The trademark process is long and complex. It can take a year or two for a trademark to be registered. Also, you will have many choices to make along the way, and without experience or guidance you may find the process takes more time and more money. If you want clear guidance on how to pursue your trademark application ultimately have it approved by the USPTO, you’ve come to the right place
What is trademark prosecution?
Trademark prosecution refers to the entire process of obtaining a trademark, from counseling you on trademarks, to completing the application, to receiving your trademark registration. The process of preparing and responding to an office action and filing a statement of use are are some of the activities that trademark attorneys do to prosecute your trademark application. All of the activities involved in helping you get your trademark is called trademark prosecution.
How we help clients get trademarks
We help clients with their trademarks by guiding them through each step of the process. We want you to know your options and the pros and cons of each option so that we or you can make better decisions.
Step 1: Initial Consultation
The first step is the initial consultation. We will conduct a trademark search, review ways to protect the trademark, cover ownership issues and craft a goods and services description. Our steps are are designed to mitigate infringement against senior marks and to increase the likelihood of securing your registered trademark.
Step 2: Confirmation of the trademark particulars
After we discuss the trademark particulars, we will send you an email that confirms our finding and recommendations. This step is designed to lessen confusion. At this point, you can approve the particulars on which the trademark application will be filed.
You can now use the superscript TM on your proposed mark to notify others that you are claiming those terms as your trademark.
Step 3: Filing of your trademark application
After approval of the particulars of the trademark information, your trademark application will now be filed.
You are now “trademark pending” and can safely market your product and mark to others without fear that they will steal your brand.
Step 4: Registration of your trademark
To get your trademark registered, we will guide you through the process of submitting a statement of use. Upon registration, you will need to file a renewal 5 years later.
Working with Clients Throughout Orange County & Beyond
Because we are located in Irvine, many of our clients live or work in Orange County, California communities like Mission Viejo, Aliso Viejo, and Santa Ana. But we also work with clients in surrounding areas, like the San Gabriel Valley, Los Angeles County, and elsewhere in Southern California.
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Trademark prosecution refers to the act of filing a trademark application and seeing it through to approval by the Trademark Office.
The Trademark Office also processes a large volume of trademark applications. They can’t hire their way out of the backlog, either, because of the amount of training needed before they are qualified to approve or reject a trademark application. All of the examiner attorneys need to apply the standards evenly. The decision to register or refuse registration should be the same regardless of which examining attorney is assigned to your application.
To work through its backlog, the Trademark Office will take about 6 to 9 months before they can examine your trademark application.
Throughout the entire time, we guide you through using the mark without a trademark registration. For example, one of the things that we do for you is a knock-out search to determine if you might be infringing on another’s trademark right in the same or similar mark. Even though the trademark office takes a long time to examine your trademark application, you can use the mark before registration.
The best-case scenario in terms of cost is about $2500 and 9 months before your trademark is registered.
The worst-case scenario in terms of cost is about $5k to $10k and 3 to 5 years before your trademark is registered.
My trademark services include steps that mitigate the worst-case scenario. In particular, we conduct A trademark search to determine the likelihood of you receiving a registration on your trademark. If we find a senior mark that would disqualify you from registering your trademark, we’ll let you know so you can change your mark before you get into trouble.
Also, we craft a goods and services description to avoid conflicts with senior marks. By doing these things, we reduce the likelihood that you would encounter the worst-case scenario.
If you’re working with others, I recommend that you assign the trademark rights to a corporation instead of owning it individually amongst the group. In the latter case you would need to register your corporation prior to filing the trademark application.
I also recommend that you conduct your own trademark search to knock out your own marks before paying me to do it for you. In that way, when you go through the trademark registration process with with us, we are merely confirming that your mark can be registered.