Trademark Registration and Prosecution
Register a Trademark at the US Patent and Trademark Office.
A federal trademark registration can be filed at the United States Patent and Trademark Office (USPTO) for a business name, slogan, or logo used in commerce by one of our Colorado trademark attorneys. While a trademark registration isn’t necessary, registration of the trademark at the USPTO confers important legal benefits to the registrant. The USPTO recommends retaining an experienced trademark attorney to help secure a trademark for various reasons including providing crucial legal advice about the process. The Wall Street Journal reported in 2013 that an experienced trademark attorney helps improve your chances of securing a trademark registration by 46% compared to filing without an attorney. Even if you are outside of the State of Colorado or outside of the country, our Colorado trademark attorneys can help register your United States trademark using our substantial experience filing and prosecuting hundreds of trademark applications at the USPTO at a fraction of the cost of Silicon Valley or New York intellectual property attorneys. While you can also file for a Colorado state trademark, a federal trademark registration protects you across all 50 states including Colorado and gives you more options in federal court..
By having an experienced Colorado trademark attorney team register your trademark at the USPTO, you add the experience of how to best protect your brand against competitors who may be misappropriating or diluting the value of your brand. Other benefits of using our Colorado trademark team can include providing important legal advice about the registration process, conducting a trademark clearance search, preparing your application, responding to office actions from the USPTO, enforcing your trademark rights, representing you in front of the USPTO Trademark Trial and Appeal Board, and filtering out questionable trademark solicitations from unscrupulous third parties.
If a competitor enters the United States market using a trademark with a similar sound, appearance, or meaning to your trademark registration, our Colorado trademark attorneys can also formally send the alleged infringer a cease and desist notice placing them on notice of the infringing use of the trademark or if necessary, represent you in federal court in a trademark infringement claim, or oppose a pending trademark at the US Trademark Trial and Appeal Board (TTAB). It is more advantageous to assert your brand against an infringing business competitor with a federal trademark registration than just common law rights.
Why do I need to register a trademark?
Protect Your Brand
Make sure you are the one in control of your brand by registering it with the USPTO and adding the ® symbol.
Stop Infringers
Improve your options and legal remedies such as a preliminary injunction and removal of online counterfeits.
Do More with Your Brand
Register and place others on notice of the exclusive ownership of your brands, logos, and slogans.
Online Trademark Registration Services
Apply online for a federal trademark with the guidance of an attorney.
What can I trademark?
- A word like "Apple."
- An image like the Apple logo.
- A slogan like "Think Different."
- Combinations of the above.
What cannot be trademarked?
- The contents of a book, film, song, or other creative work. To protect these you need a copyright.
- A novel invention like a technical process, machine, article of manufacture, chemical formula, or design. For this type of intellectual property, look into a patent.
Trademark Law FAQ
A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. A trademark:
- Identifies the source of your goods or services.
- Provides legal protection for your brand.
- Helps you guard against counterfeiting and fraud.
Source: USPTO
You have a trademark but if you are asking you probably don’t have a registered trademark. You must also have a product or service in association with the trademark if you wish to register the trademark. Consider speaking with an attorney to explore your options.
What are you selling and what is your brand name? Do you have a generic or descriptive brand or is it more arbitrary or fanciful? These questions can help assess the likelihood of being approved for registration.
It depends. If you wish to protect each element separately you probably want to file two separate trademark applications. However, you can also register a single trademark that includes both graphics and text elements, but both elements will be treated as a single trademark upon registration combining the two elements together rather than separately.
Yes. We offer trademark search, registration, and enforcement services for our clients.
State level trademarks are usually less expensive than federal trademark applications but they also do not provide you the same level of protection as a federal trademark. If you only sell your goods or services in a single state, a state trademark may be a more ideal solution than a federal trademark.
To maintain your trademark, it is necessary to renew your registration between the fifth and sixth years of registration. If you do not file your five year renewal, then you WILL lose your trademark rights on the mark in question. The USPTO requires that you submit a Section 8, or a Section 8 and 15 affidavit between the fifth and sixth years of registration. Making this filing will also place the USPTO on notice that your trademark is still being used in commerce.
To further maintain your trademark rights, it is necessary to renew your trademark again after the five year registration period. After the five-year registration renewal, trademarks need to be renewed between the ninth and tenth year of registration. After the ten-year renewal, trademarks must be registered every ten years afterward.
