Trademark Registration USA

Assignment Specifications

With this assignment you can hire us to register your trademark. We will take care of everything that is necessary for the professional preparation of the trademark registration, submission of the application for registration of the trademark and sending the trademark certificate to you.

Fees

The price includes our lawyer’s fees as well as all official fees for the registration and implementation of the trademark without opposition.

Trademark Registration Procedure

The trademark registration order comprises the following tasks:

Checking Whether there are absolute grounds of refusal

First, we check whether the mark being registered is entitled to protection (absolute grounds of refusal). Not all marks may be registered as trademarks. For instance, merely descriptive information for the respective goods and services may not be registered as a trademark. These marks are to be freely useable for everyone.

If you also want to check if there are already trademarks that are registered or pending registration which could be in opposition to the registration of the trademark, you may hire us  on a separate assignment for trademark search.

Elaboration of a list of goods and services

We will get an overview of your range of services, enquire how you intend to use the trademark. On this basis and with the aid of phrasing admissible at the Trademark Office we are able to elaborate a professional list of goods and services for your trademark registration. We classify the specified goods and services according to the formalities prescribed by the Trademark Office and in line with the Nice-classification, the official categorization for goods or services.

The art of trademark registration lies in the elaboration of the goods and services list. The goods and services list may no longer be expanded after the trademark registration, but only restricted. On the one hand it should be so broad as to cover any goods or services used, but it should not be too general. This will help to keep conflicts with longer-standing trademarks at a minimum and prevent objections by the Trademark Office. This will save time, costs and lead to quicker registration.

Submission of the Documents Prepared for Trademark Registration for Approval

We will e-mail you the registration documents prepared (power of attorney and form for confirmation of the data on the trademark registration, in particular draft of the list of goods) for your review and approval.

If during our review of entitlement to protection in intellectual property law we determine that there is a possibility that the trademark registration will be denied, we will inform you explicitly of the problem. In such a case, we will give you specific recommendations on how to handle the issue in order to get the mark registered notwithstanding. For example, this could be adding on a non-descriptive word element or logo.

You can also check if everything for which the trademark is to be protected has been specified in the list of the goods and services.

Should there be an additional class due to the proposed classification, thereby increasing costs, we will inform you explicitly. You then have the option of accepting the recommendation or cancelling the additional class in order to save costs.

Filing of the Trademark Registration

As soon as we have received the signed power of attorney and confirmation of the data for the trademark registration we will submit the trademark application to the Trademark Office.

Sending of Application Confirmation and Invoice

We will review the application confirmation by the Trademark Office and send it to  you immediately, together with our note of fees. The filing confirmation will be your proof that the trademark was filed.

Payment of Fees to the Trademark Office

We will pay the fees to the Trademark Office in order for the application to be handled properly.

Standard Correspondence with the Trademark Office

We will continue to maintain standard correspondence with the Trademark Office. This includes any minor objections regarding the information on the trademark application. Should the Trademark Office however order a refusal the registration, we would need a separate assignment in order to do this work. In such a case we will pass on the order to you together with our assignment form; we will inform you regarding the necessary steps and any costs incurred. You then have the option of deciding how to proceed.

Status of the Application

We will continuously monitor the status of the official proceedings and will inform you at our own initiative if there is any news. Where necessary, we will contact the Trademark Office in order to expedite the application.

Note Regarding the Possibility of Extension of Trademark Protection

Before the lapse of six months after trademark registration it is possible to register the same trademark in a different country and to use the registration date of the earlier trademark registration for the new registration (“priority”). We will contact you in writing early on in order to inform you of this possibility.

Monitoring Deadline for Opposition Proceedings

We monitor the deadline for the opposition proceedings and will inform you where opposition proceedings were filed against the trademark registration. In the case of opposition proceedings we will send you the documents and an assignment form. This will include our cost estimate for representing you in opposition proceedings. You then can decide if you wish to hire us to represent you.

Inspection and Sending of the Trademark Certificate

After receiving the trademark certificate from the Trademark Office  we will check if all information is accurate and have any corrections made where necessary. We will send you the original certificate together with important notices as to how you are to use the trademark, whether the (R)-symbol may be attached, which deadlines need to be complied with and we offer you trademark monitoring.

Trademark Monitoring

In order for you to be informed in good time when identical or similar trademarks are registered by third parties, trademark monitoring is indispensable. We will inform you accordingly upon sending you the certificate and will make you an offer.

Monitoring of Extension Deadline

The trademark must be extended in good time before expiration of the period of protection under intellectual property law. We will monitor this deadline, inform you of it in good time and make you an offer for extension of the trademark registration.

Representation in Cases of Trademark Infringements

Should you discover that someone is using your trademark without your permission, we are there to help you out. We will advise you and represent you in the defense of your trademark rights.

What happens if the trademark registration is discontinued before the application has been submitted?

If you wish to discontinue the trademark registration prior to submission of the application we will only charge our legal fees and will refund and costs that were not incurred to us.