I recently finished up a trademark application for a client who manufactures security equipment in a foreign country.
From the time of the original application, until it passed the 30 day “publication period” for anyone to come forward to oppose the registration of this trademark, took a total of 3 1/2 years. You read that right; three and a half years!
But we did it! We got the mark, and now my client is also registering it in China, Israel and the European Union, and selling their products in new markets, reaching a global audience.
So you might wonder – why did it take so long?
The fact of the matter is that almost every trademark application receives a letter from the trademark examiner called an “Office Action” that sets out certain “concerns” or potential issues with your application, from a likelihood of confusion with another company in the same or a similar business, whether your description of the goods or services you sell is too vague, or overly expansive, or whether the mark is displayed properly in connection with the sale of your goods and services.
Once you receive one of these office actions, that is just the beginning of the dance. From then on, it is up to you and your attorney to persuade the examiner that your company, product or service is worthy of protection. It is, at heart, a negotiation.
The client and the attorney need to be on the same page, and the client has to work with the attorney to provide accurate samples of the goods or services for sale in interstate (or international) commerce.
Sometimes, this takes multiple letters, phone calls and submissions of specimens of the trademark in use. You can feel like you are going in circles sometimes.
But if you persevere, be patient and respectful of the examiner (you likely understand your client’s business a lot better than they do ….), and try to faithfully answer the examiners’ questions, you can usually obtain a positive result for the client.
It may take time, and lots of effort, but obtaining trademark protection is one of the best things you can do to help ensure the future success of your business.
For more information about the trademark process, please watch this video, or call me at (315) 877-1741. Thank you.