Trademark Registration: Revision Legal’s Approach
Trademark registration is not a fill-in-the-form exercise. Done correctly, it is a strategic investment that secures your brand for years or decades. Done poorly, it produces a registration that is too narrow to matter or, worse, a multi-year prosecution battle that ends in abandonment. Revision Legal’s trademark attorneys take a methodical, client-specific approach that maximizes the probability of a strong, enforceable registration.
Step One: Understand the Business First
Before we open a TEAS filing window, we talk with the client. We need to understand the business model, the current and planned geographic markets, the competitive landscape, and the long-term vision for the brand. Trademark rights are defined by the scope of use, and a registration that does not match the client’s real commercial footprint is a registration that will leave the client exposed.
We also ask about the history of the mark. Has the client been using it for years, or is this a new venture? Is there evidence of third-party use of similar marks that the client has already encountered in the market? These facts shape the filing strategy from the outset.
Step Two: Comprehensive Clearance
No trademark application leaves our office without a clearance search. We search the USPTO’s TESS database for identical and confusingly similar marks in related International Classes. We also search state trademark registries and common-law sources, including business name databases, domain name registrations, and internet search results.
The clearance opinion we provide is candid. If we find a mark that presents a serious likelihood-of-confusion risk under the factors articulated in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973) — the controlling test for likelihood of confusion at the USPTO — we tell the client directly. We explain the risk, the options for modifying the mark to reduce conflict, and the realistic probability of achieving registration. Clients make better decisions with honest advice than with false confidence.
Step Three: Strategic Application Drafting
The identification of goods and services is the most consequential drafting decision in any trademark application. It defines the legal scope of the registration and determines what the owner can enforce. An identification that is too vague will draw an indefiniteness refusal from the examining attorney. An identification that is too narrow will leave significant commercial activity unprotected.
We draft identifications that track the USPTO’s Acceptable Identification of Goods and Services Manual where appropriate, but we also push for broader, more protective language when the facts support it and the client’s business warrants it. We select International Classes that cover current use and, where the client has a bona fide intent, likely future use.
Step Four: Responsive Prosecution
Most applications receive at least one office action. The examining attorney may raise a likelihood of confusion with a cited mark, a descriptiveness refusal, a surname refusal, or a failure-to-function refusal. The six-month response deadline is firm — missing it results in abandonment.
Our prosecution responses are substantive. For likelihood-of-confusion refusals, we analyze the similarity of the marks, the relatedness of the goods and services, the channels of trade, and the sophistication of purchasers — all factors the TTAB weighs under du Pont. We submit evidence of commercial strength, third-party registrations showing weak protection for cited marks, and legal arguments tailored to the specific examining attorney’s office action. For descriptiveness refusals, we argue acquired distinctiveness under § 2(f) where the evidence supports it, or amend the application to the Supplemental Register where appropriate as a bridge to eventual Principal Register registration.
Step Five: Opposition Monitoring and Defense
After approval by the examining attorney, the application is published in the Official Gazette. The 30-day opposition period is a critical window. Third parties who have been monitoring the USPTO — and sophisticated brand owners do — can file a notice of opposition. We monitor our clients’ applications during publication and are ready to respond to any opposition with a substantive answer and, if necessary, a full TTAB proceeding.
Step Six: Post-Registration Compliance
Achieving registration is the beginning of the maintenance obligation. Section 8 Declarations of Continued Use are due between years five and six. Section 9 Renewals are due between years nine and ten and every ten years thereafter. We track these deadlines for our clients and prepare the required filings well in advance of the due date. A registration that lapses for failure to file a maintenance document is a preventable loss.
Trademark Enforcement After Registration
A registered trademark that is not enforced is a trademark that gradually loses its legal significance. Courts look at whether the owner has policed the mark when evaluating both infringement claims and claims of abandonment. Revision Legal develops enforcement programs for registered trademark owners that are calibrated to the client’s budget and business priorities. We handle cease and desist letters, UDRP proceedings, TTAB opposition and cancellation actions, and federal court litigation under the Lanham Act.
We also record trademarks with U.S. Customs and Border Protection to block the importation of counterfeit and infringing goods, an enforcement tool that is particularly valuable for clients with consumer product brands.
If you have questions about trademark registration or enforcement, contact the trademark attorneys at Revision Legal. Call us at 855-473-8474 or complete our contact form for a consultation.
International Trademark Registration
For businesses with international operations or aspirations, a U.S. trademark registration is only the beginning. Trademark rights are territorial — a U.S. registration provides no protection in Canada, Europe, or Asia. International trademark protection requires separate filings in each jurisdiction where protection is needed.
The Madrid Protocol provides a streamlined mechanism for filing international trademark applications. Using WIPO’s Madrid System, a U.S. registrant can file a single international application designating multiple member countries (there are over 120 member countries in the Madrid System) based on the U.S. application or registration. WIPO then forwards the application to the national trademark offices of the designated countries, each of which examines the application under its domestic law.
Alternatively, businesses seeking EU-wide protection can file a single European Union Trade Mark (EUTM) application with the EUIPO, which provides protection in all 27 EU member states. Filing directly with national offices may be preferable in jurisdictions where the domestic examination standards are more favorable or where local counsel is already engaged for other matters.
Revision Legal works with a network of international trademark practitioners to coordinate multi-jurisdiction filing strategies for clients with global brand protection needs. We advise on the relative merits of Madrid System filings versus direct national filings and help clients prioritize jurisdictions based on their current and planned commercial activity.
Contact the trademark attorneys at Revision Legal with questions about trademark registration or enforcement. Call 855-473-8474 or complete our contact form.
