As part of our Trademark practice, we provide trademark registration process services.

A company’s trademarks create its identity and set it apart from the competition. Therefore, trademark registration is an important step in protecting a company’s brands. However, the trademark registration process can be extensive and complex. Experienced trademark attorneys can provide strategies for navigating the trademark registration process.

We work with clients to grow and protect their trademark portfolios, at all stages of prosecution as well as maintenance.

Steps to the Trademark Registration Process

The registration of trademarks differs depending on jurisdiction. However, the following are various steps that may be involved in getting to and through the trademark registration process.

  • Trademark Search for use and registration availability

  • Brand Development and Research

  • Application Drafting and Filing

  • Trademark Prosecution, Responses to Office Actions, Amendments

  • Handling Oppositions and Cancelation Proceedings

  • Maintain the Trademark Registration

The Trademark Search, A First Step in the Trademark Registration Process

The key to successful trademark strategy includes assessing availability, risk of adoption, as well as enforceability of a mark. Therefore, we perform a trademark search to help determine availability for use and registration. The search lets us find potential third-party use that could be a problem to either common law use or federal registration. Additionally, we advise on the potential for success in use and/or registration so you can decide whether pursuing a trademark is in your best interest. We provide an idea of what to expect in the prosecution stage with the trademark examination process. So, this keeps the surprises to a minimum and you can have realistic expectations on challenges and cost.

Trademark Application Prosecution for Registration

Our trademark attorneys have experience arguing against all types of examiner office action objections as well as handling third-party oppositions. During the prosecution phase of the trademark registration process, the applicant may need to respond to objections by the examiner. Examiner objections can include, for example:

  • Likelihood of Confusion

  • Merely Descriptive Objection

  • Generic Refusal

  • Immoral or Scandalous Objection

  • Merely a Surname

It is important for applicants to seek the advice of an experienced trademark attorney in responding to objections and refusals. An applicant’s response to an office action becomes public record. Therefore, care should be taken in filing responses and making arguments against refusals. Trademark attorneys have skill in drafting arguments to best help overcome examiner objections. They can also provide advice on chances of overcoming an objection, to help one decide whether to proceed or minimize losses.