Trademark Filing Steps

STEPS TO FILING FOR A TRADEMARK?

If you wish to protect your trademark, now is the time to register it. This post will lead you through the steps of applying for federal trademark registration, highlighting the instances where working with a trademark attorney, whether in Seattle or abroad, can be beneficial.

SEARCH & CLEAR THE TRADEMARK

Before you file for trademark protection, you must first ensure that your mark may be registered. This includes looking for individuals who may have already registered a similar mark and determining whether your mark fits the other conditions for registration with the US Patent and Trademark Office (USPTO).

PREPARE THE TRADEMARK APPLICATION

The Principle Register

It’s usually a good idea to apply for registration on the USPTO’s Principle Register first. Principle Register offers the most protection to the trademark owner, including a presumption that the trademark is valid, that the registrant owns the mark, and that the registrant has the exclusive right to use the mark. However, to be eligible for registration on Principle Register, your mark must meet specific standards, so conduct your research or contact a lawyer before applying.

The Bases for Filing

Your trademark application must be based on either
(1) use in commerce or
(2) intent to use in the future.

A use-based application signifies that you’ve already been using the mark in commerce or in connection with the goods and services listed in the application at the time of filing. It is worth noting that your use of the mark must have been done in the usual course of business and not solely for the goal of reserving trademark rights. You will have successfully registered your mark if your use-based application is accepted.

An intent to use application indicates that you have not yet used the mark but have an actual intent to do so in the future. If your application for intent to use is accepted, the USPTO will issue a Notice of Allowance. At that point, you’ll need to present documentation (along with an Amendment to Allege Use or a Statement of Use) demonstrating that you’ve used the mark in commerce or in connection with the products and services indicated in your application to properly register your mark.

Tip: If you used the mark in your application for one of the goods or services but not for another, you should indicate which reason for filing covers which specific goods and services. For example, if you’d previously used the mark “STRTCH” to sell therapeutic bands but hadn’t yet used it to provide physical therapy services, you’d claim use for selling bands but intend to use it for PT services.

The Contents of the Application

To be deemed complete, your trademark application must include the following information:

The name and address of the applicant: The applicant must be the registered owner of the trademark. For example, if a corporation owns the trademark, the corporation should be the applicant.
The applicant’s legal entity type and citizenship: Corporations, partnerships, and limited liability companies are all examples of this.
Full name and address (for correspondence): This should be the information of the person or legal representative who will communicate with the USPTO about the application.
A drawing of the mark: If the mark you want to register is simply a word or phrase with no design element, it is considered a conventional character mark, and you will only need to put in the letters of the word or phrase. (Tip: registering a standard character design provides the most protection for a mark because it can be presented in a variety of ways while still being protected.) If the mark contains one or more design features, such as a specific color, style, or font, it is not considered a conventional character mark, and you must supply a representation of the mark that faithfully depicts the design components. (Tip: if you want to register a sound mark you should submit an audio clip of the sound).
The mark’s description: If your mark is not a normal character mark, such as one with design components, color, or sound, you simply need to offer a description. Your description should not be too long, but it should be thorough in detailing the important aspects of your mark.
A list of the goods and services that the application covers: You must list each good and/or service with which the mark is or will be associated. While you may want to include as many goods as possible to have the broadest possible protection, bear in mind that filing fees are based on the number of classes in the application, so your application can quickly become quite expensive. Once you’ve decided which elements to include, make sure to describe them succinctly yet precisely. The use of imprecise terminology (e.g., “accessories”), open-ended terms (e.g., “such as”), and too technical terms are all common issues here. (Tip: The Trademark ID Manual of the USPTO offers samples of terminology that has been accepted for specific categories of goods and services.)
The international classifications of goods and services: Goods and services are classified into 45 categories. It’s a good idea to designate one or more of these classes to each of your separate goods and services, as failure to do so may cause your application to be delayed. Remember that the more classes you choose, the more you’ll spend, because filing fees are computed depending on the number of classes in the application. (Tip: Determining which categories of goods and services you are qualified for is often a task that an attorney may assist you with.)
The dates of the mark’s first use, as well as a specimen of the mark’s use: This is only necessary for use-based apps. Include the date the mark was first used. Then, submit a specimen—typically, images of the mark—demonstrating its use in connection with your goods/services. If you sell items, you may include a label with the mark; if you offer services, you could add a page from your website with the mark and a reference to the service you offer.
A statement or declaration that has been confirmed: Either the applicant or an authorized agent must date and sign a declaration, which essentially attests to the veracity of the application presented.
The mandatory fee: The charge will vary depending on the type of application and the number of classes included in your application. Your filing fee will be at least $225, but it might be substantially higher if you have multiple classes of goods and services.

