Our Proprietary E5 Trademark System
Protecting your brands starts with clarity about trademark application and enforcement options.
You know deep inside that your brand names, slogans and logos have the potential to clearly reach your customers and separate you from your competition. You know that registered trademarks will increase your sales, and with it, you’ll find joy and enjoy the financial rewards that a unique market presence brings. But, like most business owners and managers of growing businesses, you probably barely know where to start.
That’s why I created the E5 Trademark System, and the Quickstart Package — to get you started the right way. They’re like trail-maps that show you where to go, what’s next, and how long it will take to get there. (Of course, if you need more than a trademark, it just so happens that we do more than just filing trademarks with the E5 Trademark System. If this describes you, you will want to check out this link to learn more.)
The E5 Trademark System takes a five-step approach to getting and enforcing your trademarks, and breaks down as:
Enroll and Educate
Evaluate
Equip
Examine
Enforce
Of course, there’s more to it than five “easy” steps (a lot more), because each step has many facets and may take you down many branches.
So, I suggest starting your journey at Step 1, where you’ll learn more about these steps, your role in them, and how we can help.
Step 1: Enroll & Educate
Let’s get on the same page.
Time to Complete: 1-2 Days.
Just like your customers, your brand also has unique needs. In this step we educate each other.
First we learn about you, your business and the goals you have for your brand.
Second, you’ll have the opportunity to learn about trademarks and the trademark process via our proprietary video library and ‘cheat-sheets.’
You’re busy.
Too busy to worry about slaving through a 400+ page book about how to file for a trademark on your own.
After all, you have a business to run – employees, contractors, suppliers, and customers who need your attention.
You remember lessons learned long-ago, so you know the first time (or second) you try your hand at a new skill — like reading, riding a bike, or catching a ball — it just never goes as planned.
Remember experimenting “that time” shortly after you started your business, when you tried to file you own taxes, or government form, or corporate report? How’d that go? Was it frustrating? Maybe you even hit a bump along the way — or maybe it didn’t go well at all. But, it made your business street-smart.
If this is a little like you, you’re not alone — it’s how most of our customers describe their journey.
Now, you probably want to know:
- is your lawyer registered by The US Pat. and Trademark Office? (we are, but most lawyers are NOT)
- when is the right time to file for a federal trademark?
- can you protect a name, brand, logo or combination?
- what’s the cost & how long does it take to get a trademark?
- how do you use a trademark on packaging and literature?
- how do you avoid infringing the marks of competitors?
- what do you do when someone — such as an ex-employee — uses your mark?
- why does it sometimes take several trademark applications to protect just one brand (LinkedIn has over 50!)?
- how fast can you get started?
- can we help you be proactive with protecting your brands?
- and, much more . . .
Similarly, you don’t want:
- to spend an arm and a leg;
- to be talked-down to;
- to worry about “how” your trademark application is coming along;
- to talk to strangers located on another continent (what do they know about US Law anyway?); and
- long waits, just to be training fodder for a young associate.
In short, you want your business to be respected and for you to be treated like the person — like the business professional — you are.
After all, you’re business is going places, and you can’t afford for your brands to be left behind.
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.
Just click the button below to begin.
No Cost or Obligation.
STEP #2 Evaluate
We’ll use trademark searches to craft a plan.
Time to Complete: 2-7 Days.
Second, we cut-through the lawyer-speak and outline your options in plain English. When finished, you will have explored what we call “the Two Big Questions”:
1. Can You Even Use It? and
2. Can You Own the Rights to It?
When finished, you’ll also have a plan for going forward.
You’re smart.
You know better than to jump into water before testing its depth.
You know to test soil before laying a foundation or planting a garden.
You know not to cut corners — after all, it’s just going to cost more in the long run.
And you know that being smart about your name, slogan and logos is critical to your business’s long-term success.
But, you have a business to run.
And too little time to research the hundreds (if not thousands) of similar marks that are being used by competitors and businesses in completely different industries on the other side of the word. How does it all play out anyway?
