Comprehensive Trademark Study
Why the registration process has been structured in two steps?
By structuring the trademark registration process in two steps, we help our clients save time and money by identifying potential issues before filing. If our Comprehensive Trademark Study determines that your trademark is not registrable, you will not need to order the second step service Trademark Application Filing. This means that you can avoid the costs associated with a rejected application and move forward with a new trademark registration strategy. Our two-step process ensures that you can proceed with confidence and that your resources are being used effectively.
What is a Comprehensive Trademark Study?
A Comprehensive Trademark Study is a written analysis of potential conflicts and registrability issues related to your trademark, conducted by our expert trademark attorneys. It helps you identify potential issues before filing your trademark application.
What does a Comprehensive Trademark Study include?
In the United States, the Comprehensive Trademark Study consists of three sections:
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Scope of Analysis: We evaluate the classes in which your trademark should be protected in the United States, based on the goods and services you provide to us.
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Trademark Search: Our legal team will conduct a thorough investigation of currently registered trademarks within the pertinent classes. This search aims to pinpoint trademarks that bear graphic or phonetic resemblances.
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Recommendations: Our attorneys assess the trademark search results and offer you an estimation of the trademark registration probability, along with recommendations on whether to proceed with filing your trademark, modify it, or consider an alternative trademark.
Do I need a Comprehensive Trademark Study before filing my trademark application?
While a Comprehensive Trademark Study is not required, it is highly recommended. It can help identify potential issues and increase your chances of a successful trademark registration.
How long does the Comprehensive Trademark Study takes in the United States?
The Comprehensive Trademark Study typically takes less than 3 business days to complete.
What are the types of trademarks that can be registered in United States?
Trademarks eligible for registration include distinctive signs that assist consumers in differentiating one product or service from others, as long as these marks can be graphically represented. Examples of such trademarks are:
- Words
- Names
- Colors
- Taste
- Sounds
- Devices
- Slogans
- Scents
- Trade dress
- Three-dimensional shapes
Why the price of the Comprehensive Trademark Study varies for different trademark types?
The price of a Comprehensive Trademark Study may vary for different trademark types due to the complexity and resources required for each search and analysis.
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Word Mark: Searching for word marks typically involves querying databases for identical or similar textual elements. While this process can be straightforward, it may still require time and expertise to analyze the results accurately.
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Figurative Mark: Searching for figurative marks is generally more complex, as it involves comparing graphic elements using advanced image search engines. This process demands more resources and expertise, as the search must account for various design features, patterns, and shapes, increasing the time and effort required for a thorough analysis.
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Combined Mark: As combined marks include both text and graphic elements, the search process requires a comprehensive analysis of both components. This type of search may be more time-consuming and resource-intensive, as it involves assessing the similarities and differences between text and graphical elements in the database.
Due to these varying levels of complexity and resource requirements, the price of a Comprehensive Trademark Study can differ for each trademark type.
What happens if the Study advises against registration?
If the Comprehensive Trademark Study suggests not proceeding with your trademark registration in the United States, you can opt to request a new study at no extra charge.
Is it possible to conduct a trademark search and analysis on my own?
Yes, you can perform a trademark search and analysis independently, but we recommend seeking assistance from experienced attorneys by ordering a Comprehensive Trademark Study.
To assess whether your trademark can be registered, consider the following steps:
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Conduct a trademark search: Carry out a comprehensive search for identical or similar trademarks in relevant databases. This search will help identify potential conflicts with existing trademarks.
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Determine the appropriate trademark classes: Identify the classes of goods and services applicable to your trademark based on the products or services you provide. This classification will enable you to concentrate on pertinent trademark registrations during your search.
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Evaluate distinctiveness: Ensure your trademark is distinctive and not generic, descriptive, or misleading. A robust trademark should be unique and not directly related to the goods or services it represents.
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Avoid prohibited elements: Confirm that your trademark does not contain any prohibited elements, such as offensive content, national flags, or protected symbols. Review the regulations and guidelines of the relevant intellectual property offices for more information.
By following these steps, you can determine the registrability of your trademark and improve the chances of a successful registration. However, ordering a Comprehensive Trademark Study will provide valuable guidance and expertise throughout the process.
Is there a trademark search engine for the United States?
What are the types of marks that cannot be registered as trademarks in the United States?
You are unable to register trademarks that conflict with American moral standards, those that could incite public disorder, or terms that are generic. Additionally, names of states, national flags, emblems of international organizations, marks lacking distinctive features, surnames, as well as geographical and location names are also ineligible for registration.
Why is a Comprehensive Trademark Study so important?
A Comprehensive Trademark Study is crucial in determining if your trademark can be used or registered successfully. A significant number of trademark applications face rejection during the registration process due to reasons such as:
- Preexisting registrations of similar trademarks, either graphically or phonetically, leading to a "likelihood of confusion."
- Similarities with well-known foreign trademarks, regardless of their registration status in the specific country or territory.
- Rejection of trademarks considered generic, indicative, or descriptive.
