Frequently Asked Questions

Only for Full Service orders. For Light Touch, your trademark application exclusively identifies you (or your business) as the applicant (trademark owner). We only assist you with the hard part of setting up your trademark application.

If you wish to stop the application process before filing with the USPTO, you will still receive an expertly drafted application that you can then carry forward with your new trademark. We can also counsel you on choosing a trademark to avoid conflicts.

You can compare options on our Pricing page. If you still need help, one of our trademark experts would be happy to speak with you by phone to help you determine the best trademark protection for your business. Book a 15-minute consultation or by calling 1-888-366-6595.

To place an order for a trademark application, visit our Pricing page and select a package. From there, you will be directed to our checkout page.

We typically deliver our comprehensive trademark search results within 5 to 7 business days.

If a search report reveals a conflict with your proposed trademark, we will always offer a phone meeting to discuss the issue and suggest potential strategies for success.

Please allow 5 to 7 business days for your draft trademark application to be completed. Once the draft is ready, we’ll send it to you for your review and final approval.

Once your order is confirmed, we will be in touch within 5-7 business days to schedule a follow-up call with one of our trademark experts to walk you through the completed search and application, and to confirm your trademark details.

No. The biggest problem with relying exclusively on a USPTO trademarks database search is that the results include only direct or nearly direct matches of trademarks that have been filed or registered with the USPTO. Be careful. Someone else may have already registered a similar trademark with a slightly different spelling that wouldn’t show up in your search. Heirlume’s comprehensive trademark search also checks to see if anyone is using something similar to your mark outside of the official Trademark US Register.

Our comprehensive trademark search fee includes:

• a comprehensive trademark clearance report from our US trademark search experts

• A phone meeting to discuss the likelihood of and strategies for your application’s success.

Here’s an example why: If you run a search for the proposed trademark ‘NIRKE’ using a competitor’s free online search tool, or even on the USPTO website, the results will show a false negative “0 Results.” Now, imagine you relied on this exact-match ‘pre-screen’ and launched a shoe/clothing brand under the name NIRKE. Big legal problems could ensue when Nike sends you a nasty letter! Suddenly, that ‘free search’ has cost you big money!

If you wish to stop the application process before filing with the USPTO, you will still receive an expertly drafted application that you can then carry forward with your new trademark. We can also counsel you on choosing a trademark to avoid conflicts.

To be certain that your trademark is available (and to avoid potential conflicts), a pre-filing search should be conducted to locate any existing trademarks that are similar to yours and used for similar products and/or services. Any search other than a full comprehensive trademark search could miss significant conflicts that could cost you a lot of money down the road.

Our comprehensive trademark search includes:

• Active and inactive trademark records;

• All relevant classes of products and services;

• Common law conflicts;

• Web-based sources(e.g. Internet search, industry publications);

• Domain names;

• Social media usernames and profile URLs.

We typically deliver our comprehensive trademark search results within 5 to 7 business days.

If a search report reveals a conflict with your proposed trademark, we will always offer a phone meeting to discuss the issue and suggest potential strategies for success.

As long as you continue to use your trademark, you don’t need to do anything else to maintain the registration until five years after the registration date. You will need to file maintenance documents and pay additional fees between the fifth and sixth years after your mark is registered, and between the ninth and tenth years after your mark is registered. After that, you’ll need to file maintenance documents and fees every ten years. Heirlume does not offer trademark maintenance services. You are responsible for keeping track of your renewal dates and filing the correct documents and fees at those times. You can access more information about registration maintenance documents on the CIPO's website.

A substantive refusal is a complex objection. A USPTO examining attorney may issue a substantive refusal if they consider your trademark to be: 

• too similar to a pre-existing pending or registered trademark; 

•  descriptive of the products and/or services; 

• misdescriptive of the products and/or services to the point of deception.

Yes, you usually can. We developed our Essentials service because we believe you can easily handle the majority of issues raised in office actions from the USPTO without professional assistance. The possible exceptions are three objections which may require substantive responses: 

• too similar to a pre-existing pending or registered trademark;

• descriptive of the products and/or services; 

• misdescriptive of the products and/or services to the point of deception.

