What is the E5 Trademark System?

E5 stands for the five steps that you need to learn in order to understand how to both use and protect the brands that are important to you.  E5 stands for (1) Enroll, (2) Evaluate, (3) Equip, (4) Examine, and (5) Enforce.

Enroll simply means that you commit to educating yourself. I suggest signing up for our Facebook group, (called “Ask a Trademark Lawyer”). Visit our YouTube channel by the same name, download our eBook, look at the help sheets that are on the Facebook page and this YouTube channel — as well as the outlines that we provide there — and sign up for our email list.  The emails are specifically designed to deliver information to you in bite-sized chunks and in the order that our clients tell us is the easiest and fastest to understand this process.

The second step in E5 is to Evaluate the brand that you want to use or protect.  This means conducting the trademark searches that need to be done, and then going over the results with you, so you’ll understand the context.

The third step is to Equip yourself. Equip means preparing opinions and filing the proper trademark applications — whether for state registration or federal registration or otherwise. For example [of ‘other applications’]: international applications, perhaps through the Berne Convention or Madrid Protocol.

The fourth step is to Examine your mark.  Now, that’s not what we do [that’s what the TM Office does!], although we assist you in this process. Examination takes place first in the trademark office — and it breaks into two steps.  The first part of the Examination is when a trademark examining attorney at the trademark office looks over your application, and they can make a number of rejections based on all kinds of factors that we’ll go through in other videos.  What’s important for now is how we respond to those rejections because rejections are quite common in trademark applications.  The second step in the Examination process is a publication and opposition that occurs by the public.  So, the Trademark Office publishes your application, and then the public can come in and comment on and examine/oppose your application within the Trademark Office as well (although that’s much less common [than “rejections” by the TM Office].

The fifth step in the E5 process is to Enforce the rights that you have. This typically involves monitoring for other uses by people that are infringing your mark; and so, we call it Monitoring, sending Notices when appropriate to the people that you discover who are infringing your mark; and if those get ignored, sending Cease and Desist letters. And, then another step in the  Enforcement process which is much less common than the others, although it does happen, is Litigation. And so sometimes you have to litigate to enforce your rights.