Step 3: Equip in The E5 Trademark Process

Step 3 of the E5 Trademark System is “Equip” and equip means going ahead and filing the applications that you prepared by using the information discovered in Steps 1 and 2 (in particular Step 2 – the searches).  So, Equip includes a few actions, and the first action will be filing for a federal trademark registration perhaps.  And to do this you’ll need to decide what classes you’re going to file in the description of the mark itself.  The description of the goods and services identified by that mark. Samples of that mark used in commerce,  as well as evidence of distinctiveness for some marks, in particular for what we call “design registrations.” 

Another action you may take in the equip step is to file for a state registration.  Now state registrations are less common than a federal registration because they only cover one state, and they’re about the same price [as a Federal Registration].  However, in some circumstances — particularly where we may discover a lot of common-law uses of marks in other states — then a state registration where you’re using the mark [the state] may make a lot of sense.  The third action in the Equip step is a clearance opinion.

So, depending on what you discover in that evaluation step (the second step) you may determine that a clearance opinion (and by the way a clearance opinion just says hey we found these other marks out there and we took a look at them and because our the goods we’re selling or…different or the services we’re providing or different or channels of sells or different or the mark is not likely to cause confusion for some reason). What you’ve done is for some reason [you find] you’ve said [to the world] “well, you’re clear to use the mark in commerce.” And if you look at these actions you’ll notice that filing for the registrations goes way back to the beginning and we address these as “bucket two questions” [meaning] the question of “can I protect the mark?” The idea of the clearance opinion goes back to that “bucket one question” — “can I actually use the mark in commerce?”  

So you notice that there are all these little pieces to doing this, and so I’ll close with this caveat because I saw a comment in one of the videos earlier.  And that’s the question of “what about flat-rate services for trademarks?” Well, we do quote flat rates once we get to this [Equip] step.

 That is executing the Equip Step based on what you need.  

But anybody and any service that tells you that they can flat rate this part of the process without thoroughly going through Step 1 and in particular Step 2 (the evaluation step) is either setting you up for an “oh we just discovered something — we can’t honor that price” moment. Or, they’re going to cut some serious corners. So I just wanted to address that question because I see so many people come through my office because they’ve used some of these cheap flat rate services. And cutting corners has resulted in rejections. that’s going to be the topic of the next video in the E5 Trademark System: Step 4, the Examination step.


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