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Trademark application

1. Preparation to file

If you are filing for a mark that includes a logo then you want to have a PDF ready of your mark/logo design. You want to speak to a trademark attorney about the advantages and disadvantages of filing a mark together with a logo as opposed to just the word portion of the mark. You also want to consult about filing the mark in black and white vs color.

2. Conducting a search

Once you know how you want to file the mark it is prudent to conduct a search to see if it is available. The search should be a likelihood of confusion search that mimics the one that an Examining Attorney will conduct 3 months after your filing date.

3. Filing the Application

If a trademark attorney opines that the mark is available then you can proceed to file it. If based on use in interstate commerce, speak to an attorney to learn what constitutes "use", then obtain the dates that the goods and services were first sold in the United States and abroad. Also, obtain 3-5 photos of the product or service showing the mark.

4. Pendency

The application once filed will be pending for 3 months before it will be examined.

5. Response

The Examining Attorney will then issue an Office Action if there is an issue with the application. There are many types of issues that range in degree of complexity. An attorney should be hired to review responses from the Trademark Office. Once responded to the Examining Attorney will get back to you in about 1-2 months.

6. Approval

If approved the application will be published for 30 days giving anyone in the public an opportunity to oppose the application.

7. Registration

If there is no opposition and the application was filed based on a mark in use then the trademark will register. If the application was filed based on intent to use then a Statement of Use or Extension of Time for 6 additional months must be filed.

8. Post-Registration

At the 5th year anniversary a Section 8 affidavit must be filed to avoid abandonment that states there is continuous use. Optionally, a Section 15 affidavit may be filed that makes the registration incontestable. The Section 15 affidavit is recommended to make for a stronger registration. Five years later the Section 8 and 9 affidavits must be filed to renew the registration for 10 more years.

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David Wade Barman

786-361-6579

17071 West Dixie Highway, North Miami Beach, FL 33160

Bar #20693(FL) License for 2006 years Member in Good Standing

Practice Areas: Copyright application | Intellectual property | Patent application | Patent infringement | Trademark application

Antonio Enrique Regojo

305-814-8299

12550 Biscayne Boulevard, Suite 110, North Miami, FL 33181

Bar #41990(FL) License for 2007 years Member in Good Standing

Practice Areas: Business | Corporate and incorporation | Estate planning | Immigration | Trademark application

Antonio Enrique Regojo

305-814-8299

12550 Biscayne Boulevard, Suite 110, North Miami, FL 33181

Bar #41990(FL) License for 2007 years Member in Good Standing

Antonio Regojo has been practicing law in Miami, Florida since 2007, focusing primarily on small business law and international business transactions. Prior to founding his law firm, Mr. Regojo practiced at a boutique international law firm working with Latin American multinationals seeking to enter the US market, as well as with US based companies. Mr. Regojo worked as general counsel to a large Latin American food franchise, advising on intellectual property matters as well as franchise and...

Practice Areas: Business | Corporate and incorporation | Estate planning | Immigration | Trademark application

Alla Zagrebelsky

813-579-1859

2202 N. West Shore Blvd. Suite 200, Tampa, FL 33607

Bar #54106(FL) License for 2008 years Member in Good Standing

Greg Matthew Popowitz

954-929-1899

213 E Sheridan Street Suite 3, Dania Beach, FL 33004

Bar #70313(FL) License for 2009 years Member in Good Standing

Practice Areas: Entertainment | Intellectual property | Litigation | Patent application | Trademark application

Mark Christopher Johnson

754-300-1500

111 North Pine Island Road Suite 103, Plantation, FL 33324

Bar #84365(FL) License for 2010 years Member in Good Standing

Practice Areas: Intellectual property | Patent application | Patent infringement | Trademark application | Trademark infringement

Mark Christopher Johnson

754-300-1500

111 North Pine Island Road Suite 103, Plantation, FL 33324

Bar #84365(FL) License for 2010 years Member in Good Standing

Mark C. Johnson, Esq., managing partner of Johnson | Dalal, is a Registered Patent Attorney with the United States Patent and Trademark Office, a licensed attorney with the Florida Bar, and a Florida Board Certified Expert and Specialist in Intellectual Property Law. Mark also holds a Bachelor of Science degree in Mechanical Engineering. Mr. Johnson and the Firm's primary focus is to assist all clients in the protection, prosecution, and preservation of Patents, Trademarks, Copyrights, and...

