Trademarks protect the name that you give to your goods or services. Before a trademark registration can issue, the mark must have actually been used on the goods or services in interstate commerce (in the US). Almost any kind of commerce qualifies as interstate commerce nowadays.

However, you can apply for the federal registration of a trademark prior to making actual use of the trademark, using a so-called intent-to-use application (ITU). In fact, this is often done by those who are nailing down their legal rights prior to a roll-out of a new product or service.

One way to start is for us to (a) conduct a search of existing trademarks, (b) analyze the results of the search, and (c) provide you with an opinion on the likelihood of obtaining a registration for your mark.

The search is an optional step (not required by either us or the trademark office), but it is quite valuable in that it can spare you problems further on down the road with a mark that might be contested by someone else. If you don't have us do this, we strongly suggest that at the very least you spend enough time searching on the Internet to convince yourself that there will be no problems with your use of the mark.

Please note that marks do not need to be exactly the same in order to conflict with one another. Similar marks used on similar goods or services might be sufficiently close to prevent you from getting a registration on your mark. It's like horseshoes and hand grenades, where close enough is good enough for a problem. Not like rifles and laser pointers, where if you aren't right on the target, you've missed.

In order to proceed with a trademark registration, you would need to provide the following information:

• The wording of the mark,

• The graphical elements of the mark, if any,

• The goods or services with which the mark is to be used,

• The month, day, and year that the mark was first used in interstate commerce in association with the goods or services (if not ITU),

• The full name and address of the applicant to whom the mark is to be registered, and

• A specimen of use, which is a photograph or web screen capture of the mark as actually used in association with the goods (if not ITU).

For an ITU application, if the application is allowed prior to actual use of the mark being made, then we have six months in which to make actual use of the trademark thereafter. Extensions of time are available to make that actual use, up to a total of three years from allowance. Each extension of time costs money to acquire.

It typically takes the trademark office at least six to twelve months to get around to examining a new application for federal registration of a trademark. The examiner will determine if your trademark is confusingly similar to one or more prior registrations or applications (that's where the benefit of a search can come in). The examiner will also check your proposed mark for other legal requirements, which we can discuss with you prior to filing your application.

Many applications are allowed at this point by the examiner and, if so, move to a phase of the application process called publication, where your mark is listed in the trademark official gazette, where the general public is given thirty days to oppose the registration of your mark. If there is no opposition filed, then the trademark proceeds to allowance, and you get the registration certificate for your trademark, which grants you additional rights.

If you want assistance with any phase of a trademark project - we can help! If you've tried to navigate the registration process by yourself and run into problems - we can help!