Choosing the Correct Trademark

The first step in protecting your brand is choosing the right trademark. Whether it’s a logo, a product name, or a unique phrase, your trademark should be distinctive and representative of your business. This is your brand’s identity, so it’s crucial to choose something that not only stands out but can also be protected legally. We’ll be right by your side to ensure that the trademark you select is eligible for registration and capable of giving your brand the protection it deserves.

• A “fanciful” mark – the strongest class of trademark – is created for no other purpose than to be a trademark. (Example: KODAK)
• An “arbitrary” mark is usually an existing word that arbitrarily identifies a product or service, which has nothing to do with the word. (Example: APPLE computers)
• A “suggestive” mark is one that suggests a quality or characteristic of the goods or services, which requires a level of imagination to make the connection between the mark and the product. (Example: MICROSOFT)
• A “descriptive” mark is a word that describes a quality or characteristic of the product being identified. Typically, descriptive marks are not entitled to trademark protection unless they have acquired “secondary meaning.” (Example: LIGHT for portable computers)

The Trademark Search

Before we proceed with the application, we conduct a thorough search to ensure your trademark doesn’t conflict with any existing marks — a crucial step in reducing the risk of your application being rejected or challenged. Depending on your needs, we can perform a knockout search (a check of the USPTO database for any obvious conflicts) or a more comprehensive clearance search that goes beyond the USPTO (e.g., the Madrid Monitor and the Global Brand Database).

File Your Trademark Application

We submit the application to the U.S. Patent and Trademark Office (USPTO) and track its progress. You will also need to pay the USPTO filing fees, which will vary depending on the number of classes of goods or services your trademark covers.

Monitoring Your Application

After filing, your application moves through the USPTO’s review process, which can take several months. During this time, we monitor the progress closely, addressing any issues that may arise. If the USPTO raises any questions or requests more information, we respond promptly to ensure your application stays on track.

Notice of Allowance + Registration

Once your trademark clears the review process, if it is an intent-to-use trademark application, you’ll receive a Notice of Allowance from the USPTO. This means your mark has been approved, but before it can be officially registered, you must provide proof that it’s being used in commerce. You have six months from the date of the Notice of Allowance to file a Statement of Use. If you’re not ready, you can request up to five six-month extensions, each costing $500 plus a $125 USPTO filing fee. Once you file the proof of use, your trademark will proceed to full registration.

If your trademark is already in use, the registration process is even faster—you’ll skip the Notice of Allowance stage and move directly to registration.

Ongoing Maintenance

Remember: trademark protection doesn’t just stop at registration. Visit our Renewals and Monitoring pages to find out how we provide ongoing assistance to our clients.