Registration should outlast the launch.
I prepare trademark applications the way they should be filed the first time: the right owner, the right goods, specimens that satisfy the rules.
What Registration Provides
A federal trademark registration grants you nationwide rights, a presumption of ownership, and the ability to use the ® symbol. It also gives you a basis to stop copycats and counterfeiters on major platforms and a foundation for enforcement, licensing, and business expansion. While unregistered rights do exist, they are limited to the areas where you operate. They are harder and more costly to prove.
Why Applications Fail
The U.S. Patent and Trademark Office (USPTO) rejects applications every day, and most refusals trace back to decisions made at the time of filing. Common issues include:
The identification of goods and services was too narrow, too broad, or incorrect regarding how the brand sells.
The specimen submitted did not demonstrate the mark’s use according to the required guidelines.
The mark was overly descriptive and lacked a registration strategy.
A similar registration already existed, and this was not identified before filing.
The application was submitted under the wrong owner’s name, a mistake that can be critical.
Inexpensive filing services often complete forms without making necessary judgment calls, and the trademark office does not consider effort when evaluating applications.
What Prosecution Means
Prosecution refers to the steps taken between the filing and registration of a trademark application. This includes monitoring the application, responding to office actions, negotiating identifications with the examining attorney, and addressing refusals based on issues such as likelihood of confusion or descriptiveness. A well-crafted response to an office action can often determine whether an application is registered or abandoned. The process usually takes a year or more, and I keep my clients informed at every significant stage.
What I Handle
Filing Strategy: Determining what to file, under whose name, and which goods and services to cover in each class.
Application Types: Managing both use-based and intent-to-use applications, including filing statements of use as the brand launches.
Specimen Preparation: Creating specimens that comply with the rules on the first attempt.
Office Action Responses: Addressing everything from procedural issues to substantive refusals.
Clearance: Ensuring the application begins from an informed position.
Who This Is For
This service is designed for brand owners who plan to grow their brand over the years and want to ensure their registration is handled correctly from the beginning. If your budget only allows for a do-it-yourself filing at this time, Selvedge offers guidance [link] to help you avoid the most common mistakes.
Start Here
Please complete the intake form with the mark, specify what you sell or plan to sell under it, and indicate whether you are currently using it in commerce. I will respond with a recommended filing strategy and a quote.
FAQs
Will sending a demand letter start a lawsuit?
1
Sending a demand letter rarely initiates a lawsuit. Most issues are resolved through correspondence and negotiation. However, the letter notifies the other party, so assessing the situation before sending it is just as important.
Do you go to federal court?
2
Yes, I do, when appropriate. My practice includes proceedings at the Trademark Trial and Appeal Board, the Copyright Claims Board, and domain disputes under the Uniform Domain Name Dispute Resolution Policy. If a dispute needs to be addressed in federal court, I manage the litigation and collaborate with local counsel when necessary based on jurisdiction.
I received a demand letter. Can you assist with that?
3
Yes, I can help. Assessing the claim and developing a response strategy is similar to the work I do on the other side. The worst reactions are panic or silence. Please forward the letter along with your intake information and note any deadlines.