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Trademark Registration Process for Businesses in Philadelphia

At first glance at this title you might be thinking, “Camille, what do you know about this topic….” And the answer is – NOTHING! But luckily, guest writer Josh Gerben knows it all. As Positive Publicity shifts into a new era, I’m attempting to learn more knowledge about starting a business and look forward to sharing more on the blog. Today, Josh is sharing information about how to register and maintain a trademark:


ABOUT JOSH GERBEN:

Josh Gerben is the founder of Gerben Intellectual Property, a trademark law firm that has secured over 5,500 federal trademark registrations for clients Nationwide, including Philadelphia. Trademark lawyer Josh Gerben has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.


Trademark Registration Process for Businesses in Philadelphia:

As you start the process to open your Philly-based business, don’t forget about the importance of trademark registration. 

The process to register a trademark in Philadelphia is:

  1. Engage and experienced trademark attorney.
  2. Choose a strong mark to represent your brand.
  3. Conduct a trademark search to determine if your trademark is available for registration.
  4. Submit your trademark application to the USPTO.
  5. Maintain your mark’s protections through monitoring and renewal.

Engage a Trademark Attorney

The United States Patent and Trademark Office, or USPTO, doesn’t require U.S. citizens to hire a trademark attorney, but they strongly encourage it.  That’s because of the many detailed legal decisions that need to be made throughout the registration process.  Trademark attorneys are able to pull from their experience to conduct a thorough search and draft an application for the broadest protections possible.  Engaging an experienced trademark attorney will also increase your chances of approval.  In fact, a 2013 study by the University of North Carolina found that applications submitted with the help of a trademark attorney were fifty percent more likely to be approved!

Not only will a trademark attorney increase your likelihood of approval, they will save you time as well.  The process to register a trademark can be lengthy, usually 8-10 months from start to finish, but in some cases it takes a year or more to obtain approval from the USPTO.  As you prepare to open your business in Philadelphia, you may not have much time to devote to trademark registration.  Fortunately, your attorney can conduct a thorough trademark search, draft your application, and even respond to non-substantive Office Actions on your behalf, all while you remain focused on growing your business.  

Choose a Strong Mark

The trademark you select will be the first impression many customers have with your brand.  Because of this, it’s important to take the time to choose a strong trademark to represent your business.  A strong mark serves two purposes.  First, it will protect you from infringement.  Second, a strong mark will help your business establish brand recognition and customer loyalty, which is essential in the crowded Philly market.  

So what makes a strong mark?  Well, the USPTO will not register trademarks for generic or descriptive words, like “Cheesy Cheesesteaks” or “Cold Smoothies.”  Many businesses choose names that have nothing to do with the product or service they represent, like Domino’s Pizza or Amazon, while others opt for fanciful or inventive names with no previous meaning.  Nike and Verizon are both businesses that have had great success with fanciful names.  To be sure you are selecting the best trademark for your brand, it’s a good idea to create a list of several, rather than getting your heart stuck on one choice.  Show your list to friends and family, get feedback, and narrow it down to a handful of choices before you conduct a trademark search.  

Conduct a Comprehensive Trademark Search

Once you’ve narrowed your list of potential trademarks down, it’s time to conduct a comprehensive trademark search.  The purpose of the search is to determine whether your mark, or something confusingly similar, is already in use, not just in the Philadelphia area, but across the country.  A trademark search should always be conducted before you submit your application and pay your fees to the USPTO.  

Some Philly entrepreneurs, in an effort to save money, take the DIY route to trademark searches, either by simply Googling the trademark or using a free legal site.  Unfortunately, taking the do-it-yourself approach here might not pay off.  That’s because these free options typically only return exact matches to your trademark, while most trademark disputes are actually the result of similar marks, not exact matches.  In addition, non-traditional marks, like logos, colors, and even sounds are nearly impossible to search on your own.  Trademark attorneys, on the other hand, have access to more sophisticated software, which will reveal not only exact matches, but also similar matches to your word, logo, slogan, or color.  Once you’ve determined that no one else is using a similar mark, you can begin the application process.

Submit Your Application to the USPTO

As of October 2019, the USPTO is no longer accepting paper trademark applications.  All applications must now use the Trademark Electronic Application System, or TEAS.  As you complete your application, you will also be required to select International Classes.  The USPTO has 45 classes that outline a variety of goods and services.  You will need to select the classes that best represent the goods and services you plan to offer under your trademark.  There are a number of TEAS application options, and the application you use will be based upon the communication method you prefer and the International Classes you will include on your application.  

The least expensive option is the TEAS Plus application.  However, this applications is only available to registrants whose good and services appear on a much smaller, pre-selected class list.  You must also pay in full at the time of filing and opt to communicate with the USPTO through email only.  If the goods and services you plan to offer are not on the pre-selected list, you may want to use the TEAS RF (Reduced Fee) application.  You will only be able to communicate with the USPTO through email, but you’ll be able to select any one of the 45 International Classes, and fees are not required when you file.  The TEAS Regular application is the most basic.  You can still select from any of the 45 classes, and you aren’t required to communicate through email, but you will pay a much higher cost.  

Once you submit your application through the TEAS system, it will be assigned a USPTO examiner, who will conduct another search of your trademark.  Throughout the process, the examiner may reach issue an Office Action, which is essentially a way to notify you of a potential problem with your application.  These can be issued for a variety of reasons, but the most common are requests for additional information or clarification, or to let you know that your application cannot be accepted as is, often because the mark, or one that may be confusingly similar, is already in use. Whatever the reason, it is important to respond to these Office Actions appropriately, before the set deadline.  Failing to do so could result in the cancellation of your application.  Fortunately, your trademark attorney can respond to most non-substantive Office Actions on your behalf.

Maintain Your Trademark

The responsibilities of a trademark owner are not over once the mark has been registered with the USPTO.  In order to maintain control of your trademark, you must monitor its use and take action against potential infringers.  While policing your mark may seem like a full time job itself, most trademark attorneys offer monitoring services.  They will alert you to potential infringement and determine the best course of action to take.  Once your mark has been registered, you will also be able to use the ® symbol.  Add it everywhere you trademark is seen, from your product labeling to your Philly storefront and website.  This will serve as a public notice that your mark has been registered. 

As long as you continue to use your mark and renew it on time, your trademark protections will never expire!  Be sure to keep track of your renewal dates and begin the process well before the deadline approaches.  For new trademarks, the first renewal will occur between the fifth and sixth year, then again between years nine and ten.  After that, you will need to renew your trademark every ten years.   

Register a Trademark for Your Philly-Based Business

Trademark registration isn’t just for large Philadelphia businesses.  Whether you own a gym in King of Prussia or operate a food truck near Rittenhouse Square, your business can benefit from trademark registration.  Fortunately, the process to register is easier than you think.  Begin by engaging a trademark attorney that can assist you throughout the process.  Create a list of strong trademarks, then conduct a trademark search to determine which of your choices is available for registration.  Then, submit your application to the USPTO, and respond to all Office Actions.  Once your mark has been approved, it won’t expire, as long as you continue to use it and meet renewal deadlines.  Contact a trademark attorney today to ensure your Philadelphia business is protected.  

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