What to Expect When You Want to Apply for a Trademark

Rosenthal IP LAW

While DIY projects have their place, some endeavors are better left to the professionals. Sure, you can tackle changing out the wallpaper from your downstairs ½ bathroom yourself, but when it comes to adding a full bath off your master bedroom, you know it’s over your head and time to call the builders.

 

With the multitude of online resources and videos available, you may be tempted to handle some business projects yourself. Protecting your intellectual property, your carefully birthed idea, is a different story - it deserves the knowledgeable and experienced care of an attorney. Step away from that DIY website, shut off the YouTube videos and start the process of interviewing the professionals.

 

There are many rules and processes and timelines involved with applying for, defending, and receiving a trademark. An important part of my job is not only to protect your creation, but also support you, your time, and your resources, when there is even a hint of a dispute. The unexpected pitfalls of failing to adhere to every nuanced rule can create extra work and frustration, setting you back when you could have easily been on your way to securing the rights by using the know-how of an experienced Intellectual Property Attorney.

 

What Happens When You Apply for a Federal Trademark Registration?

Your request to register a name or phrase as a trademark must go under an examination by the US Patent and Trademark Office which will scrutinize it for certain criteria. At any time, the trademark office could refuse your request because of

·     the way you’ve described it,

·     the name it was filed under, or

·     if they deem it too similar to an application or registration filed before yours.

 

Even if someone hasn’t registered the trademark, but they have been using the name longer than you have, they may have prior rights.

 

My job and goal as an IP attorney is to protect your best interests, using resources that you likely don’t have access to. Without professional support and proficiency on your side, you may very well get sent back to the drawing board, at a time when you were hoping to secure your trademark before someone else comes along with a similar development. Simply put, getting the upper hand during this window of time may make or break the success of your idea.


What if the USPTO Declines My Application for a Trademark?

As a DIY warrior, you’re stuck in the mud. An IP attorney knows the process and can strategize with you on creative ways for you to achieve a successful outcome.

 

It all starts at the beginning - as your IP Attorney, I will

·     Ensure that I understand what aspects of your idea are worthy of a trademark or similar protection.

·     Help you understand all the details involved in the application process to avoid misunderstandings.

·     File your application completely and accurately as it defines your unique product or service.

·     Handle responses from the application process and advise you on how to proceed.

 

What Are Some Details to Know When Applying for a Trademark?

One of the first hurdles is: did someone already take that name? We’ll look into whether that name is already in use, if it’s already trademarked, and where and how it’s being used. In some cases, the same company name can be used for completely different products or services and there’s no danger of infringement. I’ll bet you’ve never confused Dove® soap with Dove® chocolate.   

 

Another component in getting an approval is a bona fide reason for the use of a word or phrase associated with your idea. For example, when the Washington Commanders football team wanted to change their name from the “Redskins”, some people tried to jump the gun with the intent to profit by registering possible new names. Since they didn’t have a legitimate intent to start a football team, it was deemed fraudulent, and their attempts to trademark their submissions were turned down. If I was working with someone who tried to do this, I would have saved them a significant amount of time and trouble by explaining the likely result.

 

Disputes? Don’t Go it Alone

I’m here to advise you on what to do if other trademark owners accuse you of infringing on their trademark, or if you were to discover that others were trying to infringe on your trademark. Without professional legal support, it’s your legal responsibility to monitor and protect your trademark from any infringement issues that may arise in the future. There are quite a few intricate technical details involved in trademark law – it’s not something you can fly through easily on your own.

 

Trying to tackle this all yourself is made more difficult by the fact that the US Patent and Trademark Office cannot give you legal advice the way a personal patent attorney can. Why miss out on the opportunity for success? Let’s meet for an initial consult.

 

 

5 Common Trademark Mistakes Small Businesses Make (and How to Avoid Them)

By Larry Rosenthal • September 23, 2026
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Trademark Infringement: What to Do If Another Business Uses Your Brand Name

