Donald J. Ersler, S.C.

The Trademark Process

A trademark is most commonly used for products and business names. The trademark can take the form of either a text name or a logo containing a name.

Why trademark a product or a business name?

A trademark is an exclusive name that no competitor can use to identify or advertise their product or business. It is possible to use a name to describe a product or business without obtaining trademark protection. You may also use this name for many years before filing for a trademark; a trademark becomes stronger the longer it is used. However, if a competitor has been using the same name somewhere else in the United States for a similar period and files a trademark application before you do, that competitor may be able to keep you from using the name.

There are two types of trademark situations. The first is an intended use of a name for a product or business. You may not have a product that is ready for sale, or have a business incorporated, but you may file for a trademark to protect either. The second is an actual use of a name for a product or business. If you already have a name that is being used on a product or as a business name you may also file for a trademark.

Filing for a trademark is easy. You may start the process by informing me of your desire to obtain a trademark for a product or business name. I will recommend that a search for the name you have in mind be performed. You may do this by going to a library that has facilities to do trademark searching or I can do this for you. If you are in a hurry, you can let the Patent and Trademark Office (PTO) perform the search when they examine your trademark application.

Once you have decided on a name for which you would like to obtain trademark protection, I will ask several questions that have to do with the goods or services. I will then fill out the application and send it to you for a signature. After I have a signed copy of the application, I will be able to file it with the PTO.

It takes between five to eight months before the application is examined by a trademark attorney in the PTO. At that time, I will receive a letter from the PTO concerning your trademark name. The letter will state that either the trademark is accepted or objected to. In about 60 - 70% of the cases, the trademark will be accepted or the objection may be answered with a phone call. In the remainder of cases, I will have to write a letter to the PTO stating why you should receive a trademark on your name. In a few cases, I may not be able to overcome the PTO's objection to the name you desire for a trademark.

When the examiner's objections have been satisfied, a "notice of allowance" is sent. The next step is the publication of your trademark in the "Official Gazette." Third parties have an opportunity to object to your trademark for a period of 30 days. If no objections are filed, you will receive a registration certificate in approximately four months. Please note, if an "intent to use" application is filed, a "Statement of Use" form must be filed within six months of the notice of allowance, with a fee payable to the Trademark Office.

Once you receive the registration certificate, there are three other fees with which you should be concerned. The first fee is for a "Statement of Use" affidavit, due between the 5th and 6th year after issue. The second fee is for an "Incontestability" affidavit, also due between the 5th and 6th year after issue. The Incontestability affidavit is optional, but enables you to strengthen the trademark for a nominal fee. The third fee is a renewal fee, due in the 10th year and every 10 years thereafter.