If your application is opposed, you might need a trademark attorney. Oppositions are complicated and much like court proceedings, are best handled by an attorney. If you need help to respond to an opposition, please contact us for an attorney referral: +1-888-366-6595, heirlume@heirlumeco.com

If you don’t respond to an Office Action by the deadline, your trademark application will be abandoned. You can restart the processing of your application if you file a petition to revive the application (which requires additional fees with the USPTO) within two months of the date the Notice of Abandonment issued. After that time, your only option is to file a new trademark application.

Office Actions may be issued for procedural or substantive reasons. Procedural issues include requests to further clarify your products or services or to disclaim a descriptive word in your trademark (which just means you aren’t trying to claim exclusive use to that word).  Substantive issues include objections based on your trademark being too similar to a pre-existing trademark registration or being purely descriptive of your products or services. 

A USPTO examining attorney will examine your application to ensure that it complies with US trademark standards and does not conflict with any pre-existing applications or registrations. If your application does not have any issues, they will approve it for publication, which is the next step towards gaining a trademark registration. If any procedural or substantive issues are identified, the examining attorney will send you an Office Action explaining the issues. At that point, you can either respond and try to resolve the issues, or abandon the application by not responding. The USPTO has highly detailed interactive timelines of the trademark application and registration process on its website that provide a more in-depth discussion of each step of the process. If you’re applying for a trademark you’re already using, you likely applied under a 1(a) use filing basis and should consult the 1(a) timeline.  If you’re applying for a trademark you aren’t using yet, you likely applied under a 1(b) intent to use filing basis and should consult the 1(b) timeline . 

The USPTO will send you a Notice of Publication after your trademark application successfully passes examination. The notice informs you that your application will be published in the Trademark Official Gazette, a weekly online publication, for opposition purposes. This publication gives advance notice to others that the USPTO has approved your trademark for registration. Within 30 days of the publication date, third parties can file an opposition to your trademark. Oppositions are rare. If you get one, you will need to hire an attorney to handle it for you. Heirlume will happily give you an attorney referral if you require one.

As part of the registration process, the USPTO will publish your trademark application in the Trademark Official Gazette, a weekly online publication, for opposition purposes. This publication gives advance notice to others that the USPTO has approved your trademark for registration. Within 30 days of the publication date, third parties can file an opposition to your trademark. Oppositions are rare. If you get one, you will need to hire an attorney to handle it for you. Heirlume will happily give you an attorney referral if you require one.

In the past, the USPTO has examined applications within 3-4 months of the initial filing. However, the trademark office is currently very backlogged with applications. As a result,  an examining attorney is unlikely to review your application until at least 5-6 months after filing.

An Office Action is a written notice issued by a USPTO examining attorney that outlines any procedural or substantive issues with your application. The Office Action lists the examining attorney’s concerns, what is required to resolve them, and the deadline to respond. You have six months to address the issues raised.

The final decision about US trademark registration is made by the USPTO. It can take 12 to 14 months after filing to receive a final decision on your application. For that reason, if the USPTO has refused your application, we cannot provide a refund.

Your application gives you priority rights from the day you file the application. Its presence on the Trademark Registry gives you protection against similar marks that are filed after yours.

A ‘trademark opposition’ occurs when someone formally opposes your trademark application. After approving your application, but before registering your trademark, the USPTO will publish your application for a 30-day  period to give others a chance to object. Anyone (such as a competitor) can oppose your application during this window by filing a Opposition and paying the government fee. Oppositions are rare. If you get one, you will need to hire an attorney to handle it for you. Heirlume will happily give you an attorney referral if you require one.

It is generally not possible to get an extension of time to respond to an Office Action (unless certain exceptional circumstances can be demonstrated). So, it’s crucial that you note the response deadline in your personal calendar and give yourself plenty of time to prepare and file your response.

A likelihood of confusion may exist between two trademarks if they look or sound alike, suggest similar ideas, and are used to sell similar products or services. This may cause consumers to be confused as to the source of the products and services. A trademark that is likely to be confused with an existing trademark will receive a refusal from the USPTO and may be blocked from registration.

Yes. A procedural issue is usually resolved by filing a response that clarifies and amends the application as required by the examining attorney. A substantive refusal may require legal arguments and evidence to overcome. 

