FAQ

Optimally you should do both – download our white paper to understand why. However, it is understandable if budget concerns and other issues may allow for initially doing only one or the other. If your trademark search results show a “crowded field” with many marks sharing similar terms, Protectamark™ may want to avoid starting with a word mark only. Also, if your logo has some design elements that really set you apart, then Protectamark™ may want to start with the logo mark. Either way, at Protectamark™ an actual trademark attorney will figure out the best approach and guide you. That is one of the benefits of working with Protectamark™ versus a self-help service. Protectamark™ offers legal advice and everything is protected by the attorney-client privilege.

Beware of any service that offers to file your application without first performing a trademark search. Without a search, you will not know if there are any prior trademarks that might block your application. Because the Trademark Office will not examine your application for several months after filing, you may have already put significant resources into your mark before you learn there is an issue. A search not only helps to uncover potential issues, but also allows Protectamark™ to prepare your application in a way that seeks to avoid possible pitfalls while maximizing the protection for your business.

If you order the Intent-to-Use trademark package and the search results show a conflicting trademark, then Protectamark™ will conduct a search of a second trademark at no additional cost. If you are already using your trademark and have ordered the Already-in-Use trademark package and the search results show a conflict, then Protectamark™ offers two options. You can change your trademark and request a search of a second trademark at no additional cost. Alternatively, a trademark attorney can provide you with a thirty minute consultation to discuss whether there is still a way to protect your brand and avoid future litigation. Unlike those trademark mills and self-help services, Protectamark™ is here to guide you through the issues.

If you need a search and application performed on a rush basis, please contact Protectamark™ directly. Depending upon workload and availability, Protectamark™ may be able to accommodate your needs. A thirty percent (30%) surcharge applies to the cost of any package performed on a rush basis.

This might seem like a straightforward issue, but it is one of the most common mistakes that brand owners make when registering their trademarks on their own. If your trademark is not yet in use, then you obviously file on an intent-to-use basis. However, if you file on an already-in-use basis, but your trademark is only in use for some, but not all, of the goods and services included in your application, then you can actually invalidate your registration. In that situation, you need to file on an intent-to-use basis. The good news is that filing on an intent-to-use basis begins your rights immediately and prevents future users and filers from blocking your trademark application.

Other services charge the same regardless of whether you are already using your trademark (“Already-In-Use” package [LINK]) or are planning to use your trademark in the future (“Intent-to-Use” package). Protectamark™ does things differently (better) and passes savings along to our clients whenever possible. Because an Already-In-Use application requires more work at the front-end (i.e., determining dates of first use, evaluating evidence of use, etc.), Protectamark™ charges $100 more. With Intent-to-Use applications, you must eventually prove use to the Trademark Office through the filing of a Statement of Use – so there will be additional work and fees later. However, unlike other services, because there is less work at the time of filing – Protectamark™ passes those savings along to you.

The Trademark Office charges a filing fee for each “class” of goods and services that is included in your application. descriptions, the fee is $225 per class. If you adopt the Trademark Office’s standardized If you craft your own description, the fee is $275 per class. Protectamark™ does things differently (better) and doesn’t use canned language. Why? Because crafting your own descriptions typically results in broader protection. For example, your application can cover “metal storage cabinets” for $225 or “storage products, namely, storage cabinets, storage containers, storage racks, and storage shelves for both commercial and residential purposes” for $275. Services quoting $225 filing fees are telling you up front that they plan to use canned descriptions without regard for the scope of your rights.

There are 45 classes covering every product and service under the sun – so these classes are very broad. However, they are generally broken down by the underlying product material or by the nature of the service. Because of that, it is possible you could be in more than one class. Because Protectamark™ services are provided by an actual trademark attorney (not a self-help service) you will be provided with the legal advice that you need to determine how many and which classes you should cover. A trademark attorney will consult with you and conduct a cost-benefit analysis to determine the best course of action for your business. So click on the “Order Now” tab to get started and begin protecting your trademark.

You should be cautious of any service that includes responses to Office Actions in the up-front fee. What may seem like an innocent issue can impact the ultimate strength of your registration. So don’t trust the protection of your trademark to a service that is motivated to spend as little time as possible on your issues. If the Trademark Office raises an issue, then you want an attorney carefully guiding you and fighting for you every step of the way. So click on the “Order Now” tab to get started with an attorney who will fight for you along every step of the way.

After a trademark attorney has filed your application, it is generally between three (3) to five (5) months before the Trademark Office will appoint an Examining Attorney to review your application. Once the Examining Attorney approves your application for publication, it is generally another three (3) to five (5) months before you receive either a Certificate of Registration (already in use based applications) or Notice of Allowance (intent to use based applications). The good news is that, while the entire trademark process can take as long as a year or more to complete, your protection begins immediately upon filing. So click on the “Order Now” tab to get started and begin protecting your trademark.

One word….incontestability. Sure, there are numerous other benefits to registering your trademark that we discuss below, but the most compelling for brand owners is the possibility of one day owning a trademark that is not contestable by others. Such a status allows you the peace of mind to invest significant time, money and effort towards the promotion of your products and services and without the fear that you may have to one day change your name. This status can ONLY be achieved by obtaining and maintaining a federal trademark registration.

There are many caveats and exceptions to this “general rule” – but we essentially work on a “priority” system here in the United States. The entity that is first to use a trademark in a particular geographic area is generally going to be deemed the owner and any subsequent user will generally be deemed an infringer. By obtaining a federal registration, you acquire trademark rights across the nation – even if you have not yet started to use your mark in a particular State or party of the country.

By federally registering your mark, you are putting others on notice of your rights. You are also providing the U.S. Trademark Office with a tool that can actually help you avoid disputes and lawsuits. When you federally register your trademark, others can do a trademark search and uncover your registration. Presumably, a company considering adopting a new mark will first do a search to see if someone else has already registered the mark. If they uncover your registration and see that the mark is not available, then they will choose another mark and you have just avoided an infringement dispute before it even began. Alternatively, in those situations where a company did not search a mark first, but then proceeds with an application to register their mark, then the U.S. Trademark Office will essentially enforce your rights for you by refusing to register marks that are confusingly similar to yours. When the company is unable to register their mark, this would obviously raise a concern about infringement and likely (but not always) lead the company to choose a different mark. Again, you may have avoided an infringement lawsuit – not necessarily before it began, but hopefully without the need to resort to costly trademark infringement litigation.