By Larry Rosenthal • September 14, 2026
Say you run a coffee shop called "Morning Ritual," and then a new café across town opens up as "Morning Rituals." Customers start mixing the two up online, tagging the wrong shop in reviews, showing up at the wrong location for a promotion you never ran. That mix-up isn't just annoying; it's the exact kind of consumer confusion trademark law exists to prevent. The question is what to actually do about it, and that depends on getting a few things right before you pick up the phone. Step One: Make Sure It's Actually Infringement Not every similar name is a legal problem. Before doing anything else, it's worth asking: Does the other mark sound, look, or read similarly to yours? Is it being used for the same or related goods and services? Would a typical customer plausibly confuse the two? If those answers point toward "yes," you likely have a legitimate case. If the businesses operate in unrelated industries, or serve genuinely separate markets, there may be no infringement at all, and pursuing it burns time and legal fees for nothing. Build Your Record First Once you're confident it's a real conflict, start collecting proof before reaching out: screenshots of their website, social posts, packaging, or ads, etc. Make sure you record the date you captured the evidence and save it. If this ends up going further than a polite email, you'll want that record intact. (If you think this might go to court, an attorney should forensically capture this information.) The Cease-and-Desist Letter Comes Next This is the standard opening move in nearly every trademark dispute. A good cease-and-desist letter identifies your registered mark, explains specifically why the other party's use creates a problem, and requests that they stop, typically within a set timeframe. Keep the tone firm but professional rather than combative. It's entirely possible the other business had no idea your mark existed when they picked their name, and a measured letter resolves more disputes than an aggressive one. Attorneys generally draft these rather than business owners doing it solo, mostly because getting the legal language and scope right matters if the letter ends up as evidence later. If the Letter Doesn't Land Sometimes it works. Sometimes it's ignored entirely. When that happens, litigation becomes the real option. To win a trademark infringement suit, you typically need to establish three things: that you hold a valid registered mark or are otherwise the Senior User (i.e., have earlier rights in the trademark than the other party), that the other party is using an identical or confusingly similar mark on similar goods or services, and that the use is actually causing confusion or diluting your brand’s distinctiveness. Courts don’t take a plaintiff’s word for that confusion, either. They apply structured, multi-factor tests to evaluate it. The Second Circuit's approach, first laid out in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) , weighs things like the strength of your mark, how similar the two marks actually are, how close the products or services sit to each other, and any evidence of real-world confusion among customers. Most circuits apply some version of this multi-factor analysis, and while the specific factors shift slightly by jurisdiction, the underlying question stays the same everywhere: would a reasonable consumer actually be confused? What Winning Actually Gets You If a court sides with you, the most common outcome is an injunction, a binding order requiring the other business to stop using the mark. Depending on how the infringement happened and how deliberate it was, courts can also award financial damages covering lost profits and possibly legal costs, and in cases involving outright counterfeiting, criminal penalties can come into play too. Know When to Let It Go Worth remembering: some overlap genuinely isn't infringement. Comparative advertising and legitimate news reporting can qualify for fair use protection, and two businesses with similar names in clearly distinct markets sometimes just coexist without either side having a real claim against the other. If you're staring down a name conflict and can't tell whether it's worth pursuing, that's exactly the kind of question worth getting a real answer to before spending money on a letter or a lawsuit. Contact Rosenthal IP Law today to schedule a consultation, and let's figure out where you actually stand.
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The Hidden Cost of Waiting Too Long to Register Your Trademark

By Larry Rosenthal • August 28, 2026
I often hear a common refrain: “I've been using this name for years, and nobody’s said anything, so I’m probably fine.” I understand that logic. But eventually, I get a phone call from that same business owner, and it is rarely a happy one. Another situation companies face is where they wait too long to file an application to register their trademark, only to find out that another company (that started using the same or a similar trademark at a later date) already filed an application. Common Law Rights Only Get You So Far Using a trademark does grant what are known as common law trademark rights. The problem is that these rights are geographically limited; they only protect you in the specific market where you’ve been doing business, not across the entire country. A federal registration with the USPTO provides a presumption of nationwide priority, the right to use the ® symbol instead of just ™, and a much stronger position in case of a dispute. While waiting to register a trademark does not negate your common law rights, it does leave the door open for someone else to claim rights in that same or a similar trademark elsewhere. What This Actually Costs You Filing a federal trademark application costs a few hundred dollars per product or service. This is a small price compared to the expenses of a forced rebrand, which includes new signage, packaging, and marketing, as well as the awkward task of explaining the name change to existing customers. Additionally, legal expenses incurred from responding to cease-and-desist letters can turn into an expensive procrastination habit. There’s also a quieter cost that often goes unbudgeted: lost search rankings, decreased web traffic, and a weaker position when trying to address copycat issues online. An unregistered mark leaves you with far fewer tools for enforcement. Your Filing Date Is Your Friend Here’s an unexpected advantage: your legal priority is established on the day you file, not when you receive the registration certificate (which can take 12 months or more, given USPTO timelines). Filing locks in your position in line nationwide. Generally, everyone who files after you is already behind you, registration or no registration. Therefore, it’s legally counterproductive to say, “I’ll wait until things calm down.” Don’t Let “Later” Become “Too Late” If a trademark registration is on your to-do list alongside “organize the garage,” I recommend moving it to the top of your priority list. Filing early is cheaper, stronger, and considerably less dramatic than waiting. If you’re a business owner seeking a trademark attorney or are currently involved in a dispute, Rosenthal IP Law is a trademark law firm that handles these matters daily, including application filings, oppositions, cancellations, and everything in between. Contact Rosenthal IP Law today to schedule a consultation on registering your trademark before someone else acts first, leaving you in a weaker position.