We help you protect your trademark
Your business has spent a lot of time and money developing its trademarks, trade dress, or logo. You need to make sure than no one takes your trademarks for their use. Before launching your new trademark, you also want to be certain that it does not infringe on another’s trademark.
Our trademark attorneys in Chicago have assisted our clients in researching the availability of potential trademarks and have prepared applications with the U.S. Patent and Trademark Office and assisted with foreign applications, as well.
We have cost-effectively stopped others’ infringement of our clients’ trademarks and have responded for our clients when they receive cease-and-desist letters.
As your business prepares to market its products, we can help with your trademark needs.
Types of Trademarks
You can trademark a word or letters (e.g., IBM, Exxon), a tagline (e.g. Just Do It), a logo (e.g. the Nike swoosh)–with or without color, a color (e.g. Tiffany blue), and a sound (e.g. the NBC chimes). The U.S. Patent and Trademark Office (USPTO) will register a trademark only in conjunction with specific goods and services. The USPTO will deny an application if the proposed mark is “confusingly similar” to an existing trademark for the same or very similar goods/services. The USPTO also will not register a trademark for a “generic” mark or for a mark that is “merely descriptive” of the affiliated good/service. A generic or descriptive word, however, may be part of a trademarked name or phrase.
After determining what mark(s) you want to register as trademark(s), you need to describe very clearly the goods/services that the mark covers. Your description needs to align with one or more of the 45 international classes provided by the USPTO.
Basis for Trademark Application
You need to decide whether to file your trademark application on an “intent to use” (ITU) basis or a “use in commerce” basis. If you do the latter, you need to be able to show actual use in interstate commerce. We can help you decide if your goods or services qualify as used in interstate commerce. Either type of application requires a USPTO-imposed $325 filing fee for each international class (for each trademark) and will take about nine months to wind its way through the USPTO application process.
If you are not yet using your mark in commerce, the advantage of the intent to use application is that you get protection from the date of filing – not from a future date when your service is actually used in interstate commerce. The downside of an intent to use filing is that you will need to file evidence of actual use in interstate commerce for the goods/services described in your application, called a Statement of Use (SOU), within six months of the “notice of allowance” – or about 15 months from the date of application. The USPTO charge for filing a SOU is $100 per international class. If you cannot show use in interstate commerce within six months of the issuance of a notice of allowance, you may ask for a six-month extension up to five times for a USPTO charge of $150 per international class.
What We Do
Balough Law Offices’ attorneys work with you to prepare the trademark application and usher it through the process. That work includes (1) searching for other marks that the USPTO might find “confusingly similar,” (2) working with you to determine the appropriate description of goods and services, (3) determining the appropriate first use and first use in commerce dates, (4) selecting the appropriate documents to submit with the application to show the mark itself and its use in commerce; (5) responding to questions or “outgoing actions” from the trademark examiner, and (6) confirming correct publication and subsequent registration. Once we understand your goals, we can give you an estimate of our fees for these steps before we begin the work. We can also advise you on how to protect your registered mark on an ongoing basis.
Please let us know how we can help you protect your trademarks to capture their growing value and position your business for continued success.