ArticleEstablishing Twenty First Century Trademarks

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Establishing Twenty First Century Trademarks
Written Jul 10, 2020 by Ted Eader

Client Testimonials

“I recently hired Conway Eader to assist me in getting the trademark work done for one of our products. They were incredibly knowledgeable and made the process very simple and easy. On top of that, I was surprised how cost effective their services were. I will definitely be using them on all future trademark filings.”

- Vincent Bagni, co-creator of SharkShades, TM

“Working with Ted and Justin has been a Godsend. As a small startup I don’t know what I’d have done without them. They were really flexible with pricing when cash flow was tight, and they always made the process so simple.”

- Spencer Sutlive, Founder and CEO of Rugged Road, LLC

The US Trademark Process in the Twenty First Century

The internet is both a blessing and a curse to a lot of different legal fields, and Trademark law is certainly one of them. Applying for a Trademark can be complicated, and it is often done in a way that is expensive while failing to provide any real utility to validate the investment. For small businesses looking to establish their brands, Trademark protection is crucial; however potential clients are left with the difficult decision of spending large amounts of money to hire big trademark law firms or risk inadequate protection by either proceeding pro se or hiring a lower cost online trademark services that are more interested in your money than your trademark. Sometimes businesses spend large amounts of money with firms that still do not provide good protection. Luckily, Conway Eader can help small businesses protect their young brands by registering their marks in a cost-efficient manner.

Conway Eader helps our clients pursue Trademarks in a technology driven and client-oriented fashion that does not break the bank. Unlike other firms, Conway Eader includes a trademarkability search in our consultation process free of charge so we can establish a brand’s viability for protection before taking a dollar. From there, our firm uses the USPTO’s online platforms to help our clients save on fees and costs. It is crucial for us that our product is of good value for the client, with the end goal of making our clients satisfied with our service. Those who build brands will often need legal assistance in the future, and relationship building is a critical part of the Conway Eader business model. When we can work with a client from brand inception through issuance and protection, we can apply this approach to the entire application process and beyond. Our firm makes it easy to do this electronically by emailing us the necessary documents and allowing us to make use of our MyUSPTO and TEAS procedures to reduce fees. Even our engagement letters are available for electronic signature.

Client communication and education is key to a happy Trademark process. If a client knows what to expect and is prepared for the process of acquiring a trademark, they almost always seem to enjoy the prospect of receiving their registration certificate. Where the frustration comes into play is a lack of explanation of the timelines and misplaced expectations for instant gratification as well as a misunderstanding of government fee requirements. Trademarks are examined and registered by the Trademark Office, a branch of the Federal government. The USPTO is self-funded through a complicated fee schedule. Most processes have fees associated with them, so efficiency is critical i limiting the cost of an application. Furthermore, new applications are compared to the registry and once granted, carry special exclusive rights to the use of a brand. Since trademarks naturally encroach on first amendment rights, the examination and registration process is somewhat involved from a legal perspective as well as a financial one.

So, when is the time right to invest in a Trademark filing? There are several gateway questions you should ask yourself before filing. First; do I have an incorporated business? Trademarks can be held by individuals, but since they are the embodiment of goodwill in the form of intellectual property, it makes more sense for their owner to be a business itself. Sure, an individual can apply for a trademark and later assign it to their business, but that costs time and money. We suggest that you register a business with the Secretary of State and formally incorporate a company before applying for a mark. Second; are you using your mark yet? There is a procedure available to apply first and show use later, but Trademark finds its historical basis in common law of “use”. A mark currently in use can provide proof upon filing, whereas an intent to use application requires the submission of such proof later in time, but before the mark can issue and then with a petition as well as an additional fee. For these reasons, it is best to have evidence of use when applying for a trademark if you are a small business with limited funds.

If you have a mark in use and you have an incorporated business, the remaining concerns can be handled by a good Trademark Attorney. The process of filing an application involves filling out forms, properly describing and classifying the goods represented by the mark, providing evidence of the mark’s use, and signing of several documents which an Attorney sworn in with the highest Court of their State can perform as Attorney of Record for an application. Conway Eader has extensive experience being the Attorney of Record. Once applied for, the mark proceeds to the examination phase and the process has truly begun. In total, it could take as little as six months but as long as a year for your trademark to issue. In rare cases, it may take longer.

Examination is open ended, but typically includes at least one response from the USPTO in the form of an “Office Action”. Office Actions note deficiencies in the application and often suggest grounds for correction. Typical responses include likelihood of confusion with an existing registered mark, that the applied for mark is merely descriptive, or that the applicant needs to disclaim some generic aspect of the mark. In some situations, a mere phone call with an Examining Attorney can suffice to see a mark through to publication. Conway Eader has had success in overcoming a variety of Office Actions and has a good track record of avoiding second Office Actions when possible.

Office Actions grant a 6-month period of time for response but can be responded to in a more timely fashion to accelerate examination. Typically, responses are considered within two to three months of their issuance, which will either be met with a Notice of Publication or an additional Office Action. Once Publication has occurred, the public has a period to Object to the registration of a mark before the registration is finalized. There is no definite time period for publication but is typically between one and two months. Conway Eader provides free updates as each of these steps occurs, even though no substantive legal work is necessary as a result. If publication passes with no objections, then the mark is issued, and a certificate is mailed. Once registration is complete, the registrant enjoys the exclusive right to the use of the registered name, brand, or logo in the United States for so long as they maintain the registration.

What Conway Eader Can Do For You

Conway Eader’s flat fee for filing of a Trademark, which has been screened and approved by a Conway Eader Attorney free of charge, is $1000. This is inclusive of all government search and examination fees. Conway Eader also guarantees a low, hourly rate of $200 an hour for any additional examination required by the Office. Generally, the follow up work is considerably less than the flat fee and is not incurred for months after filing, with an all-in cost estimated at $1500 or less from the filing to completion of a registration. If you believe you have a brand that is ripe for protection, please do not hesitate to contact Conway Eader. All consultations are given free of charge.