Trademarks – Part 2


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In Part 1 of this series (Trademarks – Part 1), we introduced trademarks and how they work, in general. In Part 2, we’re going to discuss the registration process.

So if you’re already in business and profiting from your name and mark, then why register? Because registration creates a presumption that you were the first to use the mark in commerce, since you undertook the effort to register through either your state entity or the USPTO.

The application process for a trademark is useful because you are asked to present lots of information about your mark. The application process also gives others the opportunity to object to your mark, in case you are potentially infringing or causing a likelihood of confusion for an existing mark.

In North Carolina, the governing entity for trademarks and service marks is the North Carolina Secretary of State. On their website you can find a very useful guide to registering trademarks in North Carolina, called the Trademark Booklet. The Secretary of States’ trademark office has compiled a handy guide for business owners who are interested in filing for registration on their own.

The USPTO also has some great public resources available to any potential applicant. Most of their instructional information can be found here as videos. They do also have a booklet that can be read, if you’d prefer to read the information instead of watching videos. It can be found on the same page.

The filing fees for a North Carolina trademark and a USPTO registered trademark vary. As you might expect, the fees for registering a trademark with the North Carolina Secretary of State are less than the fees for registering with the USPTO. The difference in the registration is that if you register in North Carolina, your protections are limited to the State of North Carolina. By filing with the USPTO, however, you are extending the protection of your trademark to the federal level.

 

USPTO Process

So if you decide to file, what can you expect? Well, you shouldn’t expect to register your mark right away. The USPTO website currently estimates that new applications won’t receive an initial review until 3 months after applying. Even after the attorney reviews your application, you may not be looking at registration any time soon.

Sometimes, the reviewing attorney will issue an office action, which is basically a letter requesting either further information or that some changes to the application be made before registration will be granted. These actions are issued by reviewing attorneys to address some sort of problem with the application, and can vary from simple mistakes up to conflicts with existing marks that must be addressed.

If you survive the office action, or don’t receive one, you’ll move toward registration. There are two basic types of trademark registration with the USPTO – 1(a) or 1(b). A 1(a) trademark application is for a mark that is currently being used by the filing entity. A 1(b) application is also called “intent to use” because you are currently not using the mark in commerce. You must still have a bona fide intent to use it in the very near future.

Next Steps

If your application passes inspection and you filed a 1(a) application, the next step is publishing your mark in the “Official Gazette”. The USPTO produces the Gazette weekly. This gives other parties the opportunity to file an opposition to your mark, if they believe that it either infringes or damages them in some way. If an opposition is filed, it will be reviewed before the Trademark Trial and Appeal Board. However, if no opposition is filed in the 1(a), your mark should then be registered!

If, however, you’ve filed as a 1(b), you have one further step. You’ll need to file a Statement of Use at some point and convert your Intent to Use application to a 1(a), by showing that you’re now using the mark in commerce. Once the Statement of Use is timely filed, and all issues resolved, you’ll then see your mark registered.

Trademark registration is not a simple process. If you have questions about a potential trademark, seek the advice of an experienced attorney.

For more information, please contact us at eric@lawplusplus.com or call (919) 627-8602.

 





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Disclaimer: The Information found in our blog is for educational purposes only, and is not meant as legal advice. If you need legal advice, please contact an attorney. Nothing in this blog is intended to create an attorney-client relationship.
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Eric Brei

Eric Brei

Former Partner at Law Plus Plus
Eric Brei was a Partner at Law Plus Plus until 2016 when he joined IBM's legal team.
Eric Brei

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