Trademark Applications and Prosecution | Hyra IP
Trademark Applications and Prosecution
Trademark Applications
Initial Consultation
Hyra IP makes the trademark application process fast and easy. As a first step, I offer an initial consultation at no charge to you. To schedule this consultation, please call me any time at 1-866-913-3499 or contact me through the website or by email. Business hours are 8:30 AM to 7:00 PM Eastern Time, Monday through Friday. Availability at other times varies.
During this initial consultation, I can answer any questions that you have about the trademark process and we can discuss the trademark you are interested in applying for. If you decide to go ahead with the application, I will send you an engagement letter and will officially be your attorney when you sign and return it. Fee information for trademark applications can be found here.
Preliminary Steps
Once you have retained me as your attorney, I will send you my recommendations, some general information on the trademark application process and a form to fill out pertaining to your trademark application.
Once you fill out and return the form along with any other information you have about your trademark, Hyra IP will prepare and file your trademark application. If you are unsure of the registrability of your mark, a registrability search can be conducted before your application is begun.
Your Trademark Application
First, it must be determined whether the application should be submitted on an intent-to-use basis, on the basis of existing use in commerce, or on the basis of a foreign registration. Dates of first use must be determined if applicable. A high quality print or electronic copy of the mark must be supplied, unless the trademark is a plain word mark. Finally, the goods and services covered by the mark must be listed.
A trademark registration covers only the goods and services identified by the Applicant. Although the listing of goods and/or services can be clarified or narrowed during prosecution, it cannot be broadened. Goods or services within a single class are all covered by a single fee. If the goods and services covered by the mark extend across several classes, additional fees must be paid for each additional class.
Once the appropriate goods and services have been identified, your application will be ready for filing. Your trademark application can be easily filed online without the need for submitting documents. Due to the focus on service and turnaround time at Hyra IP, this entire process can be completed in a single day if necessary.
Registrability Searches
If the registrability of your trademark is in question, Hyra IP recommends a registrability search prior to filing your application. In a registrability search, the database of pending and registered trademarks is searched for other trademarks that are similar in sound or appearance and in listed goods or services to the trademark you would like to register. Publicly available internet documents are also reviewed for such trademarks in order to anticipate and avoid future difficulties.
Confusingly similar trademarks may be a basis for a Trademark Examiner to reject or suspend your application. Even if the Examiner does not believe that a trademark is confusingly similar, the owner of that trademark may feel otherwise, potentially resulting in lengthy and expensive opposition proceedings.
I have a great deal of experience with trademark applications and with trademark oppositions and can give you a good idea of whether trouble may be expected for a given trademark application. I can also explain the likely costs and consequences if difficulties are encountered. If a registrability search finds some close trademarks in use by others, you may wish to modify your desired trademark or change to another trademark entirely to avoid complications.
Performing a registrability search at the time you select your trademark is a sound and money-saving practice. You do not want to spend time and money building a brand, designing logos and packaging, etc., only to discover that the mark you have been using has already been taken.
Although registrability searches are reasonably comprehensive, it is not possible to find every trademark in existence. For example, some trademarks that were in use before yours may never have been registered and could pose a difficulty for you in the future. A favorable registrability opinion does not guarantee that your application will eventually result in a registered trademark.
My fee for performing a registrability search and rendering an opinion on registrability is $275.
Responding to Office Actions
After your application is filed, it will be processed at the United States Patent and Trademark Office (PTO) and assigned to a Trademark Examiner. This Examiner will consider your application, usually about six months after it is filed, search pending and registered trademarks for other confusingly similar marks, and decide whether your application is in condition for allowance and registration.
Many times, the Examiner will allow your trademark application without comment and allow the trademark to pass to registration. Sometimes, however, there is a problem with the application. Many times the Examiner will ask for the listing of goods and services to be clarified. Other times the Examiner will require a disclaimer or other clarification. And sometimes, the Examiner decides that the trademark is not registrable because it is merely descriptive, or confusingly similar to another registered mark. In that case, the Examiner will send out an Office Action explaining the problem.
The applicant is required to respond to each Office Action to prevent the application from becoming abandoned. This response should point out the errors made by the Examiner or amend the application in order to overcome the Examiner’s objections. Preparing such a response properly requires intimate knowledge of trademark law and experience with the policies, procedures, and customs of the PTO. The Examiner may react to an applicant’s response by sending a new Office Action or by allowing your application to pass to registration.
In some cases, declarations or other evidence may need to be submitted with a response in order to eventually achieve registration. Appealing the Examiner’s decision may also become necessary at some point during this back-and-forth process known as trademark prosecution. Interviews with the Examiner can sometimes speed up the process.
Hyra IP will prepare your responses, with your input, and guide you through the trademark prosecution process from beginning to end. I have extensive experience in preparing responses for a wide variety of applications and have had success both with examiners and at the appellate level.
Appeals
When a fundamental disagreement with the Examiner arises during prosecution, it sometimes is necessary to appeal your case to the Trademark Trial and Appeal Board (TTAB). A panel of three administrative patent judges will review the Examiner’s decision.
The applicant’s arguments are submitted to the Board in the form of an appeal brief. After the Examiner submits an Examiner’s Answer to the Board, the Applicant has a chance to respond in the form of a Reply Brief. A decision is then handed down by the BPAI panel, usually about six months later depending on the Board’s docket.
At this point, the Applicant has one more opportunity to convince the Board by pointing out errors the panel made in its decision in a Request for Reconsideration. If the Board’s decision is unfavorable, it can then be appealed either to District Court or to the Court of Appeals for the Federal Circuit.
Hyra IP can handle any appeal that becomes necessary in the prosecution of your applications. I am adept at handling trademark appeals and pursuing them to successful conclusions. I also have experience at the Federal Circuit level, am a member of the Federal Circuit Bar, and am able to pursue an appeal at that level when necessary.
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