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The Three Phases of U.S. Trademark Registration

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Entrepreneurs who launching a new business or technology startup spend a lot of time and money to understand U.S. trademark registration and best practices. Trademark registration breaks down into three key phases, the first phase consists of pre-filing due diligence, the second phase includes application filing strategy, and the third phase is post filing follow up and due diligence. 

Trademark Registration Phase 1 – Pre-filing Due Diligence for Trademark Registration

Pre-filing due diligence is an important element of brand selection and adoption, and trademark registration strategy. During the pre-filing due diligence process, the brand owner or her attorney will consider aspects such as trademark-ability, descriptiveness, likelihood of confusion, and other potential reasons for trademark registration refusal or other legal conflicts. At the conclusion of the pre-filing due diligence process, the brand owner will have a risk assessment protocol on the selected trademark, and will be able to make an informed decision on adoption of the trademark. 

If the pre-filing trademark due diligence results in clearance of the trademark, proceed to phase two, application preparation and filing strategy. 

Trademark Registration Phase 2 – Trademark Application Filing Strategy 

During the trademark application filing strategy, brand owners, entrepreneurs, and business owners or their trademark attorneys will consider how to file an application in the United States Patent and Trademark Office. 

Various considerations such as whether to file a trademark application for a word mark, which covers brand name, design mark, which covers logos, or slogans, will be involved, along with proper classification of the trademark applications in one or more of the available categories in the Nice Agreement International Classification System in the United States Patent and Trademark Office (USPTO) covering 045 different classifications. Additional administrative considerations such as using the correct type of application, and correctly identifying the trademark owner’s name and address will be included. 

The Trademark Application Filing Strategy phase usually concludes with preparation and filing of one or more federal trademark applications in the United States Patent and Trademark Office and keeping the application Serial Number for reference and follow up during the post-filing due diligence process. 

Trademark Registration Phase 3 – Post Trademark Application Filing and Due Diligence 

After the Federal Trademark Application has been filed in the United States Patent and Trademark Office and a confirmation email has been received, the post filing due diligence period begins. This phase covers the period between the federal trademark application filing date, and the trademark registration date, and can consists of various legal developments including receiving an Office Action from the United States Patent and TRAd4mark Office Examining Attorney, a Notice of Allowance – in the event the application was filed under Section 1(b) Intent-to-Use basis, or various other notices including notice of publication, or notice of opposition, which happens in about 2-3% of the time. 

A trademark applicant and her trademark attorney will consider various legal strategies during the post filing due diligence phase, at all times ensuring the status of the trademark application remains active, any official notices from the United States Patent and Trademark Office are addressed within the given deadlines, and all other rules of Trademark Manual of Examining Procedures are followed. As always, consultation with an experienced trademark registration attorney in Los Angeles, West Hollywood, Beverly Hills, or other city or state nationwide is highly recommended. It is advisable to work with an experienced trademark attorney as trademark law is very technical in nature, and is usually handled by attorneys who primarily focus on intellectual property matters in Los Angeles, Malibu, NewPort Beach, Calabasas and the greater Southern California area.

David N. Sharifi, Esq.
David N. Sharifi, Esq.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal.
Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.

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