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Written by : Jonathan Masucci
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I frequently get asked what are the main challenges in registering a trademark I want to tell you about the three challenges that applicants face repeatedly the first is knowing how to search the database of the US Patent and Trademark Office for potential conflicts that would block registering the mark it's a large complex database and really without experience knowing how to use the various search tools it's it's nearly impossible to do a valuable search the second main challenge is that the process is very long it takes about a year on average to register a trademark and tracking and monitoring the status of the application and the deadlines that arise during the process is a real challenge if you aren't equipped for that we've built custom software at Eric Feldman associates that allows us to go out every day and track for developments in the application and allows us to dock it and monitor upcoming deadlines for every single application we find finally the third challenge is how to respond to the Patent and Trademark Office if there is a refusal of the application and very frequently there is a refusal sometimes it's a procedural issue sometimes it's a major substantive issue like a likelihood of confusion or a descriptiveness refusal knowing how to research and find examples to bolster the arguments in response to the trademark office to try to win approval for the application is a huge challenge and that one that we've undertaken hundreds and hundreds of times for our clients if you'd like to talk further about how we can work together to apply to protect your company's trademarks please give me a call or send me an email I'd be happy to start that discussion Oh
Thanks for your comment Hosea Massay, have a nice day.
- Jonathan Masucci, Staff Member
hi I'm Elizabeth Gerhart I'm sitting here with James Clos Bakar senior associate at gearheart law and also very good at doing trademarks Thank You James filed a trademark application for me then he came back to me later and said there's an opposition to your trademark and I'm like what what what how did that happen what does that mean so James what happens after you file the trademark application so after you file an application there's two main hurdles or two main thresholds that you have to overcome in order to get the trademark and one is you have to take care of all the technical requirements before the eyes of the Patent Office or Patent and Trademark Office I should say and once they've deemed that you've met all of those qualifications they then publish the application for 30 days in a publication period and that publication period gives any member of the public that is any third party 30 days to you know comment publicly and try to oppose your mark if they think it would harm their business they could also if they so choose within that 30 days let's say they need additional time to make a decision they can file for an extension of time you know to file that opposition as well so if you've gotten an opposition on a trademark what that means is there's some third party out there that believes that your mark will somehow materially harm you know their business or a mark that's used in conjunction with some sort of good or service that they offer so then what happens do you fight for me and say no these people are wrong she deserves a smart I mean what happens next yeah I mean you know you have to take every case a case by case basis and determine the merits but when opposition is essentially you know a court case it follows you know Federal Rules of Civil Procedure there's discovery you can take depositions and all of this happens throughout a prolonged time period the opposition you know overall can go for you know easily a couple years obviously you want to get out of it as soon as you can most of them settle before a final decision by the trademark trial and appeal board but that's you know in shall what you're gonna be looking at from the time I filed the application to one like the opposition could come how long is that is that a month two months usually you're gonna be looking at around I'm gonna say maybe five months give or take there's gonna be some variants in there but what happens is about three months after you file a trademark application yeah it's gonna be assigned to an exam and an attorney who has to review it if they send out an office action they give you six months to respond to that office action so if you take you know that's six months obviously that's gonna change the timeframe but going off the assumption that you respond in an expeditious manner or that you don't receive any office action at all then they schedule it for publication and once you have that publication date it's for 30 days and that you normally take maybe you know a few weeks once all the issues have been taken care of so right around five months give or take so can I use it during this time yeah I mean you can still use it you should always review the merits of the opposition closely and determine if there is any infringement potentially by any party or what's really being alleged you may decide that the risk is too great you may want to you know put put use on the mark on hold to limits you know damages and that sort of thing but unless counsel you know instructs you otherwise generally both parties will continue to use the mark during that time frame but if you've done a trademark search then hopefully this would have come up in the search yeah I mean that would be you know the idea and in all likelihood it may have obviously if you get to the point of publication the trademark office doesn't think that there's any issue right so you've passed that threshold because the trademark office does review your application in light of third party federal registrations it may be that someone has you know an unregistered use which again you know in all likelihood we should have found it in the search and already be aware of and counseled you on or at the end of the day people are subjective they can form their own opinions if they think that something is too similar you know trademarks are if you don't use it you lose it type things so you do have to actively police you know the mark and some members of the public or you know even corporations will employ you know watch services to watch over the trademark Cosette's and the publications and and basically will file an opposition or an extension at least and engage you at that level if anything is even remotely close at times it may be much ado about nothing and may be able to dispatch it pretty easily other times it's going to be you know much more nuanced it'll it'll just kind of depend so the sequence is you file the trademark application you go through all this stuff with the trademark office and they say okay well we think you can have the trademark but we're going to make sure that nobody else wants to fight you on it and so then they publish it and then somebody can do a trademark composition see right so the trademark office thinks you should have it but somebody else can say I don't think they should have it right then eventually if you go progress far enough you know the trademark trial and appeal board will render a decision and who's correct or not so then what if they say you can't have it and this other person was wrong at that point then you know they would have issued you know a decision or you reached a settlement you know to that respect you should be allowed to proceed to registration at that time and they're not going to be able to come back does that cost a lot you have to pay legal fees for an opposition yeah yeah I mean opposition's as I said before it can go on for some amount of time you have discovery you have briefs you have you know potentially depositions and all of those good things that come along with that so you can certainly you know spend a fair amount obviously it's gonna depend a little bit how far through the process that you go through some initial discovery depending on how complex it is I mean you could easily spend twenty five thousand plus so I should probably balance at that point then so let's say I started using my trademark for a couple months got my first sales so that I could register it as a trademark in use across state lines or whatever I did an internet sale and then six months later so it's been like maybe eight months for me I get this opposition and so then I have to weigh how much marketing have I done how much branding have I done with this name versus fighting the opposition with legal fees right right you have to weigh the pros and the cons and your investment versus the budget versus you know the brand power that the mark holds and rebranding has to be you know part of that as well in terms of you know your considerations so could you rebrand just a little bit maybe sometimes it would work likes instead of like fuzzy babies fuzzy infan
Thanks insuetag your participation is very much appreciated
- Jonathan Masucci
About the author
I've studied geodesy at Columbia College Chicago in Chicago and I am an expert in sociology of the history of science. I usually feel rushed. My previous job was food batchmaker I held this position for 16 years, I love talking about ice skating and pottery. Huge fan of Childish Gambino (Donald Glover) I practice rope jumping and collect games.
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