What to Expect When You Want to Apply for a Trademark

Applying For a Trademark– What Could Go Wrong? Do you have a business or product name and want to protect it so it becomes exclusively yours? Simply using the trademark symbol ™ for your new name is easy enough, but your trademark is better protected when you obtain a Federal registration and can use the ® symbol. The process seems straightforward enough – fill out the application and submit it to the U.S. Patent and Trademark Office (“USPTO”). But as you can imagine, you can’t count on the process always going smoothly, and it’s smart to anticipate hitting a bump in the road. When you submit an application to register a trademark, you’ll want to be aware of several pitfalls that can arise: If you don’t conduct a thorough search to discover if your desired trademark is already in use, it can lead to challenges and rejection. If you don’t properly describe the goods and/or services that you provide under your trademark, your application could be rejected or limited in scope. A generic trademark cannot be registered. A trademark that merely describes a quality of your goods or services can be registered, but the path is not so straight forward and can hit a lot of roadblocks. Once your trademark is registered, you can lose your exclusive rights if you do not actively protect it. Of course, there’s more to it than this, but if you have something that you want to protect, working with an IP attorney is your best bet. Let me give you some real examples. The Option to Oppose a Decision One client I worked with was using his trademark for 5 years before he decided to register it. But when he put the wheels in motion, his submission for a registration was initially refused due to the existence of a prior application -- someone had previously filed an application for the same exact word as a trademark, and it was allowed by the USPTO and published in the Federal Register. This is a great example of why simply using the ™ symbol doesn’t offer full protection. If you’re not working with an attorney, you may not know that there is a 30-day window after a trademark is published where you can oppose the USPTO’s decision to allow the trademark. I asked for an extension of time to oppose the decision so we could work on an alternate strategy. The delay gave us time to reach an agreement with the other party where both companies could co-exist because of the differences in the customers of the two parties’ services. A Clearance is Essential Then there is another satisfied client who asked me to perform a trademark clearance. This is a search not only for pending or registered marks that are identical or very similar to the one you plan to use, but also for any use of the trademark in the marketplace, in state business databases, on social media, or elsewhere in the United States. In this case, there was a company that had registered an arguably similar, but not exact, trademark. With some research, we learned that this company likely was no longer in existence or wasn’t using the trademark. The client proceeded with caution while understanding the potential roadblocks. When the application was refused by the USPTO due to this other trademark registration, we filed to cancel the pre-existing registration on the grounds that the registered trademark had been abandoned and not in use. We were successful in cancelling this registration, and my client’s mark proceeded to be registered. Don’t Wait for Trouble – Be Proactive In addition to obtaining a Federal registration, it’s important to be on the lookout for competitors using or planning to use a trademark that is confusingly similar to yours. Just doing a web search on your own probably won’t find these uses. I offer a trademark watching service that is more comprehensive than a simple web search. Offenders are searched weekly, and I’ll analyze any hits before approaching you with ones that could present an issue. Give me a call or shoot me an email to find out more. All these twists and turns in the process could mean a frustrating time for you if you’re not working with a professional. As a creative problem solver, I have the knowledge and experience to support you and your goals. Let’s discuss where you are in your quest to protect your intellectual property. 

Although the right for women to vote in the US didn’t arrive until 1920, women were given the right to apply for a patent at the same time as men in 1790, when the Patent Act passed, allowing anyone to petition for protection of their original inventions and designs. This paved the way for Mary Dixon Kies to become the first woman, in 1809, to successfully file a patent that belonged to her. It was for a process of interweaving silk or thread into straw to make fashion-forward straw bonnets. Today we’re giving a very grateful shout out to the following 7 women whose ingenuity gave us everyday items of convenience we can’t live without. The Call Button. Miriam Benjamin , a schoolteacher, invented the “gong-and-signal chair” in 1888, which made it possible to call for assistance while seated, anywhere attendants were needed. From noisy train stations and hospitals to hotels, theaters, and offices, this handy tool allowed users to receive services wherever desired. The next time you’re on a flight and want to hail the flight attendant, thank Miriam as you press that call button above your head . Central Heating. Alice H. Parker filed a patent for her heating system in 1919, which involved drawing cool air into a gas furnace, then passing it through a heat exchanger, which then transported the heated air throughout the house via ducts. Now using natural gas instead of wood, her invention changed the game for domestic heating. Wi-Fi, Bluetooth, GPS. Hedy Lamarr , the actress who starred in Samson and Delilah, Ecstasy, and Ziegfeld Girl in the 1930s and 40s, was involved in developing a device that would prevent enemy ships from blocking torpedo signals during the Second World War. The invention allowed radio guidance transmitters and the torpedo's receiver to jump between frequencies simultaneously, which became known as "frequency hopping." Today, this is known as spread spectrum technology, and it gave way to the development of Wi-Fi, Bluetooth, and GPS. Windshield Wipers. Mary E. Anderson made her living being a rancher and real estate developer. However, in 1903, Anderson came up with a system that could automatically wash cars, which then gave way to the windshield wiper. Car Heater. Margaret A. Wilcox made traveling far more comfortable when, in 1893, she filed a patent for a car heating system. Originally designed for public railway cars, this technology has been consistently updated over the years and led to the car heaters we appreciate today. This heating system involved running a channel of air through the engine, where it was heated, and then sending it back into the rail cars. Ice Cream Maker. Nancy Johnson invented a device in 1843, the Artificial Freezer, which was the first hand-cranked ice cream churn. It sped up the amount of time it took to make ice cream or sorbet. Prior to her ingenuity, ice cream was made using very intensive labor and it often took a person hours to make. Funny enough, at that time, one could make the frozen treat but we’d have to wait a few years to find a way to store it so that it remained frozen since refrigerators hadn’t been invented yet. Caller ID. Shirley Ann Jackson , a physicist, is responsible for making caller ID accessible to all of us. In 1976, Jackson was hired by AT&T, where she researched in a number of fields. From this research, Jackson developed caller ID technology, something we wouldn't want to live without today. Not all patent filers started out as engineers or scientists – as you can see, they came from all walks of life and had one thing in common – the strong desire to pursue their creative idea to fruition. Registering a trademark or applying for a patent is an endeavor that has become more detailed and intricate over the years. There are enough possible twists and turns in the life of your application to deserve guidance from a professional. I work with my clients from initial consultation, to understand their product and intention, and through every single step, roadblock, and detour. If the thought of registering a trademark or applying for a patent has been your dream and passion, let’s discuss how to make it happen.