The Process

How Does the Trademark Process Work?

The Protectamark™ Already-in-Use and Intent-to-Use Trademark Packages are handled by a trademark attorney who will conduct a clearance search, prepare and file your application, track your application through examination by the Trademark Office, and provide attorney-client privileged counseling along every step of the way.

What’s Included In Flat Rate?

Trademark Search: A Trademark Attorney will conduct a trademark search to determine if there are any prior trademark applications or registrations that could block your application. If the search shows a conflict, then you have two options. For intent-to-use trademarks, Protectamark™ will conduct a second trademark search at no additional charge. However, if you are already using your trademark, then a trademark attorney will counsel you on the best way to protect your brand and avoid future litigation.

Preparation of Trademark Application: A trademark attorney will arrange a telephone consultation to discuss the search results and the details of your trademark application. Your trademark attorney is also a trial lawyer who knows the issues that come up when you are defending or enforcing your rights. Unlike those self-help services and trademark filing mills, your application will be prepared with those issues in mind and with the aim of getting you the broadest possible protection.

Filing of Trademark Application: Once you have approved and signed the trademark application, you will pay the $275 per class filing fee. Protectamark™ will then file your trademark application with the Trademark Office.

Tracking Your Trademark Application: Protectamark™ will track your trademark application after it has been filed and throughout the prosecution of the application.

Examination by Trademark Office: Several months after your application is filed, an Examining Attorney at the Trademark Office will review your application. It is possible that the Examining Attorney could raise issues ranging from procedural matters (such as disclaiming rights to certain words or clarifying the goods and services) to substantive refusals (such as descriptiveness or alleged confusion with another mark). If the Examining Attorney raises an issue, a trademark attorney will consult with you at no additional charge. Protectamark™ will also provide a reasonable flat fee estimate for filing legal arguments against any such refusals.

Publication: Once your application has made it through the examination process, the Trademark Office will publish the details of your application in the Official Gazette for thirty (30) days. This is done to give third parties the opportunity to challenge the application (i.e., your right to register your mark). Tracking your application through to publication and monitoring your application through the publication process for any third party objections is included in the Flat Rate. Also, if a challenge were to arise, a trademark attorney will consult with you and discuss your options at no additional charge.

Registration / Notice of Allowance: If you filed on an Already-In-Use Basis and proved use at the time of filing, then you will receive your Certificate of Registration at this stage and your trademark will then be registered. However, if you filed on an Intent-To-Use Basis, you will receive a Notice of Allowance allowing you six months to make and prove use of your mark. Once you have started use, a trademark attorney will work with you to prepare and file a Statement of Use [LINK] at a reasonable flat fee. If you need additional time beyond the initial six (6) months, you can file up to five (5) requests for an additional six (6) month extensions [LINK] – 36 months total – each with the payment of a flat fee. Once your Statement of Use is approved, you will then receive a Certificate of Registration.