The Trademark Application Process
The Trademark Application Process at the USPTO
An important starting point in the trademark application process is to make sure that trademark protection is right for you and that your trademark qualifies for registration with the United States Patent and Trademark Office (USPTO). After evaluating the most appropriate option for your intellectual property (i.e., patent vs. trademark), and you have determined a trademark would be the most beneficial option, you will be ready to take the first step in applying for a trademark.
Whether you already have already chosen your trademark, or are still in the process of developing one, you will want to make sure your mark is federally registrable and legally protected. Your trademark attorney can advise you on meeting these trademark qualifications, as well as developing a strong trademark. A strong trademark is one that is either inherently distinctive, fanciful or coined, arbitrary, or possibly suggestive in distinguishing your product or good from others in the market. Again, your trademark attorney can advise you if you are uncertain if your trademark is a strong one.
Before beginning the trademark application process, we will utilize a trademark database to conduct a preliminary search and analysis of the trademark. Once we have completed this preliminary search and analysis for your trademark, and you’ve given us the green light to start the trademark application process, we’ll prepare and file your trademark application.
To begin, we will need to gather all of the relevant information from you, including information about ownership of the trademark (will you own it, or should your business own it?) and details about the trademark itself. We will need to determine whether you have already begun using the trademark, and if you have, if that use has been in interstate commerce (a requirement for federal trademark registration). Below is a more in depth look at what you can expect from each step of the process:
Step 1: Preparation and Filing
After you have selected a trademark, we will determine your trademark format. There are three types of trademark formats: a standard character trademark, a stylized/design trademark, or a sound trademark. A standard character trademark grants protection to the wording itself, without regard to the font, style, size, or color. This means that you can change or update how you portray the wording over the life of the trademark. A stylized trademark is a mark that includes special characters such as graphics, fonts, designs, and even colors, in some circumstances. A stylized trademark appears as a specific font, and a design trademark can be a composite trademark (wording combined with a design), or it can be design elements alone, like a logo.
Once the format has been determined, we will need to gather information regarding the use and ownership of the trademark. In this step we will collect information from you regarding the goods and services the trademark is intended to represent, as well as information regarding ownership of the trademark. This is perhaps the most critical step, as a trademark must be owned by the person or company utilizing or using the mark, or it will run the risk being invalidated. For example, if Joe Smith personally owns a trademark, but his business, Joe’s Joint, is using the trademark for business purposes, there is a discrepancy with who owns the mark and who is utilizing it, and there is a risk of invalidation. In addition, we will run a search in the trademark database to determine whether there is already a registered trademark that is similar in wording/design and used on related goods/services, or a business operating in the region with similar branding. Whether there is any conflicting registered trademark is determined on a sliding scale. The greater the similarity to the goods and services offered of another trademark, the less similar the wording and design have to be in order for there to be a likelihood of conflict, and vice-versa, the greater similarity to the wording or design the less related to the goods and services need to be. After we gather all necessary information and determine the likelihood of acceptance following the United States Patent and Trademark Office trademark search, we will submit your application on the United States Patent and Trademark Office website for review.
Step 2: Application Review Begins
Once the application has been submitted, the United States Patent and Trademark Office will give the application a serial number as it awaits assignment and review by an Examining Attorney with the United States Patent and Trademark Office. This will require some waiting, as the assignment typically takes several months. Once your application is assigned to an Examining Attorney, s/he will analyze your application to determine whether the application meets the minimum filing requirements. In addition, the Examining Attorney will search the United States Patent and Trademark Office trademark database for any pending application(s) or registered trademark(s) that may be confused with your trademark. This review and analysis may happen a number of days or weeks after your trademark application is assigned to the Examining Attorney.
Step 3: Letter from the United States Patent and Trademark Office
If there are certain requirements which have not yet been met, or an Examining Attorney decides that your application should not be approved, they will issue a letter, also referred to as an “Office Action,” listing objections to the application. An Office Action will give us an opportunity to file a response with the United States Patent and Trademark Office to address any issues or discrepancies with the application before a final rejection. On the other hand, if all checks out with your trademark application and the Examining Attorney does not identify any conflicting registered trademarks or pending trademark applications, the Examining Attorney will approve your trademark application for publication. (Skip to Step 5)
Step 4: Response to an Office Action
Two of the most common reasons for an Examining Attorney to send an Office Action are:
1) The Examining Attorney identifies a pending trademark application or registered trademark that, when compared with your trademark application, the Examining Attorney believes there is a likelihood of confusion between the trademarks. An Examining Attorney may find that your mark and the commercial relationship between the goods and services may be too similar to another mark already registered. An important note is that the goods and services of the other trademark do not need to be the same as your goods or services. Instead, it is sufficient that they be similar enough, such that consumers would mistakenly believe they come from the same source. For example, if you sell shampoo and share a name with a registered trademark that sells bodywash, that may be similar enough to cause confusion to a typical consumer.