- Inclusion of words, names, symbols, or other marks deemed unacceptable for registration.
Trademark Application Filing
What is the process of trademark registration in the United States?
The trademark registration process in the United States involves several steps, all of which are included in our "Trademark Application Filing" service:
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Trademark Application: We will handle the filing of your trademark application. To do so, you will need to provide us basic information about the trademark.
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Office examination: After filing the application, a USPTO examiner will review it for compliance with their own regulations. If the examiner identifies any issues, they will issue an Examiner's Report outlining the objections. We will inform you about this and advice on possible course of actions.
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Approval and advertisement: Once the examiner is satisfied with your application, it will be approved for advertisement. Your trademark application will then be published in the Trademarks Journal, which is issued every week.
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Opposition period: After publication, there is a two-month opposition period during which any third party may file an opposition to your trademark application. If an opposition is filed, you will need to respond and resolve the dispute before proceeding with the registration. We will inform you about this and advice on possible course of actions.
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Allowance and registration: If no opposition is filed or if the opposition is resolved in your favor, the trademark will be allowed. Once USPTO issue the Certificate of Registration, we will make sure that it is forwarded to your address.
Your trademark registration will be valid for ten years from the registration date. You will need to renew your registration every ten years to maintain the trademark's protection. We will let you know when this is possible.
Keep in mind that having Nominus.com at you side can help you navigate the registration process and improve the chances of successful registration.
What information do I need to provide when filing a trademark application in the United States?
When filing a trademark application in the United States, you will need to provide information about the applicant, the trademark, and the goods or services associated with the trademark.
What is the cost of filing a trademark application in the United States?
The cost of submitting a trademark application in the United States varies depending on several factors, including the type of trademark and the number of classes it covers.
What is the typical time frame for obtaining trademark registration approval?
In the United States, the average time taken for trademark registration approval is approximately 10 months, provided there are no objections or oppositions encountered during the process.
Is it possible for a non-U.S. citizen or non-resident to submit an application for trademark registration in the United States?
Yes, you can apply for a trademark registration in the United States even if you are a non-U.S. citizen or non-resident.
Do I need to have a US address to file a trademark in the United States?
No, you do not need to have a US address to file a trademark application in the United States.
Is it possible to claim priority for trademark registration in the United States?
Yes, you can claim priority if your initial trademark application was filed in a country that is part of the Paris Convention. This is feasible as long as the application was submitted within six months prior to the filing date in the United States.
Do I need to sign a Power of Attorney?
No, it is not necessary to submit a Power of Attorney when registering your trademark in the United States.
How long does it take to obtain a trademark registration certificate in the United States?
The time it takes to obtain a trademark registration certificate in the United States varies, but it usually takes around 2-3 months after the trademark has been approved for registration.
Is it necessary to use my trademark before I apply for registration?
To successfully register a trademark, you must be actively using the mark in commerce or have a bona fide intention to use it in the future. Upon acceptance of your trademark for registration, the Trademark Office will require evidence of its use in commerce. At this stage, it is essential that you are actively utilizing your trademark in your business operations to secure the registration.
Is it possible to claim priority when filing a trademark application in the United States?
"Claiming priority" refers to a provision under the Paris Convention, an international treaty that enables trademark applicants to benefit from an earlier filing date in other member countries. When you claim priority, the filing date of your initial application in one member country can be used as the effective filing date in another member country, provided the subsequent application is filed within six months of the initial filing.
It is possible to claim priority for trademark registration in the United States if you have filed a trademark application in another Paris Convention member country within the past six months. By claiming priority, your US trademark application will be treated as if it was filed on the same date as your initial application in the other country, giving you an advantage in case of competing applications or potential trademark conflicts.
How long is my trademark valid once it has been registered?
The trademark will be valid for 10 years starting on the date of initial registration.
My trademark has design elements, how many applications should I file?
The number of trademark applications you should file depends on the characteristics of your mark, your budget, and the level of protection you want to have in the United States.
If your trademark includes distinct textual elements and design elements (graphics or logos), and you want both aspects to be protected, we recommend filing two trademark applications: one for the textual elements only (filed as a "Word Mark") and another for the combined design and text elements (filed as a "Combined Mark").
Filing two trademark applications has several advantages:
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Broader and stronger protection: If a third party files a "Combined Mark" with text similar to yours but a different design, their mark could still be accepted for registration if you only filed a "Combined Mark" and not a "Word Mark." This is because the third party's mark, as a whole, is considered different from yours.
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Protection for logo evolution: Companies often update their logos over time. If you only file a "Combined Mark" and not a "Word Mark," your new logo won't be protected. You must use your trademark exactly as registered; otherwise, it may be subject to cancellation.
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Comprehensive verbal and graphic protection: Filing a "Word Mark" application offers greater flexibility in using your mark in various ways, such as stylized text or different designs (as long as they aren't too similar to registered trademarks owned by third parties). Simultaneously, filing a "Combined Mark" protects your mark's design elements.
If your trademark also includes a slogan or a unique design symbol, we suggest filing separate applications for each to provide additional protection.