Registering a Trademark in the United States Patent and Trademark Office
Below is a brief and general summary of the typical process involved to register a trademark in the United States Patent and Trademark Office (“USPTO”). There are a variety of marks and there are two registers, a Principle Register and Supplemental Register, upon which marks can be registered. Therefore, please keep in mind that an application to register your specific mark may involve a different process. The following is offered to give you a general overview of the process not specific advice on how to prepare an application.
Clearance Search
Although it is not required by the USPTO, we generally recommend conducting a search of existing marks before filing an application to register a mark in the USPTO. A preliminary search of the existing USPTO records to determine whether anyone else is using the same or similar mark can be done fairly quickly online. If the preliminary search does not reveal any conflicting marks, then you should also consider retaining a professional search firm to conduct a more formal and thorough search. Skipping a formal search by a professional search firm will save time and money in the short term but you will run the risk that someone else is already using the same or similar mark. In the United States, ownership rights in trademarks attach when someone starts to use the mark on goods or services being offered for sale. Even if you obtain a USPTO registration, a prior user who has not registered a mark can still claim ownership rights and even possibly cancel your USPTO registration based on that person’s pre-existing common law rights. Registration helps to strengthen an owner’s trademark rights but does not create them.
USPTO Application
Once you decide to file an application, you will need to provide information about the applicant (whether you are filing as an individual or a company, name, address, etc.). You will need to identify the mark. You can often use a “typed” drawing but if you have a logo or design elements then you will need a drawing of the mark. You will also need to describe the goods and/or services that will be associated with your use of the mark. The USPTO has various “classes” of goods and services and the USPTO application filing fee varies depending on the number of classes in which you wish to register your mark. If you have started using your mark you will also need the date of first use within your state and in “commerce” regulated by the United States. You will also have to provide a specimen of your use of the mark. The specimen can be a photograph that shows how your mark has been applied to your goods/services. If you have not started using the mark then the application will have to be filed as an “intent-to-use” application which means that while you are not currently using the mark you have an honest intent to begin using the mark on the goods/services described in your application within the near future.
We generally file USPTO applications electronically. The USPTO filing fees vary based on paper versus electronic filing and other factors. A typical mid-range filing fee for one mark in one class of goods/services is $325. The USPTO filing fee does not include the Firm’s fee for preparing your application.
Once your application is filed it will be assigned to a USPTO Trademark Attorney who will review your application to determine whether it is complete and to determine whether your mark qualifies for registration. While reviewing applications Trademark Attorneys frequently identify issues that will need to be addressed, or the Trademark Attorney may reject an application because, in the Trademark Attorney’s view, the mark conflicts with on one or more pre-existing marks. The Trademark Attorney will send a formal Office Action to the applicant (or the applicant’s attorney) describing any issues the Trademark Attorney has identified. Often, but not always, an application can be amended to resolve the Trademark Attorney’s issues. You generally have up to six months to respond to an Office Action. If the Trademark Attorney is satisfied that the amendment resolve all of the issues, then the application will proceed. If the Trademark Attorney believes that the amendment or argument presented in the applicant’s response does not resolve all the issues, then the Trademark Attorney will issue a second Office Action. Depending on the issues, which can be simple or complex, and depending on how you may want to deal with them, there can be several Office Actions and responses. However, generally there are two Office Actions and responses, and if the issue remains unresolved then there are subsequent means of dealing with the issues including an appeal to the Trademark Trial and Appeal Board.
Publication for Opposition
After the Trademark Attorney has decided that your mark can be registered, the USPTO publishes the mark in its “Official Gazette” for a 30-day opposition period. This gives others who own trademarks an opportunity to object to your registration by filing an “opposition” to your application. The opponent must have a pre-existing registration or must be able to show prior use of the same or similar mark in connection with the same or similar goods/services. An opposition proceeding is the equivalent of a mini trial at the USPTO, if you choose to fight it.
Registration
After your application clears the publication period without opposition (or if opposed and you win), your mark is then approved for registration. If you filed an “intent-to-use” application, then the USPTO will issue a “Notice of Allowance” which states that the mark has been cleared for registration but that you still must use the mark on the goods/services before the mark can be registered. Once you commence use of the mark, then you can file a declaration of use of the mark along with a specimen showing proper use of the mark. If the Trademark Attorney accepts your declaration of use, then your mark will be registered.
Post-Registration Filings
After your mark is registered you must continue using the mark to keep your registration. Between the fifth and sixth anniversary dates of your registration, you will be required to make a subsequent filing informing the USPTO that you are in fact still using the mark. Also, registrations must be renewed every ten years.
Enforcement of Rights
Your USPTO registration will be of great benefit to you if you need to enforce your trademark rights. However, please understand that the USPTO will not take any enforcement action to stop others from using a mark that infringes your mark. Trademark owners are always responsible for taking steps to enforce their rights in their respective marks.
If you have any questions, please feel free to contact us. We will be happy to discuss them with you.