Every day, we help businesses like yours navigate the minefield and morass that is the state of trademark law today.
At this stage, you must determine:
- what types of marks impact your name, slogan or logo?
- if another business across the state or on the other side of the globe is using a similar name, how does it impact you?
- what’s a common law search?
- how do you find state-registered trademarks?
- is a business name or DBA a type of trademark?
- how can there be 100 similar marks in use in the USA?
- how do social media impact trademarks?
- how do corporate brand programs affect trademarks?
and, much more . . .
Similarly, you don’t want:
- to be mislead into thinking you’re protected if you’re not;
- to pay for the wrong kind of trademark search;
- to worry about social media “hijacks” of your marks;
- to learn you can’t use a brand on Amazon; or
- to unwind the trademark search-results hairball all by yourself.
After all, you’re business is going places, and you can’t afford for your brands to be carelessly mishandled.
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.
Just click the button below to begin.
No Cost or Obligation.
STEP #3: Equip
Putting your plan into action.
Time to Complete: 2+ Days.
Third, upon the approval of your plan, we’ll implement it, which typically begins with filing trademark applications.
It may also include an Amazon Branding program, or Shopify Branding program.
If you have immediate needs for enforcement or take-down notices, we begin those options as well.
You love it when a plan comes together.
This step, “Equip” is where the work and time you’ve put in get put into action. Now, your trademark applications are filed.
Because you have a business to run.
Every day, you see customers face the consequences of misunderstanding the directions, or of misusing your product or service. So do we.
That’s why you want a team behind you — a team that has the experience of successfully filing hundreds of trademark applications.
We’ll help you gather the proper product, label, or advertising samples that are required to register your mark. And we know how to describe your marks and your samples to protect what you’re entitled to.
At this stage, you want a partner you can trust to:
- select the proper class(es);
- steer you away from possible lawsuits;
- file in the name of the proper owner (it might not be who you think);
- identify any missing parts before the form is submitted; &
- verify the Trademark Office received the proper forms.
and, much more . . .
Similarly, you don’t want to:
- be left on your own to figure out what the Trademark Office will (and will not) accept as a “proper description”;
- pay for the wrong kind of trademark application;
- select the wrong description of goods or services (which could result in your mark being cancelled);
- be surprised to learn that a “service desk” in a foreign country is filing your application; or
- discover that your trademark lawyer is NOT Registered to Practice in front of the US Pat. and Trademark Office.
After all, you’re business is going places, and you can’t afford for your brands to be carelessly mishandled by amateurs.
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.
Just click the button below to begin.
No Cost or Obligation.
STEP #4: Examine
Making sure everything is as it should be.
Time to Complete: 9 – 24 Months.
In the Fourth Step, the Trademark Office and the public examine your trademark application.
It begins with a Trademark Office examination by an Examining Attorney (the “EA”). The EA will register rejections and objections in one or more letters called Office Actions. You must respond to these correctly to keep your application alive. Once (and if) the EA believes that your application is in order, it is Published.
Next, the public has the opportunity to examine your mark by lodging an “Opposition” to your mark’s registration. Here’s where preparation really pays off, because carelessly filed trademark applications can trigger unnecessary Opposition Proceedings. And these proceedings can be lengthy, and expensive.
“It’s like watching my son play football.”
— One Client Just About to Open an Office Action
Your hopes, expectations and emotions rise and fall with every passing day. Your trademark application will soon be put to the test with a formal Examination inside — and possibly outside — the Trademark Office.
It begins with a wait. One client described it like waiting in line for a ride at Disney World: every time you think you’re about to arrive, you turn the corner into another winding room. And, kind-of like Disney, there are ways to make your trademark case “special” (literally: it’s called a “Petition to Make Special”), especially if you’ve discovered an infringer, entered a lawsuit involving your trademark, or need the US Registration to get a foreign registration. But, this is expensive and rare.
More likely, you’ll have to wait your turn to see what the Examining Attorney thinks — which usually takes nine months to a year.
