About Attorney Charles Riddle
Attorney Riddle has over 20 years experience in US and foreign trademark law. He is a licensed attorney, patent attorney, and a trademark litigator. As a licensed attorney, he often provides immediate feedback to clients regarding questions about how best to file a trademark application. With this background in intellectual property law, Attorney Riddle can anticipate most trademark rejections and address them before the application gets filed. Even if there are similar registered marks, we have various strategies at getting your trademark application allowed. Read More About TM Attorney Charles Riddle.
About the Trademark Application Process
The Trademark Registration Consultation
The registration process begins with a complementary telephone consultation with the trademark lawyer who searches for the proposed mark or logo. The initial search is more of a knock-out / exact search. We screen the proposed mark and advise you about possible grounds for refusal of your trademark application. The purpose of the knock-out search is to identify any immediate “red flags”. If we see a problem with your proposed trademark or logo, we stop and discuss. Often, we work with the client on alternate business names when there is a clear blocking trademark application or registration. We also discuss substantive legal actions and strategies that can be taken to resolve a potential issue.
During the consultation, we screen the trademark, logo or slogan for “absolute grounds” of rejection. This includes descriptiveness, genericness, surname refusal, personal name, deceptiveness, failure to function as a mark, ornamental (non-trademark) use, geographic descriptiveness, and more. If we anticipate a potential ground for refusal of the trademark application, we discuss it and advise of ways to improve your chances of overcoming the rejection. Often. various trademark application options and strategies are provided as ways to improve chances of getting registered.
We also discuss proof of use requirements for a trademark application. Use of the trademark in commerce is a basic requirement for applications. Trademark registrations are not granted until the applicant can provide proof of use in commerce. Trademark Office requirements for proof of use are strict and very detailed. Most non-attorney-filed applications fail with a specimen / proof of use rejection. We will work with you at the time of consultation (and later) to identify and evaluate the proof of use for your trademark, logo or service mark. If the specimen of use is lacking, we advise an intent to use trademark application, which has additional requirements and fees later on in the process.
Above all, we want to educate you on the trademark application process and want you to be confident in moving forward. We endeavor to provide each client with confidence, knowledge, and insight of what they can expect going through the trademark application process. This is where 20+ years experience in trademark law pays off. We see the bigger picture when it comes to trademark rights, and want to share this with you as we move forward.
After the Trademark Consultation
Once you are confident in moving forward, we provide you with an engagement letter and retainer invoice. The trademark engagement letter is not a contract, but more of a written disclosure, which helps client understand the legal requirements of the registration process and possible paths your trademark application can take. Once completed, you will receive confirmation, and we will begin work on your trademark application.
A detailed search and search report is prepared by the licensed TM attorney to identify similar trademark records that could be grounds for rejection by the Examining Attorney at the Trademark Office. The detailed report also reiterates any absolute grounds for rejection we may have discussed during the consultation. Also, we again work with you on the specimen / proof of use to be included with the trademark application.
The attorney then prepares the application and provides it to you for review and approval. The TM attorney is available to discuss any questions or concerns. Once you’ve reviewed and approved the draft trademark application, we will file it. You will receive confirmation by email, which includes the trademark application serial number, and a detailed discussion of what to expect for the next steps in the process. Our attorney will be assigned as the correspondent with the Trademark Office, who will monitor the status of the filing, and report to you status updates throughout the trademark application life cycle.
Once theTrademark Application Is Filed
Expect to wait about 10 months from the application filing date. The USPTO is examining applications about 10 months from the filing date. The Examining Attorney will review the application and screen it for blocking registrations or applications. The Examining Attorney will also review the application on absolute grounds. Much like we did with you during the consultation and with the search report. If there is an objection or refusal of the trademark application in the form of a Trademark Office Action, we will review it and provide you a reporting letter explaining the Office Action. We also manage a calendaring system with the deadlines for the response. We will work with you and advise on the appropriate options and procedures for responding to the trademark office action.
If the Trademark Office finds the application allowable, we will receive a Notice of Trademark Publication, and then notify you the application was approved for publication. The application is then published for 30-days, where third parties are provided the opportunity to oppose your trademark application. If no opposition or extension to oppose is filed, the registration will issue in about 12 weeks from the publication date. If your application was an intent-to-use trademark application, you will receive a Notice of Allowance. Once you provide proof of use in the form of a specimen of use, the trademark application will be granted, and you will receive the trademark registration.
Our trademark management system will track deadlines for renewal of your trademark registration, and you will be notified of the deadlines and requirements for maintaining the trademark registration by making Section 8, Section 15 Trademark Declarations at year 5-6, or Section 8 and Section 9 Trademark Renewal Applications at years 9-10 after the date of registration.
Our goal is register the logo or mark quickly and efficiently – for the least cost necessary. This is why knowledge and experience matters.