The Pennington intellectual property team specializes in trademark litigation, prosecution, opposition and cancellation proceedings, licensing agreements/disputes and internet domain name matters.
Trademarks are phrases, logos, or slogans that are directly associated with a companies product or service. There are two interrelated general public policy considerations for maintaining laws to protect trademarks: (1) to allow an entity to protect the consumer goodwill that it has developed over the years through the use of its trademark; and (2) to protect consumers from being confused about the source of a product or service. Through practicing trademark law we are able to help both individuals and companies protect their brand and product association.
The following is a general breakdown of the relevant steps of obtaining a trademark:
Federal Trademark Registry Search & Opinion: This step involves a search of the Federal Trademark Registry to ensure that there are no similar trademarks. After the search, the attorney will draft an opinion letter based on the findings of the search. The opinion letter will advise the client as to the chance of successful registration of the proposed mark, the scope of protection that the proposed mark is entitled to and any helpful tips to increase the chance of successful registration, if any. This step takes approximately 1-2 weeks.
Preparation of the United States Trademark Application: Should the client decide to move forward with filing a federal trademark application, the next step is to prepare an application for filing with the United States Patent & Trademark Office (USPTO). The application process requires compiling the necessary information, developing a descriptions of goods/services and drafting the trademark application. This step takes approximately 1-2 weeks. However, once the USPTO received the application, it can be 1-2 years before a registration is issued.
Drafting required responses to the Trademark Office: Sometimes a trademark office action is issued, rejecting the trademark application. If a substantive response is required the attorney will contact the client to advise as to the chance of successful response and the cost of responding.
Issuance: Once a trademark is allowed, a certificate of registration is issued. Typically a trademark is issued within 18 months of the filing date however, depending on the legal issues that arise during the prosecution of the trademark it may take several years to issue.
During the initial consultation, the Pennington intellectual property attorney will answer any specific questions you may have regarding the process.