If your application receives a substantive refusal, you may first try to resolve the concern by speaking with the examiner over the phone. In some cases, a refusal may be withdrawn simply by making a minor adjustment to the application. However, if a substantive response is required, you will need to hire an attorney to handle it for you. Heirlume will happily give you an attorney referral if you require one.

Your Certificate of Registration means your trademark has been successfully registered with the USPTO. Registration grants you the exclusive right, nationwide, to use your trademark in association with the registered products and/or services.

You will need to file maintenance documents and pay additional fees between the fifth and sixth years after your mark is registered, and between the ninth and tenth years after your mark is registered. After that, you will need to file renewal documents every ten years. Heirlume does not offer trademark maintenance services. You are responsible for keeping track of your renewal dates and filing the correct documents and fees at those times. You can access more information about registration maintenance documents on the USPTO's website

A US trademark registration can potentially last indefinitely, as long as you continue to use the trademark and file the appropriate maintenance documents.  You will need to file maintenance documents and pay additional fees between the fifth and sixth years after your mark is registered, and between the ninth and tenth years after your mark is registered. After that, you will need to file renewal documents every ten years.

Our flat fee for preparing and filing a substantive response is $850 plus tax.

No. You do not need an attorney to renew your trademark registration. You can renew your trademark registration online simply by using the USPTO’s website.

The trademark registration process in the US typically takes 12 to 14 months for straightforward applications.

No. Renewal of your trademark registration is not included in our fees.

Unfortunately, there is no mechanism for expediting the registration process. The best way to ensure the fastest processing time is to hire an experienced, reputable trademark attorney. A perfectly filed application will help to streamline the examination process.

A ‘descriptive’ trademark means it describes the character or quality of the products and/or services listed in the application (for example, trying to trademark ‘creamy’ for ice cream or ‘juicy’ for apples). Descriptive trademarks are generally not registrable because it would be unfair to competitors to give one business a monopoly on common dictionary words used to describe the products or services of that industry.

Fewer than 5% of our trademark applications involve oppositions.

Fewer than 5% of our trademark applications involve substantive refusals.

Opposition proceedings involve filing legal arguments and evidence, and conducting cross-examinations all within strict deadlines. They are much like court proceedings but are instead held before the Trademarks Opposition Board (TMOB).

Many trademark oppositions are resolved in the early stages by the parties negotiating mutually agreeable terms, such as excluding conflicting products or services from a trademark application or agreeing to certain limitations on trademark use. Because oppositions can get complicated (and costly), most parties are motivated settle quickly and amicably.

If the TMOB rules in favour of the opposing party, your trademark application could be completely or partially refused.

Yes. If an opposition ruling goes against you, can file an appeal with the Federal Court of Canada.

The applications seems straightforward. Can’t I just file it myself?While you can file a trademark application without expert help, the reality is that over 80% of self-filed trademark applications fail to protect or fail completely. Even the most minor mistake can result in a delay or a refusal. A properly filed application is crucial to successful trademark registration. The USPTO does not recommend self-filing and neither do we.

In large law firms, trademark applications are too often handled by junior attorneys and ‘supervised’ by senior attorneys. Our philosophy is different: no juniors, only senior-level experts who’ve worked as trademark examining attorneys with the USPTO.

Our AI technology offers unparalleled accuracy by reducing the human error common with manual lawyer processes. Heirlume delivers the highest quality trademark registration available on the market - better than even the best lawyers. Our experts are all licensed, registered practitioners. Heirlume is a member of the International Trademark Association (INTA), adherent to United States Patent and Trademark Office (USPTO) and World Intellectual Property Office (WIPO) standards.

Filing a trademark application can be a costly and complicated process, especially if your application is rejected or challenged. A professionally crafted and filed application can mean the difference between sailing through examination and receiving objections that can delay registration and increase your costs. When you hire us to help, you can count on getting the job done right.

We have handled thousands of applications and our success rate is very high.

While we cannot guarantee success, we can guarantee expertise – and our expertise almost always results in success. The reality is, the ultimate decision about your trademark application is made by the USPTO.

