The U.S. Trademark Application

Trademark Attorneys Committed To Personal Service In New York, Westchester County And ConnecticutFiling For Trademark Protection: The Basics

At the Law Offices of Joseph C. Messina, our lawyers bring years of experience to individuals and businesses internationally and across the United States, while also servicing clients in Westchester County, Fairfield County, and the surrounding communities in New York and Connecticut. We handle a wide range of intellectual property matters, including trademark registration, licensing agreements, domain name disputes, and copyright issues.

We are committed to treating every client as if he or she is our only client, dedicating our full resources and attention to the details of your case. When you have questions, we will provide prompt answers that are both thorough and thoughtful.

To arrange a meeting, send us an e-mail or call us at 914-381-2728.

Filing A Trademark Application

At this stage of the process, you will have selected a trademark for your product or service, conducted a preliminary search as well as a full search for the proposed Mark, and have received an Opinion Letter advising you that the trademark is clear for filing. Although the application preparation is relatively brief and the application is not lengthy, the information you provide on the application is critical to the success of the prosecution and will impact the time it will take to receive a certificate of registration.

Before filing your application, we will have discussed with you the type of prosecution we anticipate in terms of the likelihood of success, the time it may take for a certificate of registration to issue, the costs and fees involved in the transaction, and the evidence or materials we will need to file with the United States Patent and Trademark Office.

You will need to provide our firm with certain information about your trademark. Who or what entity will be claiming ownership of the Mark. The owner of the trademark is the person or entity that controls the nature and quality of the goods identified by the Mark and/or the services rendered in connection with the trademark. The owner may be an individual, corporation, partnership, or other type of legal entity. We will also need to know whether the drawing for the application will be in standard character format or special form. In other words, is there a design element to the Mark? Will you be claiming that a particular font, style or size of lettering, or color is a special feature of the trademark? A specific list of goods/services will need to be included in the application as well.

We must then determine the basis for filing your Trademark Application. We will assist you in determining whether you qualify for filing on the basis of Use in Commerce or whether an Intent-to-Use Application is appropriate. If the applicant is based outside the U.S. it may be appropriate to file based on either a registration issued in the home country or an application filed in the home country. Regardless of the filing basis of your trademark application, there will be a full investigation by a Trademark Examiner at the United States Patent and Trademark Office. The Examiner will conduct a search of active federal applications and registrations. If there is a prior application or registration that is confusingly similar to your proposed Mark, your application may be refused. However, since we were diligent and conducted prior searches before filing the application, your application should not be refused on this basis. Likelihood of confusion is just one ground for refusal of a trademark. There are many different reasons why an Examiner may refuse your application, but allowing our firm to assist you in this process significantly decreases the likelihood of refusal of your trademark application. It is crucial that you consult with experienced trademark counsel before filing a trademark application with the United States Patent & Trademark Office.