• Home
  • About Me
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent Prosecution Services
    • Patent Defense Services
    • Patent Enforcement Services
    • Trademark Search Services
    • Trademark Prosecution Services
    • Trademark Enforcement Services
    • Trademark Defense Services
    • Patent and Trademark Licensing Services
    • Worldwide Patent and Trademark Services
  • Learning Resources
    • Invention Agreements
      • What is an NDA and when to use them?
      • How to use a contract to protect your invention?
      • Working with others without losing your IP rights
      • Patent Assignments for Independent Contractors
      • Losing Invention Rights When Hiring or Collaborating with Others
      • Avoid Problems: Get an Invention Assignment Agreement
    • Protect Inventions
      • Do you need to get your patent attorney to sign an NDA?
      • Patent protection benefits and why every inventor should consider getting one
      • Reasons to only market your invention after securing patent pendency
      • 8 tips to successfully protect your idea
      • Four types of intellectual property to protect your idea and how to use them
      • Can a confidentiality agreement protect me like a patent application?
      • Dangers of 1 yr grace period under first-inventor-to-file system
      • File a patent application before telling others about the invention
      • Risks and benefits of securing software patent protection
      • Strategy to overcome patentable subject matter rejection
      • Best uses for design patents
      • Overview of Patents and Intellectual Property
      • Pros and cons of filing a continuation-in-part application
      • Benefits of Patent Protection
      • Continuation patent application and related divisional and continuation in part
      • Misconceptions of Provisional Patent Applications
    • How Patent Applications Work: the Basics
      • How to respond to an office action?
      • Request for non-publication of a patent application
      • Anatomy of a Patent Document
      • How to write a broad patent application?
      • Design patents: pros and cons
    • Patent process
      • Overview of the examination process within the USPTO
      • What is a patent search and How to do it?
      • Patent attorneys, agents and the USPTO can help with the patent process
      • Highs and lows of securing patent protection for your invention
      • Patent Process: Invention to Patent Granted (Comprehensive)
      • Benefits of a Patent Search
      • Overview of Patent Process
      • Patent process timeline and major milestones
      • Patent process, overall steps and procedures
      • What is the Patent Office procedure after filing a patent application?
      • USPTO Website
    • Patent costs
      • How much does it cost to get a utility patent?
      • Provisional Patent Application: Cheap Alternative?
      • Patent Cost Framework and cash flow
      • Provisional patent application: a cheap option?
      • Cheap provisional patent applications
    • Worldwide patents
      • Pros and cons of securing worldwide patent protection and their steps
      • Foreign patent filing to secure protection in other countries
    • Responding to Office Actions
      • Overview of Office Actions
    • Patent infringement
      • Basics of writing a patent claim for a patent application
      • What are the patent marking requirements and its benefits?
      • Avoiding Patent Infringement
      • Can I Copy My Competitor’s Product?
      • Can I Copy My Competitor’s Product? (Design Patent)
    • Trademarks
      • Trademark Registration: common law, state and federal
      • How to obtain a federal trademark registration?
      • How to select a trademark?
        • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Patent Attorney | Orange County | OC Patent Lawyer

Orange County Patent Attorney

(949) 433-0900

How to obtain a federal trademark registration?

TrademarkRegistrationObtaining a Federal trademark registration is generally a two-step process.  The first is the search step.  The second is the application step.  Oftentimes, trademark applicants proceed straight to the second step without conducting any sort of rigorous search process.  However, if the trademark search step is skipped then the company seeking trademark protection is proceeding without knowing the risks involved in adopting and using the proposed mark.  The company could be infringing on another’s trademark rights and run into problems downstream – usually at what seems a most undesirable time.

If the company uses a mark that is confusingly similar to another’s trademark, then the company is infringing on another’s trademark rights.  Early on, it may be easy to switch marks.  However, after considerable time has passed since adopting the mark, it does become harder to switch marks due to existing inventory, existing goodwill and future plans.  As such, it may be important to conduct the search prior to proceeding to the application filing step and launching the product.  Once the proposed mark is cleared for adoption and use, the company is more aware of their risk profile in adopting the proposed mark.

Please note that even with the search, there are no guarantees.  The proposed mark may have been cleared for adoption and use.  However, such clearance is only good to the extent that all prior marks were found and adequately considered.  There are also many gaps in the search process but it is a good idea to put forth a good faith effort to minimize the possibility that you might be infringing on another’s trademark.  The consequences could be significant since it could mean legal expenses to defend and more importantly changing your mark in the middle of a marketing campaign.  Changing one’s mark may not seem like a significant issue but after one or more years of using the mark, the goodwill associated with the mark is hard to change and may delay launch of the product.

Companies can conduct their own search on the USPTO website which is recommended prior to paying for a formal trademark search.  Thomson Compumark conducts trademark searches for a fee.  However, they do not and will not provide an opinion or an analysis of the search results.  Moreover, if the proposed mark and/or the goods and services description provided to them is incorrect, then the trademark search may be useless or less useful.

Two different types of formal trademark searches are commonly used.  The first is a limited trademark search which searches only the federal database and the databases of all 50 states of the United States and its territories.  The second is a full trademark search which searches the federal and state databases as well as a number of other databases such as magazines, internet, business listings, etc.  The more databases that are searched, the more likely something will be found that conflicts with your proposed mark and that is a good thing because it helps avoid future problems and helps evaluate potential conflicts.  The benefit of conducting the full search versus the limited search is that the full search provides more peace of mind if no conflicting marks or names are found after conducting the full trademark search.

After the mark passes the trademark search step, the trademark application should be filed shortly thereafter with the United States Patent and Trademark Office to secure federal trademark rights.  Upon successful registration, anyone that uses a mark confusingly similar to the proposed mark would be infringing on the federally registered trademark rights.

In lieu of conducting a limited or full trademark search, some companies rely on the trademark search conducted by the trademark office.  When a trademark application is filed with the United States Patent and Trademark Office, the trademark office conducts its own independent trademark search.  However, the search is only of the Federal database.  It does not check state and other databases as is searched for in the limited and full trademark search.  Moreover, it could take a few months for the trademark office to render its office action letting you know if they found any conflicting marks.

With all this said, if a corresponding domain name closely associated with the proposed mark is crucial, then secure the desired domain name first before going through the formal trademark search and trademark filing steps discussed above.  The reason is that the relative costs associated with the registration of the domain name is significantly less than that of the trademark search and application steps.

I invite you to contact me with your trademark questions at (949) 433-0900. Please feel free to forward this article to your friends.

Related Articles for Trademarks

  • Trademark Registration: common law, state and federal
  • How to obtain a federal trademark registration?
  • How to select a trademark?
  • Facebook
  • Twitter
  • LinkedIn

Covid-19

Covid-19: We are fully operational.  Due to Covid-19, all meetings are conducted via zoom.

Professional Profile

James Yang Business Patent Attorney

James Yang, Patent Attorney

James Yang is a patent attorney whose practice encompasses all area of intellectual law including patents, trademarks, copyrights and trade secrets. Professional Profile

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?

New Book Release

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

Peer Recognition

top attorney patent application
client choice patent application
Rated by Super Lawyers
AV Preeminent rating

RECEIVE PATENT UPDATES

Stay up to date on major changes and get tips on patent prosecution.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

  • Patent Prosecution Services
    Patent Defense Services
    Trademark Prosecution Services
    See All Services

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete terms of use

ATTORNEY ADVERTISEMENT

© 2021 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney