TRADEMARK FREQUENTLY ASKED QUESTIONS

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The following Q&A is based on common questions received from clients of all sizes, whether forming a new business or managing a trademark portfolio for an established company. 

 

1. How does CASTELLANO differ from other online trademark filing services?

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ANSWER: CASTELLANO is not a discount online filing service. CASTELLANO is a full service law firm specializing in intellectual property law.  We have represented some of the largest and most sophisticated technology companies around the world.  We have also represented solo inventors, entrepreneurs and universities.  CASTELLANO leverages decades of experience in intellectual property law and a modern law firm platform to provide convenient, prompt and high quality service clients can can trust with transparent, predictable pricing that is reasonable for budgets of all sizes.

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CASTELLANO's full service capabilities include litigation and trial practice we are experienced litigators and trial attorneys in trademark actions.  We have the perspective and experience to file and win registration for a trademark that is useful and valuable to your business.  

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2. Do I need a trademark search?

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ANSWER: A trademark search is not required.  A brief search such as the type we conduct is called a "knock-out" search and helps avoid wasting money and time on filing a new trademark application for a trademark that is already registered and active. 

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3. Can I use my trademark before registration?

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ANSWER: Yes.  Trademark rights can arise by using your trademark in commerce--even if you never register.  Federal trademark registration enhances and augments your ability to protect your trademark rights. 

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4. What is a federal trademark registration?

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ANSWER: Registration is granted by the U.S. Patent and Trademark Office.  To obtain a registration, a trademark owner prepares and files a trademark application and files the application with payment of a government fee.  The PTO examines the application and determines whether the application complies with certain legal requirements and whether the trademark conflicts with already existing or registered trademarks.  If the PTO determines that the trademark can be registered, and no third party opposes registration of the trademark, then the PTO will grant registration.

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5. What is needed to file a trademark application?

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ANSWER: Identification of the trademark including image file of any logo; identification of goods or services with which the trademark is being used; a sample showing the trademark with the goods or services, e.g., a screenshot of a website, etc.; and a government fee.  Our online form includes fields for uploading image files and specimens.

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6. What happens after submitting CASTELLANO's online form and payment for a trademark application?

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ANSWER: An attorney handles your application directly and prepares your trademark for filing after careful review of the information you submitted and after conducting a knock-out search for conflicting marks.  We will contact you if additional information is required.  We can file within the same day or next business day if needed and for no additional fees. 

 

7. How can I let others know about my registration?

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ANSWER: After obtaining registration, a trademark registration symbol ® may be used with your trademark to put others on notice that your trademark is registered.

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8. Does a trademark registration expire?

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ANSWER: Yes.  Registered trademarks must be renewed at certain times during their life.

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9. Can you represent me in resolving a dispute or going to court?

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ANSWER: Yes.  Our experience in litigation and trial with trademarks enhances how we approach preparing and filing trademark applications and working with the examining attorney at the U.S. Patent and Trademark Office. 

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10. What is the difference between a simple and a complex Office Action?

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ANSWER: A simple Office Action includes minor issues that must be addressed to proceed to a potential indication of allowance and registration.  A complex Office Action may include a more substantial refusal of the application based, for example, on a prior existing conflict trademark.  A response to such a refusal would require attorney argument and more time and therefore the fee for complex Office Action responses in set higher than the fee for simple Office Action responses.

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11.  What if I am not selling my product yet?

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ANSWER: We will proceed with filing on a intent-to-use basis and provide the sample of the trademark being used in commerce along with the first date of use later.  This will incur some additional fees later before the application can be registered.  

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12. What if I already filed a trademark application and need help responding to the U.S. Patent and Trademark Office?

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ANSWER: We are happy to take over representation.  We will review the case and prepare a strategy and response for resolving issues that are preventing registration. 

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13. Does CASTELLANO handle other intellectual property law issues?

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ANSWER: Yes, we are a full service law firm specializing in intellectual property law.  Please feel free to ask about our patent services and our price plans for patent filings.

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14. What if I have an ornamental product design to protect?

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ANSWER: Contact us about design patent protection. We offer reasonable fixed fees for design patent filing and prosecution. 

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15. What if I need help with formal drawing of a trademark suitable for filing with the U.S. Patent and Trademark Office?

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ANSWER: We handle trademark drawings preparation in house. We also handle patent drawings on our end for reasonable fees.