Failure to renew your trademark between the ninth and tenth years from the registration date could result in loss of your trademark rights, so make sure that you pay attention to these important dates. For peace of mind, you can also retain the services of our professional trademark attorneys to make sure that the dates are properly noted and that you are informed of any upcoming dates and/or deadlines.
It is important to remember to renew your trademark registration after five years if you are still using the mark in commerce and wish to continue your ownership of the mark. If you want to maintain your trademark registration, then it must be renewed after the fifth year. After you renew your mark for the first time, the next renewal is the tenth year. After the second renewal period, the USPTO requests renewal every ten years. Don’t let these important dates pass!
A trademark application for a mark already being used in commerce is fairly standard for a trademark application. In this instance, goods or services are already being sold in association with the mark at the time of filing. The filing fees for marks already being used in commerce are approximately between $225-275 per class of goods or services. For example, if you wish to file for a mark to protect both clothing apparel as well as coffee mugs, the application would require a payment for two classes instead of one class. Both word marks and design marks can be filed as an in-use application. Our law firm can prepare and file these types of applications for you on a flat-fee basis. Contact our attorneys today to discuss how we can protect your intellectual property and your brand.
An office action is generally a formal letter sent by the USPTO wherein the trademark examiner has one or more questions or reasons to reject your application. Applicants have six months to answer most office actions and they must be complete in order to be accepted. Have one of our experienced Colorado trademark attorneys review your office action today before your response time expires!
If you are a foreign-domiciled trademark applicant or registrant, you must have a U.S.-licensed attorney represent you. If you’re domiciled in the United States, you are not required to have an attorney. To determine whether you’re required to have a U.S.-licensed attorney, you must provide and keep current your domicile address in trademark filings.
Source: USPTO
Sometimes yes, if you are an owner. Otherwise, as applied to non-attorneys, according to United States 37 CFR § 11.14(b) in trademark cases, “Individuals who are not attorneys are not recognized to practice before the Office in trademark matters.” Note that actual licensed trademark attorneys put their names on each and every trademark application when you use our trademark filing services.
Before sending a cease and desist letter or going to federal court for trademark infringement, make sure the use of the allegedly infringing trademark overlaps with the goods and services you have already protected with your trademark registration. For the most options, make sure to consult with an experienced trademark attorney like our Colorado-based team, who can quickly tell you what your choices are and the advantages to each.
Trademark Filings and Renewals
1. Filing an intent-to-use application
An intent-to-use trademark application is different from an in-use trademark application because the applicant has not yet used the mark in commerce. An intent-to-use application serves to reserve a trademark and to protect the filing date of the trademark until a specimen demonstrating “use in commerce” can be provided by the applicant. This type of application requires additional fees compared to a standard application because the examiner has to review additional information about the mark compared to only needing to review a complete filing which is present in an in-use application. Assuming the examiner does not take any issue with the intent-to-use application you will be issued a Notice of Allowance wherein you can submit a specimen and seek final approval of the application. If you do not act after you have filed your mark or if you fail to respond in a timely manner to an office action sent by an Examiner, then your intent-to-use trademark will eventually be canceled or become abandoned. Our law firm can prepare and file this type of application on your behalf for a flat fee.
2. Converting a trademark application from an intent-to-use to in-use
Once your trademark has been actively used in commerce by you and you originally filed what is called an “intent-to-use” trademark application, then the USPTO must be notified of the use by filing a “Statement of use / amendment to allege use” form. The cost is $100 to the USPTO per class and a specimen of use for the USPTO. If you do not file this form, then your intent-to-use trademark will eventually be canceled. Our law firm can prepare and file this form on your behalf for a flat fee. Contact our firm today if you need to convert your already filed intent-to-use application to reflect your mark being used in commerce.
3. Renewing an intent-to-use trademark application
If you filed an intent-to-use trademark application, then you have six months to register that your mark is now actively in use. Failure to submit documentation to the USPTO of your active use in commerce will result in cancellation of the trademark. If it is clear that you won’t be prepared to use the mark in commerce by the time the six month period lapses, then we can help file the Extension of use form on your behalf.
Filing for the extension provides an additional six months to file a “statement of use” form to the USPTO. The USPTO charges $150 per class to extend the intent-to-use application. Our law firm can prepare and file this form on your behalf for $250.00. Please contact our law firm if you are interested in this service.
