It is essential to own and protect your brand in order to maintain your business’ reputation and fuel your business’ growth. As one of the premier boutique trademark law firms in NYC, we can help protect what is arguably one of your business’ most valuable assets – its brand.
Our Federal Trademark Registration Process
Once you have retained our firm to assist with your federal trademark registration and complete the intake process, a trademark lawyer in NYC will conduct a comprehensive trademark clearance search. We work hard to identify possible issues with your desired trademark in the beginning, before a trademark application is filed.
Within approximately one week of you completing the intake process, we will provide the results of the comprehensive trademark clearance search and a legal opinion regarding the results. The legal opinion will be from a New York trademark attorney and include an opinion on the likelihood of successful registration of the trademark. You can also speak with a trademark attorney in NYC regarding the search results, legal opinion or any questions you may have about the process.
Once you give the green light, an experienced New York trademark lawyer will prepare your trademark application for your review. We understand trademark applications are complex and will carefully draft your application to aim for the greatest likelihood of a successful trademark registration. When you approve the draft trademark application, we will file with the USPTO.
After we file your trademark application, the registration process generally takes about 16 months in total. Approximately 10 months after we file, a trademark examiner at the USPTO will be assigned to your application. Check out our frequently asked questions for additional information on the trademark application process.
Additional Services
In addition to trademark registration services, we offer a variety of other affordable NYC trademark lawyer services, many on a flat fee basis, to help our clients protect their brands including:
- Trademark Search and Clearance
- Trademark Office Action Responses
- Trademark Maintenance/Renewals
- Trademark Monitoring
- Trademark Assignment
- Trademark Licensing
- Trademark Opposition Proceedings
- Trademark Cancellation Proceedings
- Copyright Registration
We also understand how important certainty is when it comes to legal fees. In addition to offering flat fee pricing for most legal services, we also offer subscriptions to provide many of our legal services for fixed monthly prices.
Frequently Asked Questions
What is a trademark?
A trademark is essentially a brand name and may include a word, phrase, symbol or design, or a combination of these items. A trademark identifies the source of goods and differentiates the goods of one seller from those of other sellers. A service mark is similar to a trademark except that it identifies and differentiates the source of services (vs. goods). The term trademark is commonly used to refer to both types of marks.
Why should I register a trademark?
Registering your trademark protects your brand. While you do receive some benefits when you begin using your trademark, a trademark registration provides greater legal remedies to prevent others from using brands that could be confused with yours.
What should I do first, register my business or trademark my business name?
The answer in most cases is both, you want to register your business and trademark the business name around the same time.
When you register your business, you will do a search of your state’s registered business entity records to be sure the name does not belong to another registered business. But the name could be in use by an unregistered business. Additionally, registering a business does not provide any trademark rights under the registered name and also does not ensure the registered name does not infringe on the trademark rights of others.
So ideally you want to do a comprehensive trademark clearance search and file a trademark application to protect your business name. It’s also generally preferable to hold the trademark in the name of your business to add value to the business and specifically hold the trademark in the name of your registered business to limit your personal liability. Of course, you should consult an attorney about your individual situation.
How does the trademark registration process work?
We recommend a comprehensive trademark search before filing a trademark application. Below is a brief overview of the remaining steps in the trademark registration process:
- Your trademark application is filed. Your application is entered into the United States Patent and Trademark Office (USPTO) database to await review. It generally takes about months before an examiner reviews an application.
- An examiner reviews your application. The examiner will determine if your trademark can move forward with registration. This process may take up to one month.
- The examiner either approves your mark for publication or issues an Office Action.
- If your application is approved for publication, it appears in the “Official Gazette” to allow others to oppose your application or request an extension of the time to oppose.
- If you receive an Office Action, you must provide a complete response that addresses all legal problems raised by the examiner to avoid refusal or abandonment of your application. Because Office Actions often raise complicated legal issues, we highly recommend speaking with an attorney regarding your options.
- If you resolve all legal problems raised in the Office Action, your application is then approved for publication.
- If you do not resolve all legal problems, your trademark will not move forward with registration, though you do have the right to appeal.
- If there is no opposition during publication (or an opposition is unsuccessful), your application will proceed to the next stage of registration.
- If you were using your trademark at the time your application was filed, the USPTO will register your trademark.
- If you were not using your trademark at the time your application was filed, you will receive a Notice of Allowance (NOA).
- After receiving an NOA, you have six months to either file a Statement of Use (SOU) showing you have used the mark or request a six-month extension of time to file an SOU.
- If the examiner does not identify any legal problems with the SOU, the examiner will approve the SOU and the USPTO will register your trademark.
How long is the trademark registration process?
Each trademark application varies; however, in general the process takes about 16 months but can take much longer if legal issues arise.
How do you charge for trademark registration?
We provide trademark registration services on a flat fee basis. We do not believe in surprise fees for our clients.
Can you help me with my trademark if I am not located in New York?
Yes, trademarks are protected under federal law, so we can assist clients in any state or country.
