Federal and state trademark laws seek to protect business names, logos, slogans, etc. that identify the source of particular goods or services. They are only issued upon proof of actual use of the mark in interstate commerce.
We make protecting your trademarks not only simple but also affordable. Our goal is to make the trademark application process as cost-effective as possible by offering a flat-rate, reasonable fee for our trademark registration services. Our firm offers both trademark registration (for a mark already in use) and trademark reservation (for a mark before it is put into actual use).
Confirmation of Registrability: A mark will not be registered if it is merely descriptive, generic, geographic, or a variety of other disallowed features. We confirm that the mark itself can function as a trademark before going any further in the process. We will inform you if there is a way to alter the mark to improve its likelihood for registration.
Before or very soon after selecting a name for your business, brand, product name, or service, you must ensure that you can use that name. Use of a mark that has already been registered may be “willful infringement” and subject you to significant money damages. An effective search will reveal whether an intended mark would infringe on an existing trademark, therefore preventing an expensive legal action or a necessary rebranding effort. Without a proper search, all the time and money you spent towards the registration process will be lost. A search will determine current name usage, assess trademark strength, and reveal potential legal issues. Our search process includes attorney fees, a vendor-provided comprehensive search report with results, an opinion letter as to whether registration is recommended, and legal advice for moving forward.
If we do find trademarks that are similar to yours, we will work with you to come up with a different name or find a creative way, within the legal parameters of trademark law, to differentiate your trademark in such a way to reduce the likelihood of registration problems.
New Trademark Application
Trademark registration application process is the next step in protecting your unique business name and/or brand. Our firm ensures that your application is accurately submitted because filing fees are non-refundable. We also work to reduce the likelihood of substantive Office Actions or registration delays. A federal registration with the U.S. Patent and Trademark Office lets you achieve broad rights upon registration.
Our trademark registration package includes attorney fees and filing your trademark registration application with the U.S. Patent and Trademark Office in one class of goods or services ($275 per class). We do not charge additional attorney fees for filing the same mark in multiple classes. The U.S. Patent and Trademark Office and the Louisiana Secretary of State calculate filing fees per class. As such, these would be the only additional fees required to file in multiple classes. Note that this package does not include a comprehensive clearance search.
Trademark Reservation: If you have not yet used the trademark, but you plan to do so in the future, you may file an application with the U.S. Patent and Trademark Office based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. For an application filed for a mark before it is in use (an “intent to use” application), a Statement of Use must be filed to prove the mark is being used in interstate commerce. This is a requirement before a trademark can be registered. The U.S. Patent and Trademark Office fee to file a Statement of Use is $100 for each class of goods or services in the application. A total of five extensions, each lasting six months in duration, may be granted by the U.S. Patent and Trademark office before proof of use in interstate commerce is required. Note that each extension incurs additional filing fees.
Office Action Responses
Not all trademark applications go smoothly. If the U.S. Patent and Trademark Office has any concern with your application, they will issue a notice known as an Office Action. Some are a request for clarification or additional information. Some represent a denial of your application. The U.S. Patent and Trademark Office deadline to respond to an Office Action is six months from the date of issue. If you do not respond to an Office Action, your application will be deemed abandoned.
If your trademark has been rejected by the U.S. Patent and Trademark Office, we can help you to overcome the objection. We respond to routine or non-substantive Office Actions from the U.S. Patent and Trademark Office as a part of our flat-fee trademark application service. Should you need our firm to respond to substantive Office Actions, such as likelihood of confusion refusals, we will review your notice, discuss your options with you, and work within your budget to help resolve the refusal.
Statement of Use
Did you apply for your trademark under an “intent to use” (Section 1(b))? If so, you will need to file a Statement of Use to finalize your trademark registration. In order to file the statement, you must be actively selling your branded products or rendering your services in the United States. You can file for a six-month extension to this requirement up to a total of five times. If you miss the deadline to file a Statement of Use, your trademark application will be abandoned. You will have six months to revive the application for a fee.
If you filed your trademark through our firm, we will inform you when your Statement of Use is due and work with you to complete the filing as a part of our trademark application package.
If you did not use our firm to file your original trademark application, we can still assist you with the Statement of Use filing.
Foreign Trademark Prosecution
We can help you obtain trademark protection for you mark throughout the world by working through international trademark treaties or with trademark practitioners in other countries.
Trademark Portfolio and Brand Management
Getting the trademark registration is the start of the brand protection process, not the end. To maintain a federal trademark registration, a Declaration of (Continued) Use must be periodically filed with the U.S. Patent and Trademark Office. A Declaration of use is a sworn statement that the mark is in use in commerce. The Declaration must be filed between the 5th and 6th years after the date of registration. A federal trademark registration is effective for 10 years from the date of registration. A renewal will extend the federal registration for an additional 10 years from the date of expiration. The U.S. Patent and Trademark Office does not remind trademark holders of the need to make maintenance or renewal filings.
A federal Declaration of Incontestability is not required to maintain registration of the federal trademark or service mark, but it will help deflect legal challenges as to the mark’s validity.
*U.S. Patent and Trademark Office and/or Louisiana Secretary of State filing fees (renewal, use, or incontestability statements) are additional costs.
We monitor the U.S. Patent and Trademark Office database, along with 28 EU countries, Australia, New Zealand, and WIPO databases for all new trademark filings to ensure no one else attempts to register a same or similar trademark. We also monitor your trademark for any infringing commercial use and your use of your trademark to ensure you are in compliance with all trademark laws. We provide you with quarterly reports of our findings, notify you of any action needed, and notify you of renewals that are due on your registration.
Louisiana Trademark/Service Mark Application
A Louisiana trademark/service mark registration is effective for 10 years from the date of registration. A renewal will extend the registration for an additional 10 years.
One of the most important decisions you can make is whether you are going to protect your trademark against third parties. Every trademark owner should have a plan in place to deal with copycats, infringers, counterfeiters, and any other third party that may damage your trademark. We can assist you with developing an effective trademark enforcement plan for your budget.
Trademark License Agreements
A trademark license agreement enables you to expand your brand and increase your intellectual property revenue. We can draft your license agreement or negotiate the agreement terms on your behalf. A well written and favorably negotiated trademark license agreement is essential to achieve the full value of your intellectual property.
Successful registration or results cannot be guaranteed. Clients desiring trademark services must sign an engagement letter and fee agreement before work is started. The engagement letter defines the relationship between the attorney and client, the fee structure, the terms of the engagement, and demonstrates that the client understands the risks involved.
You’ve spent a lot of time (and possibly money) branding and marketing your company name, product name, logo, and/or slogan. Although these items are non-tangible, they are probably the most valuable assets that you own. It’s important to protect these assets by filing for federal trademark registration. We know that as a creative entrepreneur that you are watching your budget. And you know that you need protection. We want you to make this important and necessary investment in your future. Don’t underestimate the vital importance of protecting your brand. The protection you secure today will pay off in spades tomorrow. Let's start today!