Considering trademark registration for your brand name or logo design? A federally registered trademark is a valuable asset for your brand portfolio and your company’s bottom line. If you are seeking to register a trademark with the United States Patent and Trademark Office (USPTO), here’s an easy roadmap of what to expect, how long each step will take and how to maneuver the process as smoothly as possible.
1. Consult with a trademark attorney. Although you are not required to work with an attorney for your trademark filing, it is highly recommended to consult an experienced trademark attorney who is familiar with the trademark registration process and available to guide your application past common mistakes and potential pitfalls before the USPTO. A trademark attorney can also provide valuable insight on whether your use of a particular mark may potentially infringe someone else’s mark, or whether the mark you are considering is available for use and registration. By spotting conflicting marks and other issues early on, you will save time and money once your application is filed at the USPTO.
2. Conduct a Trademark Search. As mentioned above, one of the first steps in securing trademark protection is to determine if your proposed trademark is already in use and/or registered by someone else for similar goods or services. If the mark you would like to register is already pending or registered with the USPTO, you may need to consider changing your mark (or the goods or services offered in connection with the mark) to increase the likelihood of your application passing review at the USPTO.
3. Preparing and Filing the Application. If the trademark name or logo you want to register is available and not already in use or registered with the USPTO for similar or related goods, you should be able to proceed with the trademark application. There are several items that must be included with a completed trademark application, including: the drawing (text or graphic design) of the mark, the date of first use of the mark in commerce (if you are using the mark), information concerning the owner of the trademark, the description of goods or services offered in connection with the mark, a specimen showing how the mark is used in commerce (if in use), and the appropriate USPTO filing fee. The government filing fee is due and payable once your trademark application is filed with the USPTO.
4. Trademark Examination. Once your trademark application is completed, signed and submitted for filing, it is entered into the USPTO electronic filing system and subsequently assigned to a Trademark Examining Attorney (or Examiner). This usually occurs 3 to 4 months after the application is filed.
If the Examiner finds any issues or deficiencies in your trademark application or requires clarification on any elements of the application, he or she will notify you or your authorized trademark representative. Common issues cited by USPTO Examiners include trademark disclaimers, translations for marks containing non-English words or characters, findings of mere descriptiveness, likelihood of confusion with a prior-filed or registered trademark, or insufficient specimen, among others.
If the Examiner finds an issue with your trademark application, he or she will issue an Office Action setting forth their findings and the issues to be addressed. You generally have 6 months to file a response addressing the Examiner’s findings. If all of the issues presented in an Office Action are remedied and accepted by the Examiner, your application will proceed to publication.
5. Publication. Once your trademark application passes review, perhaps without any issues, or once all issues are resolved, the trademark will be published for public notice for 30 days. During this 30-day notice period, any interested third parties, whether they have a registered trademark or not, may file an opposition against your mark on the basis of their existing trademark rights. Likelihood of confusion and dilution are the most common causes of action in opposition proceedings. If your trademark application is not opposed during the 30-day publication period, the mark will ultimately move on to registration.
6. Registration. Following publication, if there are no other issues or oppositions filed, your mark will proceed to registration. This usually occurs within 8-12 months after the application was first filed, depending on the review process. The USPTO will issue a registration certificate showing that the trademark applicant is now the owner of a federally registered trademark.
So there you have it… a quick and easy guide to the USPTO trademark registration process. Of course, once you have a registered trademark, you have to remain diligent in monitoring your mark and protecting your registration from potential infringement.
For more information about the trademark registration process or to consult with one of our trademark attorneys about your mark, please give us a call at (800) 769-7790 or send us an email. We’re always happy to hear from you.