Trademark Q&A

Welcome to my Trademark Q&A page where I answer the most common trademark questions. If you don’t see an answer to a trademark question you have, then chances are we need to talk about your specific situation. Contact me, and we can set up a consultation about your trademark matter.


What things can I have trademarked?

You can trademark a name, logo, or slogan with the United States Patent and Trademark Office. Some companies even trademark things like color (Tiffany with its distinctive blue) or a sound (Law&Order with the “chunk, chunk” sound).

How long does the process take?

The entire process can take 9 months or longer. The USPTO receives about 500,000 applications each year. There also may be delays if you receive an Office Action (denial) from the USPTO examining attorney.

What if I am not using my trademark yet but still want to protect it?

You can file a 1b, Intent to Use, application if you are not yet using the thing you want to trademark. However, you must actually intend to use it and do so within about a 3-year-period, if you ask for the maximum amount of USPTO extensions.

Will the USPTO take the time to see if I am using my trademark?

When you file a trademark application with the USPTO, you must provide examples, called specimens, that you are actually using the requested trademark in commerce. If you file a 1a application, which means you are using the trademark in commerce now, then you must provide those specimens with the application. If you file a 1b application, then you must eventually file those specimens.

I have looked at the USPTO website, and the trademark I want isn’t taken. So, I am clear to get my trademark, right?

Not necessarily. The USPTO is concerned about confusion in the marketplace, and it considers 13 factors when making that determination. What this means is that there may be a mark close to yours that will prevent your mark from being registered. A comprehensive search performed by a trademark attorney will give you an analysis concerning your chances of success at the USPTO.

When I get my trademark, I can put it on anything I want to, right?

Not exactly. The USPTO divides trademarks into 45 different classes of goods and services. When you file a trademark, you must file in at least one class. You can use your registered trademark for goods or services in that class. If you use your trademark in another class, you don’t have protection, and you may even be infringing on someone else’s trademark. A good example of this is Dove Chocolate and Dove Soap. They both contain the word “Dove” but they are in different classes.

What happens once a trademark application is filed?

Once the application is submitted, it takes about 3-4 months for an examining attorney to review it and see if there are any problems with it. If there are, he or she issues an office action. It can be something simple, like a change in the class or description of the mark, or it can be more complicated, like confusion in the marketplace. A comprehensive search performed by a trademark attorney can alert you to the possibility of big problems down the road. If there is no office action or if the office action is overcome, then the trademark is published online for opposition for 30 days in the Trademark Official Gazette. If no one opposes it, then the registration is usually granted in about 11 weeks. If you have not submitted specimens because you filed an Intent to Use application, then you will be asked to submit them within 6 months after opposition. You can also ask for an extension of time, up to 3 years.

I got an Office Action from the USPTO, and now I don’t know what to do!

An Office Action doesn’t necessarily mean the end of the road for your trademark. You may have to fix a simple problem, such as the class or the something in the description. An Office Action may also mean, though, that you have a bigger problem, such as a refusal due to confusion in the marketplace. A response to that kind of refusal really requires a trademark attorney’s expertise. The attorney must make an argument that the mark will not cause confusion, and a trademark attorney who handles Office Action responses is acquainted with the case law and arguments that best meet that challenge.

Contact me to discuss how to protect your brand, file a trademark application, respond to an Office Action, or discuss other trademark issues.