Expertise

USPTO Trademark Search and Registration Process

Thank you for your interest in our trademark search and registration services.

You are taking an important step toward increasing the value of your business and protecting your brand. While common law trademark rights do exist without a registration, a trademark owner enjoys significantly greater protections from registering the trademark with the United States Patent & Trademark Office (“USPTO”).

Those protections include:

  1. Your registration will be a presumption of the validity of your trademark, your ownership of the trademark, and your exclusive rights to use the trademark.
  2. Your registration will act as constructive notice to others of your ownership of the trademark.
  3. Your registration will be listed in a publicly available database that often deters others from adopting a similar trademark.
  4. Your registration makes your rights nationwide. Without a registration, your rights are only acquired in the geographic areas where you can prove you have customers.
  5. Your registration will block the registration of confusingly similar trademarks by others.
  6. Your registration entitles you to enhanced damages against counterfeiters.
  7. If you sell goods, your registration gives you the right to record your trademark with U.S. Customs and Border Protection, which can bar importation of products bearing an infringing trademark.
  8. Your registration gives you the right to use the ® symbol.
  9. Your registration can provide a basis to register the trademark in other countries through the Madrid Protocol, which allows registrants to obtain registration in countries that are parties to the Protocol.
  10. Your registration gives you the right to enforce the trademark against cybersquatters who reserve confusingly similar domain names after the date the trademark is registered.
  11. Your registration gives you the right to register the trademark with the Amazon Brand Registry to control the brand across the Amazon platform.

It is important to note that the benefits of federal registration do have a limitation. The nationwide priority conferred by trademark registration does not apply to a “prior user” of the trademark. A prior user is someone who began use of the trademark prior to the date of your trademark application. A prior user can keep using the trademark in its trade area, defined as the geographic area where the prior user can show it has acquired common law rights in the trademark before your registration. The prior user is generally frozen into that area though. In addition, regardless of the geographic scope of the prior user’s rights, the prior user can oppose your application for registration or petition to cancel it.

What You Should Do First

The first step in the process is for you to perform the following searches:

  1. Search the Internet for any prior users of similar trademarks in similar fields.
  2. Search your local County Recorder and Secretary of State or corporation commission websites to determine if anyone in your state already has the name.
  3. Perform a preliminary trademark search at www.uspto.gov.
  4. Register a domain name using the trademark.

Next Step Is to Perform a Formal Trademark Search

While the searches that you perform can save you money if you find a conflict, if you do not find any similar trademarks there, it is still important that you have a professional search performed since you may not locate a relevant trademark.

Jaburg Wilk’s attorneys can perform a search for pending or registered trademarks in the United States Patent & Trademark Office (“USPTO”) to determine what trademarks, if any, might be considered to be confusingly similar to your trademark. This search includes a letter with our opinion on the likelihood of obtaining the registration based upon the search results.

We can also arrange for a third-party provider to perform an extended search, depending on your plans for the trademark. While more expensive, the extended search includes USPTO, states, common law, web common law and domain names.

There are both risks and benefits of purchasing this extended search. First, the search is relatively expensive (see fee schedule) Second, if the search reveals a small remote user of your exact trademark, your knowledge of such user will preclude you from truthfully executing the declaration required for USPTO filing because the declaration provides that you know of no other entity that has rights to the trademark. One possible solution is to perform a search of the USPTO before filing and then perform a full search after your USPTO application is filed, but before you expend substantial sums on marketing the brand.

Important Items to Note

Our search is performed on the most up-to-date online database available. However, there is always the possibility that a newly filed application, which has not yet been placed in the search database, might be confusingly similar to your trademark. In that situation, the USPTO will give priority to the earliest filed application.

Also, it is always possible that new applications could be entered into the database between the time when we perform the search and when the USPTO actually receives your application. For this reason, if you decide to go forward with applying for registration, you should do so with as little delay as possible after the search. Again, the USPTO will give priority to the earliest filed application.

While our search is comprehensive, there is always the possibility that Jaburg Wilk might not find a conflicting application that is pending. If that occurs, we agree to respond to the office action without charge. Additionally, if our search fails to reveal a conflicting trademark that was already pending or registered at the time of the search, and it results in the denial of your application, we will apply to register a new trademark without charging an additional fee. If you decide to engage Jaburg Wilk for trademark services, you agree that our liability for failing to bring a previously filed trademark to your attention is limited to the remedies listed in this paragraph.

If you elect not to have any search performed and an office action issues for your application, Jaburg Wilk charges $475 per hour for responding. Generally, such responses can take 1-3 hours depending on the issues raised by the examining attorney. If there is an office action, you will determine whether or not you would like Jaburg Wilk to respond.

Trademark Registration Process

If you decide to proceed with applying for registration of your trademark with the USPTO, Jaburg Wilk can file the application for you on an actual use basis if you are already using the trademark in interstate commerce in the United States in connection with goods or services or we can file the application on an intent to use basis if you are not yet using the trademark in interstate commerce in the United States but intend to use the trademark in the future. When you start using the trademark in interstate commerce, capture and preserve dated evidence of that first use as you will need to know your date of first use in commerce and you may need to prove it if challenged. Once Jaburg Wilk files the application, it takes an average of 10 to 20 months to actually receive the registration from the USPTO depending on whether we file based on actual use or intent to use and whether the USPTO issues any office actions. The timeline and steps in the registration process for actual use applications is shown here. The timeline and steps in the registration process for intent to use applications is shown here

You have the right to use the ™ (for a product) or SM (for a service) symbol on any trademark which is original and which identifies your product or service, whether you apply for registration or not. However, you should not use the ® until and unless you receive a letter from Jaburg Wilk enclosing the final registration and indicating approval to use the ® symbol.

Status of a trademark application may be checked at any time at http://tsdr.uspto.gov by entering the serial number from the filing receipt.

If you would like to proceed, complete the Trademark Search Instructions including payment from our fee schedule. We will proceed based on your instructions to us.

Begin Trademark Search