Trademarks are important marketing tools which represent your business’s brand and reputation to customers and clients. Trademarks may be words, phrases, slogans, logos, or even acronyms that represent your brand. It is important to protect your trademark and use it strategically in order to prevent market competitors from profiting off of the good will of your business.

The attorneys at Matheson & Associates are experienced trademark lawyers who handle several hundred trademarks in varying stages of the application process. Working through the stages of the application process can be cumbersome and complex. Our lawyers can assist you with the initial trademark search and filing, responding to office actions, appealing refusals, trademark assignments, and trademark monitoring and enforcement.

Choosing the Right Trademark

Choosing the right trademark for your business is incredibly important for achieving a memorable and distinctive from other trademarks.

Trademark Search

Before you submit your trademark application, a search should be conducted to determine whether the mark has a strong chance of achieving registration. A trademark is strong if there are no other similar or identical trademarks in a related class of goods or services to that of the applicant’s trademark. A trademark search should be done in the specific international class of the goods or services of the trademark, and any other related classes. The search may be done on the USPTO’s database called TESS (Trademark Electronic Search System). If no similar marks are found, the applicant may proceed with the registration process.

Matheson & Associates attorneys are skilled at conducting trademark searches and analyzing trademarks for potential likelihood of confusion issues. Our attorneys review thousands of trademarks each year and consistently flag trademarks which are similar to those of our clients’ which could present potential obstacles to registration.

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The Initial Filing

In order for a trademark to be registered with the USPTO, it must be used in commerce. Use in commerce means that the trademark owner is actively using the mark to sell their goods or services. The type of application you file initially depends on whether you are currently using the mark to sell your goods or services, or whether you plan to use the mark to sell your goods and services sometime in the future. If you are currently using your mark, a standard application should be submitted claiming that you currently use the mark. If you plan to use the mark in the future, an Intent-to-Use application should be filed.

An Intent-to-Use application holds the applicant’s place in line for rights to the desired trademark while the applicant gets ready to use the mark in commerce. This type of application is desirable for those who have their business idea and are in the process of setting up their business but have not yet begun to sell their goods or services. If a trademark in an Intent-to-Use application is “allowed” then the applicant has 6 months from the date of the notice of allowance to use the mark in commerce. The applicant may extend this period five time, for a fee, giving the applicant up to three years to actually use the mark in commerce.

Office Action Responses

An Office Action from the USPTO is an official letter rejecting your trademark application. Initial Office Actions are not final which means that the applicant may respond to the Office Action and present arguments in support of registration. Office Actions may be issued for several reasons including but not limited to: likelihood of confusion with another registered trademark, geographic descriptiveness, descriptiveness, ornamentation, or the mark is merely a surname. It is important to hire an attorney to respond to an Office Action on your behalf to ensure that you receive the most favorable outcome possible. Attorneys at Matheson & Associates have extensive experience in responding to Office Actions on behalf of our clients.