• Preparation and filing of U.S. trademark applications
  • Trademark oppositions and  trademark cancellations
  • Preparation and filing of state trademark applications (these are rare but are occasionally useful)
  • Prosecution of U.S. trademark applications (responding to USPTO office actions, appeals, and registration)
  • Post-issuance maintenance of registered U.S. trademarks
  • Preparation and filing of international Madrid Protocol trademark applications
  • Management of foreign trademark application filing, examination, appeals, issuance, and post-issuance maintenance through foreign counsel
  • U.S. trademark screening searches and registrability opinions
  • Foreign registrability opinions through foreign counsel
  • Preparation and filing of U.S. trademark assignments with the USPTO
  • Preparation of foreign trademark assignments and filing with foreign trademark offices through foreign counsel
  • Contractual agreements to transfer trademark rights from employees and independent contractors
  • Trademark license agreements
  • Uniform Domain-Name Dispute-Resolution Policy (UDRP) processes to protect trademark owners from those trying to register confusingly similar domain names
  • Other counsel regarding the trademark process and any issues along the way




Most trademarks are words or logos, but sounds and even scents can be registered (though there are very few registered scents).  Marks can be registered for goods (tangible things that are sold or offered) and/or for services.

The ability to federally protect your mark depends partly on the mark being "distinctive."  This means the mark does not simply describe the thing you are selling or providing.  Some terms (like "ibuprofen") are so descriptive that they are "generic" and cannot be protected in any way.  Some marks are not generic but are still descriptive enough that they cannot be federally protected.  If you try to register "Blue Suede Shoes" as a mark to sell blue shoes made of suede you would be denied federal protection on the basis that the mark merely describes what you are selling.  Descriptive marks can be registered on a "Supplemental" register which does not give you nationwide rights but prevents others from federally registering your mark and can be a good first step to federal protection.  Then, if you use your mark enough (and if others are not using the mark), your mark can become distinctive enough to merit federal protection. 

The ability to federally register your mark also depends on whether it is likely to be confused with other marks.  If consumers might confuse your mark with another mark you will be denied registration.  Furthermore, if you know of someone already using your mark or a confusingly similar mark you have an obligation to disclose this to the USPTO (and failure to do so may be considered fraud).  

For these reasons, it is best to do the following when choosing a mark: (1) pick a mark that does not merely describe your goods or services; (2)  pick a mark that is not confusingly similar to other marks already being used, and; (3) have a trademark search performed to make sure there are not other marks likely to block yours before you file.

Once your mark is registered on the "Principal Register" you will have exclusive rights in your mark throughout the U.S.

Call or text for a free consultation: 801.719.5229

The Law Office of Paul B. Johnson offers competitive rates for a wide variety of U.S. and foreign trademark services, many of which are billed on a  flat-rate basis.



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