The Examination and the “Office Action.” The Trademark Office will likely send a formal letter to your attorney; this letter is called an Office Action. Sometimes the Office Action refuses to register a mark for reasons that are largely formalities, such as ambiguity about an applicant or a needed “disclaimer.” At other times, the application is attacked because the description of goods or services sold (or the description of the specimen) appears to be wrong. Sometimes the specimen itself is not acceptable. Applicants without an attorney find these confusing!
The mothers of all rejections are the “likelihood of confusion” rejection and the “merely descriptive” rejection. Overcoming these often requires the proper presentation of evidence (and sometimes even more), but that’s a discussion for another day . . .
Public Examination and the “Opposition.” After the Trademark Office allows the application, but before the mark registers, the public may still challenge it by filing an “Opposition.” An Opposition is a lot like a “mini-trial” and can include gathering evidence, depositions and more. When you’re the Applicant, you want to avoid these at all costs!
At this stage, you need an attorney who:
- speaks and understands “Trademark Office” language;
- keep you informed and involved in the process;
- knows the arguments that can work, and those that won’t;
- can steer your application around unseen hurdles; and
- knows what to do next if things don’t go as planned.
And, you don’t want to:
- make guesses about how to respond — you often get just one shot;
- make statements that will hurt your application;
- submit responses that could legally endanger your business;
- miss a deadline; or
- spend $20,000+ more than you have to at a “big” law firm.
After all, you’re business is going places, and you can’t afford for your brand to stall-out and die in the Trademark Office.
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.
Just click the button below to begin.
No Cost or Obligation.
STEP #5: Enforce
Building your defenses.
Time to Complete: Ongoing for the Life of the Trademark.
Step 5 is a journey of a thousand miles.
After you have secured your trademark, under US Trademark Law, to keep it and strengthen it you must ‘police it.’ Policing is a fancy way of saying that you can’t just let anyone use your mark, and it involves four activities:
- monitoring trademark databases and the internet to spot potential infringers
- notifying the likely infringers that you have a trademark
- telling the competitor-infringers to stop using your trademark (to ‘cease and desist’)
- if necessary, litigating to force compliance with the law
Success! Your Mark is Registered.
Now, here comes the parade of knock-offs.
It’s axiomatic: the more your brands are successful, the more unsophisticated competitors are going to try to trade off of your brands.
They’ll make the mistakes you were taught to avoid in Step 1 (Educate) and Step 2 (Evaluate): specifically, they’ll try to use your brand name with a different spelling, or they’ll try to twist your slogan, or change one little thing about your logo, or the color of your packaging and call it their own.
Because you have a Registered Trademark, now you options and you’re in control. What would you like to do?
- Pull their product off Amazon (or shut their page down)?
- Take their product off Shopify?
- Send a Notice Letter, or a Cease and Desist letter?
- Shut down their website?
- See them in Court where they can explain it to the judge?
But, the power that comes with a Trademark Registration is’t easy for a novice to wield. Courts want to see proper notices, accurate cease and desist letters, and a host of other specifics before they’ll award you the money your competitor siphoned away.
That’s why you want to work with a team who’s been here before — a team that has experience in the trenches of trademark disputes.
We’ll help you gather the evidence and craft the ‘strongly worded letters’ you’ll need to enforce your mark. And, when needed, we know our way around the Courtroom.
At this stage, you want a partner you can trust to:
- design a business-minded enforcement strategy that takes into account all of your options;
- send and track proper notices;
- craft direct and compelling cease and desist letters;
- deploy your resources wisely; and
- provide wisdom-centered guidance (after all, some battles are more important than others).
and, much more . . .
Similarly, you don’t want:
- timid inaction;
- open-ended budgets;
- to unnecessarily create your own financial exposure;
- to be training fodder for a big-firm; or
- to be left clueless about what’s happening and what’s happening next.
After all, you’re business is going places, and you can’t afford for competitors to pretend they’re you!
We help businesses with owners and managers like you to get trademarks registered, and stop competitors from raiding your customers.