Trademarks and service marks protect brand names and logos used in association with goods and services, while a patent protects an invention and a copyright protects an original artistic or literary work. HLF files and prosecutes applications to register trademarks at the USPTO and under international treaties. The practice corresponds with the USPTO about the trademark application, once filed (called “prosecution”).  Once the mark is registered, HLF maintains client trademark registrations by making the periodic filings necessary to keep the mark alive.  

After a mark is selected, the first step in the trademark registration process is a search of other trademarks at the USPTO to see if there are any marks in conflict with the selected mark.  If there are marks “confusingly similar” to the selected mark, then the question is whether the two marks are used in association with related goods and services. If they are, then the selected mark may not be registered at the USPTO and a different mark should be selected. It is a good idea to also search the internet to see if there are others who have used a “confusingly similar” mark but not registered it.

Once the trademark application has been filed, the USPTO examines the application to determine if the application meets legal requirements of form and substance and the mark is registerable. The first action from the USPTO about the new trademark application usually occurs 3 to 4 months after filing. If the mark is approved for registration, it will be published “for opposition”. Anyone who believes they will be harmed by the registration of the mark has 30 days to oppose its registration. If 30 days pass and no one opposes the registration of the mark, the mark will proceed to registration if the mark has been used “in interstate commerce” and specimens of the use have been submitted to the USPTO. Federal trademark registration requires a showing that the goods or services using the mark have crossed state lines. This is a use in “interstate commerce”.

However, if the mark is not currently in use in interstate commerce but the applicant has a bona fide intent to so use the mark, a limited number of extensions of time to submit specimens and the “statement of use” are available. If an appropriate statement of use and specimens are not submitted within the allowed time, the application will go abandoned. (One may refile to restart the process if there are delays in commercialization, such as waiting for FDA approval of a drug application.)

If, however, if someone opposes the registration of the mark, an opposition proceeding will begin. An opposition proceeding is a proceeding at the USPTO.  The opposition parties will exchange documents and sometimes depositions, similar to litigation. To succeed in the opposition proceeding and prevent the registration of the mark, the opposing party must establish how they will be harmed by registration of your mark.