademark search.

Moreover, in addition to the federal trademark database, a US trademark search must include a US state trademark search and a US common law search in order to provide full legal clearance for use of the trademark.  This is because under US trademark law if someone has registered a trademark with a state or simply begun use of the trademark in commerce (i.e. a common law trademark), that person or company may have certain rights that could interfere with a federal trademark.  Therefore, a complete US trademark search also includes a search of state and common law databases.

Once the US trademark search is complete, only a US trademark lawyer can interpret the results to provide an opinion on whether or not a US trademark is capable of achieving registration.

For a complete US trademark search please visit www.trademarkarmor.com

While this USA trademark application can be completed by anyone, I highly recommend to potential clients that they retain my firm to complete their trademark application.  The reason I recommend retaining a USA trademark attorney to draft and file a trademark application is because there are many technical and legal elements hidden in the USA trademark application.  If certain information is not entered correctly, it could lead to rejection of the USA trademark application and loss of any priority established on the trademark.

Moreover, to register a trademark in the USA it is imperative to first conduct a USA trademark search.  If a trademark search is not conducted prior to an attempt to register a trademark in the USA a client may not be aware of a pre-existing federal, state or common law trademark that could result either in the rejection of a USA trademark application or in a limitation of the client’s rights in their trademark.  Therefore, to register a trademark in the USA I recommend to potential clients that they retain my law firm to assist them in conducting a proper USA trademark search and then for the drafting and filing of the USA trademark application.

Once a USA trademark application is filed, a client must then wait for the U.S. Government to review and approve their application.  It generally takes about 8-10 months to register a USA trademark from the date the application is filed.  However, so long as the USA trademark application is ultimately approved, the trademark rights start on the date the USA trademark application was filed.  Therefore, when a client wants to register a USA trademark to protect their rights, they can be assured that no one will be able to attempt to register a USA trademark that is similar to theirs after the date of their USA trademark application filing.

To get started with the process to register a USA trademark please follow the link below.

A comprehensive trademark search and filing package includes not only a search of federal trademark filings to ensure no one else has filed for a federal trademark, but also includes a search of each state’s trademark database and a search of all unregistered use of the proposed trademark.  The reason this comprehensive trademark search and filing package is so important is that if anyone else had made a state trademark filing or simply had used my client’s proposed trademark in commerce (i.e. common law use of the trademark) prior to the filing date of my client’s trademark with the United States Patent and Trademark Office, this individual or company would have the right to keep my client from using the trademark in the geographic region in which the trademark was being used prior to my client’s federal trademark filing.  This could severely limit my client’s ability to use their trademark as they desire.

Therefore, it is only a comprehensive trademark search and filing package that can give full legal clearance for use of a trademark.  If a client elects only to conduct a federal trademark search on their trademark they may not know about a state registration or common law use of their proposed trademark which could limit their trademark rights.

For more information on Gerben Law Firm’s comprehensive trademark search and filing package please contact Attorney Josh Gerben at (202) 294-2287.

Many of my clients find this troubling since they are unsure if they should make a large investment in marketing a trademark before the trademark registration process is completed and the trademark registration certificate is issued by the U.S. Government. However, even the largest companies must rely on their attorney’s advice as to whether their trademark will be approved by the United States Patent and Trademark Office during the trademark registration process. And sometimes that advice can lead to a trademark application being denied. For example, Google’s recent trademark application for “Android” for a cell phone browser was denied by the USPTO for being confusingly similar to an existing trademark. Since Google could not wait the 6-18 months for the trademark registration process to be completed, Google made a significant investment in marketing Android. The denial of the trademark application after such a significant investment was made no doubt causes difficulty for Google.

Due to the cold realities of the trademark registration process, I advise my clients that there is always risk involved with the trademark registration process. Much like any other legal proceeding, no trademark attorney can guarantee the success of a trademark application. However, I can provide my clients with very valuable advice as to whether a trademark application may be approved or denied. By conducting a thorough trademark search that only an experienced trademark attorney can conduct, I can help clients assess whether or not their trademark application is likely to be approved or denied.

The bottom line is that the trademark registration process is just another part of the risk of being in business. There is nothing any trademark attorney can do to take away all the risk in the trademark registration process, but a trademark attorney can certainly help minimize the risk businesses face in this daunting process.