Practice Areas: Intellectual property | Patent application | Patent infringement | Trademark application | Trademark infringement

Matthew Sean Tucker

954-204-0444

200 SE 6th Street Suite 405, Fort Lauderdale, FL 33301

Bar #90047(FL) License for 2011 years Member in Good Standing

Diana Frances Mederos

516-235-3305

7000 W. Palmetto Park Rd. Ste. 210, Boca Raton, FL 33433

Bar #99881(FL) License for 2012 years Member in Good Standing

Diana Frances Mederos

516-235-3305

7000 W. Palmetto Park Rd. Ste. 210, Boca Raton, FL 33433

Bar #99881(FL) License for 2012 years Member in Good Standing

Half STEM, half law, all business (R). Please visit mederoslegal.com or usatrademarkcounsel.com to schedule a free call with Diana. Diana is a registered patent attorney and is licensed to practice law in Florida. Diana's technical expertise is in the pharmaceutical, environmental, biomedical sciences. The hallmark of Diana's work is the convergence of the biological sciences and the law. Excellent writing is the core of excellent legal work, and Diana provides nothing less. Diana is...

Debra Hill

904-612-3780

4600 Touchton Road Building 100, Suite 150, Jacksonville, FL 32246

Bar #158186(FL) License for 1998 years Member in Good Standing

Practice Areas: Business | Franchising | Trademark application

Christene Miele Ertl

904-737-4600

8818 Goodbys Executive Drive, Suite 100, Jacksonville, FL 32217-4605

Bar #269300(FL) License for 2000 years Member in Good Standing

Jacqueline Clementine Tadros

401 East Las Olas Boulevard, Suite 1400, Fort Lauderdale, FL 33301

Bar #497509(FL) License for 2001 years Member in Good Standing

Scott D. Smiley

754-300-1500

6400 North Andrews Avenue Suite 500, Fort Lauderdale, FL 33309

Bar #678341(FL) License for 2003 years Member in Good Standing

Practice Areas: Internet | Patent application | Patent infringement | Trademark application | Trademark infringement

Scott D. Smiley

754-300-1500

6400 North Andrews Avenue Suite 500, Fort Lauderdale, FL 33309

Bar #678341(FL) License for 2003 years Member in Good Standing

Scott D. Smiley is a Registered Patent Attorney, holds a degree in Electrical Engineering, and, in addition to his daily legal practice, teaches Patent Law at Nova Southeastern University's Law Center. Scott assists clients with patents in virtually every technology area, trademarks, and copyrights. Mr. Smiley was part of a team that litigated a three-year long patent infringement case against The Home Depot U.S.A., Inc., where they successfully proved that The Home Depot engaged in willful...

Practice Areas: Internet | Patent application | Patent infringement | Trademark application | Trademark infringement

Robert Michael Downey

6751 N Federal Hwy Ste 300, Boca Raton, FL 334871647

Bar #793371(FL) License for 1989 years Member in Good Standing

Robert Michael Downey

6751 N Federal Hwy Ste 300, Boca Raton, FL 334871647

Bar #793371(FL) License for 1989 years Member in Good Standing

Robert M. Downey was born in Mineola, New York. Mr. Downey attended the United States Merchant Marine Academy at Kings Point, N.Y. where he received his Bachelor of Science degree, with honors. Following college, Mr. Downey attended the University of Miami School of Law where he earned his Juris Doctor (Law) degree. Following his graduation from the Merchant Marine Academy, Robert Downey served six years as a Commissioned Officer in the U.S. Naval Reserve, both as a Lieutenant JG and a...

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