TL;DR (In short): Navigate the complex trademark application process with confidence. The Law Office of Tammy M. Holcomb handles every aspect of USPTO trademark applications, from initial filing through final registration, ensuring your application meets all requirements and maximizes approval chances.
Complex Legal Requirements
Trademark applications require precise legal language, proper classification systems, and detailed descriptions that meet USPTO standards. Small mistakes can result in:
●Application rejections and delays
●Weakened trademark protection
●Vulnerability to challenges
●Additional filing fees and costs
Strategic Filing Decisions
Experienced trademark attorneys make critical decisions that affect your long-term brand protection:
●Class Selection: Choosing the right international classes for current and future business plans
●Description Drafting: Crafting descriptions that provide broad protection without triggering rejections
●Specimen Selection: Selecting examples of trademark use that demonstrate proper commercial use
●Filing Basis: Determining whether to file based on current use or intent to use
Maximizing Approval Chances
Professional application preparation significantly improves your chances of approval by:
●Avoiding common filing mistakes that trigger office actions
●Anticipating examiner concerns and addressing them proactively
●Using strategic language that meets USPTO requirements
●Positioning your mark for the strongest possible protection
Pre-Filing Consultation
Before preparing your application, we conduct thorough consultations to:
●Understand your business goals and expansion plansIdentify all goods and services requiring protection
●Develop optimal filing strategy and timeline
●Address any concerns from trademark search results
●We discuss your business, intended trademark use, and specific industries or geographic markets where conflicts might arise.
Application Drafting and Preparation
Our detailed application preparation includes:
Trademark Classification Analysis
●Selecting appropriate international classes for your goods/services
●Ensuring comprehensive coverage of current and planned business activities
●Optimizing class selection for cost-effectiveness and broad protection
Goods and Services Description
●Drafting precise descriptions that meet USPTO acceptability standards
●Avoiding overly broad language that triggers rejections
●Including specific items while maintaining flexibility for business growth
Specimen Preparation
●Selecting specimens that demonstrate proper trademark use in commerce
●Ensuring specimens meet USPTO requirements for your specific goods/services
●Preparing backup specimens in case primary specimens are rejected
USPTO Filing and Monitoring
●Electronic filing through the USPTO's TEAS system
●Confirmation of filing receipt and application serial number
●Ongoing monitoring of application status and deadlines
●Prompt notification of any USPTO actions or requirements
More than half of trademark applications receive office actions from USPTO examiners. We handle all types of office actions, including:
Substantive Rejections
Likelihood of Confusion: When examiners cite conflicting marks, we prepare detailed arguments addressing differences in marks, goods/services, and target markets.
Descriptiveness Rejections: For marks considered merely descriptive, we argue distinctiveness or prepare evidence of acquired distinctiveness.
Specimen Rejections: When specimens don't meet requirements, we work with clients to obtain acceptable specimens and provide legal arguments.
Technical Requirements
Identification Issues: Clarifying or amending goods/services descriptions to meet USPTO acceptability standards.
Classification Problems: Addressing incorrect class assignments or additional class requirements.
Formality Issues: Correcting technical deficiencies in application filing or documentation.
Our Office Action Response Process
1. Thorough Analysis: We carefully review each office action and assess all examiner requirements and deadlines.
2. Strategic Planning: Develop comprehensive response strategy addressing all issues while preserving maximum trademark protection.
3. Evidence Gathering: Collect necessary evidence, specimens, or documentation to support our legal arguments.
4. Response Preparation: Draft detailed legal responses with supporting evidence and legal precedent.
5. Client Communication: Explain examiner concerns and our response strategy in clear, understandable terms.
After examiner approval, your trademark enters the publication phase:
Publication for Opposition
Your mark is published in the USPTO's Official Gazette for 30 days, allowing third parties to oppose registration.
Opposition Monitoring
We monitor for potential opposition filings and notify you immediately of any challenges to your application.
Opposition Defense
If opposition proceedings are filed, we provide experienced defense representation through the USPTO's Trademark Trial and Appeal Board.
Extension Requests
When needed, we handle extension requests to provide additional time for resolution of opposition issues.
For businesses planning global expansion, we coordinate international trademark filings:
Madrid Protocol Applications
●Preparing international applications through the Madrid system
●Managing multi-country filing strategy and deadlines
●Coordinating with foreign trademark attorneys when needed
Direct Foreign Filing
●Evaluating when direct filing in foreign countries provides better protection
●Managing filing deadlines and priority claims across multiple jurisdictions
●Coordinating with qualified foreign counsel in target countries
Use in Commerce
For marks already being used commercially:
●Documenting proper trademark use for each class of goods/services
●Preparing acceptable specimens showing trademark use
●Managing dates of first use requirements
Intent to Use
For marks not yet in commercial use:
●Strategic planning for future trademark use
●Managing Statement of Use requirements and deadlines
●Coordinating with business launch plans and marketing strategies
Foreign Priority Claims
For businesses with foreign trademark applications:
●Claiming priority from foreign applications within six months
●Managing documentation requirements for priority claims
●Coordinating with foreign trademark attorneys for necessary certifications
Most applications take 8-12 months from filing to registration, depending on USPTO workload and whether office actions are issued. Applications receiving office actions may take 12-18 months.
Rejections aren't final. We can file responses addressing examiner concerns, provide additional evidence, or argue why registration should be granted. Many initially rejected applications ultimately succeed with proper legal response.
While legally possible, trademark law is complex and small mistakes can be costly. Professional preparation significantly improves approval chances and provides stronger long-term protection.
Our flat-fee trademark application services include our firm’s professional legal services and USPTO fees for filing and additional trademark classes.. Our services include application preparation, filing, and first office action response if needed.
Opposition proceedings are like mini-trials before the USPTO. We provide experienced representation throughout opposition proceedings, from initial response through final decision.
You cannot expand the scope of goods/services after filing, but you can file additional applications for new products or services as your business grows.
Trademark registration is just the beginning. We help clients maintain their trademarks through:
Section 8 and 9 Renewals
●Managing 5-year renewal deadlines and requirements
●Preparing evidence of continued use in commerce
●Coordinating renewal filings to maintain continuous protection
Section 15 Incontestability
●Filing for incontestable status when eligible
●Understanding benefits and limitations of incontestable registration
●Strategic timing for incontestability filings
10-Year Renewals
●Managing ongoing 10-year renewal cycles
●Updating registrations for business changes or expansions
●Ensuring continuous trademark protection throughout business lifecycle
Experience and Expertise
Years of experience preparing successful trademark applications across diverse industries and business types.
Personal Attention
Unlike high-volume firms, we provide personalized service with direct attorney involvement throughout the application process.
Transparent Pricing
Flat-fee pricing with no hidden costs or surprise hourly billing for routine application services.
Responsive Communication
Regular updates on application status and prompt responses to your questions throughout the process.
Long-Term Relationship
We build lasting relationships with clients, providing ongoing trademark advice as businesses grow and evolve.
Ready to protect your brand with a professionally prepared trademark application? The application phase is where your trademark strategy becomes legally enforceable rights.
Contact The Law Office of Tammy M. Holcomb today to begin your trademark application process. Call or text us at 678-665-9885 or contact us online for a free consultation about your trademark application needs.
Professional trademark application services for Georgia and New York businesses. Let us handle the complexity while you focus on building your brand.
