The trademark process can take up to 12 - 18 months! So let me tell about this "wild ride!"
Initial consultation: The client will meet with Coger Law to discuss the nature of their business, the goods or services they offer, and the trademark they wish to register.
Prior to the consultation, the client will complete a trademark intake form. This way the firm will be ready with all of the pertinent information to have a productive meeting with the client.
Trademark search: The attorney will conduct a search to determine if the proposed trademark is available for use and whether there are any similar trademarks already registered.
In our opinion, the trademark search is THE MOST IMPORTANT PART OF THE PROCESS! You are in business to make money, not throw away money! As such, a business owner should take the time to work with their attorney to explore federal and state trademark registrations, domain names, social media profiles and more. Don't spend all of your time and money developing a brand when there is already a similar brand that is protected by trademark! After the comprehensive trademark search, Coger Law will issue you an opinion letter, stating our thoughts and whether you should go forward with your trademark application(s). (Please note: Successful registration is not guaranteed.)
Application preparation: The attorney will prepare and file a trademark application with the United States Patent and Trademark Office (USPTO).
The trademark application will have filing fees in the amount of either $250 (TEAS Plus) or $350 dollars (TEAS Standard). TEAS Plus is cheaper and easier to fill out but you can only pick from a pre-made list of options to describe what your business does. TEAS Standard is more expensive but you get to write your own description of what your business does. So, it's up to you to decide which one you want to use based on how you want to describe your business and how much you want to spend." Coger Law typically files a TEAS Standard application. Not only does TEAS Standard allow you to draft your own description, it gives you more leeway to amend the trademark application if the USPTO Examining Attorney is inclined to the deny the trademark application.
Examination: The USPTO will examine the application to determine if it meets all legal requirements, including whether the proposed trademark is distinctive and not confusingly similar to any existing trademarks.
If the examining attorney, notices an issue that would potentially result in the refusal of the trademark, the examining attorney will issue an "office action."
A trademark office action is a written communication from the USPTO, to an applicant or registrant of a trademark or the attorney. The office action typically includes information about any deficiencies or issues that have been identified with the trademark application or registration, and may require the applicant or registrant to take certain actions, such as providing additional information or making changes to the trademark. Office actions can also be issued to object or refusal of registration or for non-compliance with regulations.
Sometimes, attorneys describe office actions as either non-substantive or substantive office actions. A non-substantive office action is when the USPTO that looks at trademark application and has a small problem with your application. They might ask for more information or for you to make a small change.
A substantive office action is when the USPTO has a bigger problem with your application. They might say that your trademark is too similar to another one or that it's not a good fit for a trademark. Both types of office actions need to be responded to, but a substantive office action will take more work to fix. A substantive office action may require extensive research and writing to overcome the examining attorney's initial refusal.
Publication: If the application is approved, it will be published in the Official Gazette, which is a weekly publication of the USPTO. This allows any interested parties to oppose the registration of the trademark.
Interested parties have 30 days to oppose your trademark application.
Oppositions: If an opposition is filed, the attorney will respond to the opposition and argue in favor of registration. The USPTO will then make a decision on whether to allow the trademark registration to proceed.
If an Opposition is filed, Coger Law will consult with the client to discuss the issues raised in the opposition and discuss a strategy plan.
Registration: If the trademark registration is approved, it will be registered and the client will be issued a certificate of registration. (YAY!)
Maintenance: The client will be required to file maintenance documents and fees to keep the trademark registration active.
Overall, the trademark registration process can take 12-18 months, depending on the specific circumstances of the case, such as whether any oppositions are filed and how quickly the USPTO processes the application.
Don't wait any longer to protect your brand! Now that you have a better understanding of the trademark process, take the next step and schedule a discovery call or strategy session with Coger Law. Let us help you navigate the process and secure your trademark. Contact us today to get started!