You can use your first application to claim priority rights in your trademark if you file a specific type of international trademark application within six months of filing your US application. This ‘priority claim’ allows you to retain your first rights in your trademark in the other countries you filed in based on the filing date of your first application. For example, if you filed your first trademark application in the United States, but also want protection in Canada, you can claim the advantage of the earlier filing date of your US application in Canada as long as you file within six months of the first application’s filing. Note: Heirlume is only offering trademark application services in the United States and Canada at this time. You will need to secure other trademark counsel to pursue trademark registrations in other countries.

You can use the ® symbol beside your trademark only after it is registered and receives an official registration number and date. From that point onward, you can mark your trademark with the ® symbol (instead of the ™ symbol).

The ™ symbol simply indicates that you are claiming your mark as a trademark. You are legally able to use a ™ with your mark at any point in the trademark application process.

No. Any individual, organization, business, trade union or association may apply to register their mark. However, if you initially file under your personal name and later wish to change the owner to be your company, you will need to prepare and file assignment paperwork with the USPTO to officially transfer ownership of the application/registration. Assignments can get highly technical. You’ll generally need an attorney to prepare an assignment. Heirlume is happy to provide you an attorney referral if you need one.

A trade name or registered business name is the official name under which an individual or organization uses to conduct their business. These names are usually found on a business’s government registrations or licenses. A trademark is the unique word, design, or combination of elements that an individual or organization uses to distinguish their business in the marketplace and to identify their products and/or services. This is how a consumer will find and identify the products and/or services they wish to purchase. As an example, U.S. Microsoft Corporation is a registered business name, while Microsoft is a trademark.

Before looking at international trademark protection, you should first apply to register your trademark in the United States. Registering in the United States first will give you stronger grounds for registration in other countries. Note: Heirlume is only offering trademark application services in the United States and Canada at this time. You will need to secure other trademark counsel to pursue trademark registrations in other countries.

In a nutshell, a trademark is a word, design, or combination of elements used with products and services to identify the source of those products/services. This ensures that a company’s customers can find and rely on its products/services.

Trademarks are more valuable than domain names. In fact, trademark ownership is required to truly own a domain name.

Registered trademark rights are protected by the Trademark Act and valid and enforceable nationwide. They give the trademark owner exclusive rights and anyone seeking to challenge the registration carries the burden of proving the trademark invalid. Unregistered trademark rights are governed by common law and are limited to the specific geographical area (city, town, region) in which the trademark is used. To enforce unregistered rights, the owner must prove that their trademark has gained significant goodwill and reputation in that geographical area over time. It is very difficult and expensive to enforce a common law trademark, and most common law owners involved in a trademark dispute end up giving up their rights altogether simply because it is too expensive to go to court.

‘USPTO’ stands for the United States Patent and Trademark Office. Trademark applications in the US are filed, examined, registered, and renewed with the USPTO.

Wrong. Simply registering a domain name does not make it a trademark. The domain name is still subject to infringement under trademark law. Under law, domains are ‘borrowed.’ This means that if there were a domain dispute, the owner of the associated trademark rights will gain a transfer of the domain.

Trademarks can be registered worldwide via the Madrid International Trademark System offered by the World Intellectual Property Organization (WIPO). There are over 100 countries that currently offer trademark protection under the Madrid System. You can select specific countries, or you can choose to protect your trademark in all applicable countries. For most of our clients, the Madrid System is far too expensive – it can cost tens of thousands in processing fees to register a trademark with the WIPO.

To be certain that your trademark is available (and to avoid potential conflicts), a pre-filing search should be conducted in each country where registration is desired to locate any existing trademarks that are similar to yours and used for similar products and/or services. Any search other than a full comprehensive trademark search (proper lawyer search) is risky.

A brand identity consists of three components that can be registered with the government: brand name, logo and tagline. Each component requires a separate trademark application. Word-based applications should be preceded by a trademark search to ensure your brand elements are unique within your market and business sector.

If you can only afford to register one component of your brand, we recommend protecting your name over protecting your logo design. Keep in mind that when more than one application is ordered at the same time (for example: Name + Logo) you get a discounted rate.

A priority claim is made by listing the country, application number, and filing date of the first application for the same trademark for substantially the same products and/or services.