Anyone who files an application to federally register a mark faces the risk that someone else may have already obtained rights to a similar mark in the same market. An effective way to gauge this risk is to conduct a quick identical screen search of the federal mark registration records and common law references (i.e. the most relevant databases) to determine the availability and registrability of a mark for the goods and/or services in connection with which it is used or intended to be used. Bulk screen searching for more than three marks at a time is available for an hourly fee.
Although an identical screen search of the federal mark registration records and common law references will identify any obvious sources of the likelihood of confusion before filing an application to federally register a mark, there may be confusingly similar marks in use of which we are unaware. If a greater comfort level is desired before attempting to register a mark, a comprehensive mark search can be ordered. Such a search includes (1) a look at the state and federal mark and service mark registration records; (2) common law database citations; (3) common law library citations; (4) common law business name citations; and (5) Internet domain name citations. Comprehensive searching is optional but is available for an hourly fee.
$2500 flat + filing fees
Application Preparation, Filing & Prosecution
As a rule, the filing of an application to register a mark on the Principal Register constitutes constructive notice of the use of the mark, conferring a right of priority, nationwide in effect. Consequently, unlike an owner who merely uses a mark in connection with particular goods or services, the owner of a federally registered mark is presumed to be the owner of the mark for the goods or services specified in the registration certificate; is entitled to use the mark nationwide, regardless of whether his or her use in commerce upon particular goods or services is, in fact, national in scope; and is entitled to use the federal registration symbol.
If the Examining Attorney determines upon examination that the mark cannot be registered, he or she will issue a letter listing any grounds for refusal and/or any corrections required to be made to the application. A common ground for refusal is the likelihood of confusion between the applicant’s mark and a previously registered mark. Marks that are merely descriptive in relation to the applicant’s goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused.
If the application was originally filed based on the applicant’s bona fide intent-to-use the mark in commerce (an ITU application), acceptable proof of use must be filed before a registration will issue. The applicant has six months from the date of allowance to either (1) use the mark in commerce and submit a statement of use, or (2) request a six-month extension of the time to file a statement of use. ITU processing to registration issuance can be avoided altogether if proof of use of the mark in commerce is submitted at the time of application filing.
$750 flat + filing fees
Proof of Continuing Use & Incontestability
The owner of a registration must file proof of continuing use of the mark set forth therein within the fifth and sixth year after the date of its issuance along with a declaration of incontestability or the registration will be canceled.
$750 FLAT + filing fees
Proof of Continuing Use and Renewal Application
The owner of a registration must file proof of continuing use of the mark set forth therein within the year before the end of every ten-year period after its issuance along with a renewal application or the registration will be canceled.
Standard Watch for Possible Third-Party Infringement
The law imposes a duty on mark owners to protect their marks by policing them and taking such appropriate actions as may be required to prevent any likelihood of confusion in the mind of the public. Consequently, the owner of a mark must pay attention to the relevant marketplace. Enhanced watching is available for an hourly fee.
Offensive or Defensive Matters Involving Third Parties
Policing third party infringement or defending against third-party claims of infringement or opposition. Despite best efforts, the owner of a mark eventually must go after an infringer in some fashion or convince the owner of another mark that coexistence without confusion is possible. Licensing, assignments, and related transactional matters involving third parties fall in this category as well.
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