Our Trademark Application Process

Recommended for all trademarking clients

✤ A name, a logo, or a slogan would each be a separate search.

✤ Our attorneys search the database of existing trademarks for similar existing ones.

✤ We provide an explanation of what we found and let you know what we believe your level of risk is. The level of risk pertains to what is the risk that your application will be refused by the USPTO. The levels range from low to medium to high risk. We cannot guarantee that the trademark office will accept your application since they have more tools at their disposal than we do but we can provide you with an opinion in light of the search we have performed. Our aim in providing this information is so that you can make an informed decision as to whether you would like to proceed to file your application and can also be helpful to let you know if you are infringing on the mark of others.

✤ If you prefer a deeper search, please inquire about TM TKO search options to scan additional registries.

✤ If/When proceeding to a trademark application, stage 2 will be invoiced separately after filing classes have been decided upon.

What pieces of your branding are most important to you?

Some entrepreneurs choose to protect:

✤ Business name

✤ Business logo

✤ Tagline or slogan

✤ Product name

✤ A second logo variation

✤ Brand / name for a line of products

✤ Name of a service

✤ Name of a series, podcast, or course

Each of the above would be its own trademark application.

You have some options, but you will need to use whatever you choose consistently in business in order to gather enough evidence of use in commerce for the USPTO.

Here is an example.

Brilliant Butterfly Fields, LLC is the name of a business, registered with the state.

If you tend to use the name Brilliant Butterfly Marketing Academy, then you should consider doing the following:

- make it an official DBA / ABN / FBN with the state, owned by your LLC

- use it consistently everywhere: your email signature, your social media, your contracts, invoices, speaking engagements, etc.

Why?  When the USPTO asks for specimens for your trademark application, they need the EXACT thing you submitted.  The same words, the same spacing, the same punctuation.  If you are using slightly different variations of names in different places, it will be extremely difficult.  The solution for this is to create uniformity by choosing one version of the name and applying it everywhere. 

✤ The USPTO has 45 different classes. Essentially these are categories of goods and services. We can assist with selected the best filing classes for your business based on what you do.

Costs go up with every additional filing class, but you need to file in every class you are doing business in to get protection in that category of goods or services

✤ What products do we offer?

✤ What products are we adding in the future? Will these products be ready in 6 months?

✤ What services do we offer?

Example: a clothing brand with a retail store would be 2 filing classes

Class 25 for clothing

Class 35 for retail stores

But the clothing business’s name wouldn’t be covered in any other classes (so someone else could use that name for a restaurant, for example)

✤ With a viability search, we provide an explanation of what we found and let you know what we believe your level of risk is. The level of risk pertains to what is the risk that your application will be refused by the USPTO. The levels range from low to medium to high risk.

✤ Our aim in providing this information is so that you can make an informed decision as to whether you would like to proceed to file your application and can also be helpful to let you know if you are infringing on the mark of others.

Does low risk mean I am guaranteed a trademark?

✤ We cannot guarantee that the trademark office will accept your application since they have more tools at their disposal than we do but we can provide you with an opinion in light of the search we have performed.

✤ Results of the search are valid for the date of the search. As time passes, it is possible other similar marks have been filed/approved. The USPTO has more tools and files at their fingertips whenever your application is being evaluated.

Client Responsibility

Clients are responsible for reviewing the trademark application process information on this page so you have an understanding of the risks and length of process. Please also read and sign Terms of Representation.

✤ An Intent To Use application means you do not have evidence that you are using this mark when the initial application is submitted, but you will gather this evidence over time to submit later.

✤ Assuming the USPTO processes your application through their system, approves, and provides a Notice of Allowance, the next step is to provide use in commerce examples of your trademark's brand. These specimens are photographs or screenshots with dates/URLs that show sales being made with this trademark in the filing classes chosen.

✤ The USPTO gives 3 months to gather and submit evidence. If you need an extension of time, we can file an extension for additional cost.

✤ There are additional costs associated with submitting this Use in Commerce. Please ask us for the latest rates.

✤ There are additional fees for each filing class on your application.

✤ Please ponder: Do I currently have enough evidence that I am using this (name/logo) with customers?

— appears on invoices & sales transactions

— appears on products & services

— appears in online store with clear ordering information to purchase goods/services

— for education: appears in advertising for speaking events, classes, etc

— show usage in all classes you apply for

— all instances are exactly as I want it to be protected (spelled the same or using the exact same logo)

✤ IF YES, submit 2-10 examples of photo evidence with application

✤ IF NOT, can submit evidence later at additional cost. This is called an intent to use application. If your application makes it through the review process of the USPTO, you will have to submit this evidence within 3 months.