After you’ve finished these steps, you should be ready to submit your application.

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FILE THE TRADEMARK APPLICATION

You will use the Trademark Electronic Application System to file online (TEAS). The TEAS offers two filing options: Plus, and Standard (formerly known as “RF”).

1. TEAS Plus: The Plus application option is the cheapest at $250 for submitting in a single class, but it has more prerequisites. To qualify for Plus filing, the applicant must provide all of the material listed under “The Contents of The Application” previously on this page. With the Plus application, you must select a description of your goods and services from a predefined list, which may be beneficial for inexperienced candidates but may be overly restrictive for others.

2. TEAS Standard: The Standard application option is more expensive than the Plus option, costing $350 for filing in a single class. The Standard application, on the other hand, allows you to construct a bespoke description of your goods and services, which is an important feature for some applicants.

Confirm Filing & Monitor Status

If your application is accepted, the USPTO will send you a receipt summarising the information you provided. Check to ensure that all of the information is right.

Your application will also be assigned a serial number. You can use this number to track the status of your application by visiting the Trademark Status and Document Retrieval page. There’s no need to check the status of your application regularly but do check in every few months to ensure everything is in order.

Respond To Office Actions

When the USPTO receives your application, it will be assigned to an “examining attorney,” who will review it. This process can take up to 6 months. If the reviewing attorney discovers any problems with the application, he or she will issue an “office action” that denies registration and explains why.

The Mark Is Published

If the examining attorney approves your application, it will be published in the USPTO’s Official Gazette, an online publication, for 30 days. During this time, any party may object to the registration of the mark if it feels it will be harmed if it is registered. If an opposition is submitted, a court-like hearing is held to resolve the matter.

If no opposition is lodged, the USPTO will register the mark and issue you a certificate of registration if you submitted a use-based application. Keep in mind that registration may take many months after the publication period has ended. If you submitted an intent to use the application, the USPTO will issue a Notice of Allowance, which will require you to present evidence of use of the mark in commerce.

Submit A Statement of Use

If you receive a Notice of Allowance, you must file a statement of use, along with evidence that you’ve used the mark, within six months. Along with the statement of usage, you must pay a filing fee of $100.

Tip: If you haven’t used the mark by the time your statement of use is due, you can request a 6-month extension. You can do this up to five times in total, but you must pay a $125 filing fee for each extension request.

If the examining attorney approves the statement of use, the mark will be registered and a registration certificate will be provided. This can take several months, so don’t be concerned if you don’t receive your registration certificate straight away

Maintain Your Trademark Registration

Last but not least, make sure you keep your registration current or you risk losing it. This entails submitting certain paperwork and paying fees every sixth and tenth year.

You must file a Declaration of Continued Use, together with a current “specimen” of use, every sixth and tenth year.

Furthermore, every ten years, you must file a Renewal Application, also known as a Renewal Application.

NUTSHELL

A number of steps in drafting and submitting a trademark application can be completed without the assistance of a trademark attorney. However, if you’re inexperienced with the system, it might take a long time to gather, arrange, format, and submit all of the necessary information.

Furthermore, there are several steps, such as identifying and precisely describing classifications of products and services, that are relatively technical and hence more difficult for a non-lawyer to get right the first time. And if you are served with an office action, it might be difficult to reply effectively without the assistance of a lawyer.

If you need assistance drafting a trademark application, or if you’ve already started but are stuck throughout the submission process, you can contact Brealant Inc. for advice from a trademark attorney.

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