2) Your trademark is determined to be “merely descriptive”. A trademark application will not be approved if the trademark is merely descriptive. A trademark is merely descriptive if it immediately describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. For example, a store that sells T-shirts cannot trademark the name “T-shirts and More,” as that would simply describe the product that is being sold.
Should the Examining Attorney issue an Office Action, your trademark attorney will craft a response addressing each and every point raised in the Office Action and argue why your trademark application should be approved.
Step 5: Approved for Publication
If the Examining Attorney approves of the application without an Office Action, or if your trademark attorney overcomes all objections in an Office Action, the trademark will be published for Opposition in the “Official Gazette,” a United States Patent and Trademark Office weekly publication. After the trademark is published in the "Official Gazette," any party who believes it may be harmed by the registration of your trademark can file an opposition to registration within 30 days from the publication. If no opposition is filed, the trademark enters the next phase of the registration process. However, you should make note that it may take several months to receive notification that your trademark has entered this next phase. Once the trademark has entered the next phase, if the trademark is based in commerce and no party files an opposition, the United States Patent and Trademark Office will register the trademark and send you a Certificate of Registration. (Skip to Step 7)
If the trademark is based on an applicant’s “intent to use,” meaning the trademark registration is meant for a product of which you have a bona fide intention of producing in the near future, the United States Patent and Trademark Office will also issue a Notice of Allowance. If you receive a Notice of Allowance for a trademark you intend to use, you will have six months to either use the trademark for the intended purpose (what you claimed the trademark to be used for in your application) or request an additional extension. Each extension lasts six months and you may only file up to five extension requests. If you make more than one extension request, you must show “ongoing efforts” to use your trademark in commerce.
Step 6: Specimen and Statement of Use
As previously mentioned in Step 5, if you receive a Notice of Allowance for an “intent to use” trademark application, you will have six months from the date you receive this Notice of Allowance to show that you are using your trademark in commerce. In order to show that you are using your trademark in commerce, we will need to file a Statement of Use.
To file a Statement of Use, we need the following information: (1) the date you first used the trademark anywhere (2) the date you first used the trademark in commerce (3) a signed declaration that you are now using the trademark in commerce for the goods and services identified in your application (4) a Specimen of Use and (5) a filing fee.
A Specimen of Use is a critical component of the Statement of Use. A Specimen of Use shows how your trademark is used in commerce in connection with your goods or services. Typical specimens are a photograph of the goods with a label, hangtag or packaging that bears your trademark, or an advertisement depicting your trademark for the services offered. The specimen will need to be submitted electronically, so we will need to have a digital photograph or copy of the specimen in JPEG or PDF format.
You should note that a Statement of Use does not guarantee your trademark will be registered. The Examining Attorney may find issues that will need to be addressed, in which case your trademark registration may be delayed. If the Examining Attorney finds no issues with your Statement of Use or specimen, s/he will then register the trademark and send you a Certificate of Registration. Do not be alarmed if you do not receive your Certificate of Registration right away. There is typically a two month wait from the date your Statement of Use is approved to the date the trademark is registered, and a number of weeks between registration of your trademark and receipt of your official trademark registration certificate. For registered trademarks of our clients, the registration certificate will be mailed to our office and we will forward it to you.
Step 7: Trademark is Registered
Congratulations! You now have a registered trademark from the United States Patent and Trademark Office. While you are now the proud owner of a registered trademark, you want to ensure that it stays that way. To keep your trademark registration “live” you must file specific maintenance documents. Failure to submit these maintenance documents will result in cancellation or expiration of the registration and you will need to submit a brand-new application to reestablish your trademark. An annual check-in on your registration should be sufficient. And of course, we are here to help you with your maintenance documents as well.
