Trademark Process

Step 1: Is a trademark application right for you?

Because trademarks, patents, copyrights, domain names, and company name registrations are all different, it’s crucial to understand which one is ideal for you.

Trademarks usually protect brand names and emblems used on goods and services. A Patent protects an Invention. A copyright is a legal term that refers to the legal protection of an original artistic or literary work. If you invented a new type of vacuum cleaner, you would apply for a patent to protect the invention. To protect the vacuum cleaner’s brand name, you’d file a trademark application. You might even file a copyright for the television commercial you use to promote the goods.

 A domain name is a portion of a web address that points to a website’s internet protocol address (IP address). The domain name “uspto.gov” is used in the web address “https://www.uspto.gov.” Your domain name is registered with an approved domain name registrar rather than the USPTO. A domain name is not the same as a trademark. A trademark is a symbol that distinguishes a product or service as coming from a specific source. The use of a domain name alone as part of a web address does not constitute as source-indicating trademark use, although other notable uses other than the web address may. Trademark rights are not granted by registering a domain name. Even if you register a domain name with a registrar, you maybe obliged to surrender it later if it infringes on the trademark rights of another party.

Similarly, using a business name as a source of goods or services does not automatically qualify it as a trademark, while additional uses of a company name as a source of goods or services may qualify it as both a business name and a trademark. Many states and municipal governments register business names, either as part of the application for a business license or as an assumed name filing.

Step 2: Get ready to apply

Selecting a mark

Selecting a mark is the first stage in the overall application/registration procedure once you’ve determined that the type of protection you require is, in fact, trademark protection. Because not every mark is registrable with the USPTO, this must be done with thought and care. Furthermore, not all marks are legally protectable, meaning that some marks may not be capable of being used as the basis for a legal claim by the owner to prevent others from using a similar mark on connected goods or services. Businesses and individuals who are unfamiliar with trademarks and the application/registration procedure frequently select a mark for their product or service that is difficult, if not impossible, to register and/or protect for a variety of reasons. You should think about the following things before filing a trademark/service mark application:

  • Whether the mark you want to register is registrable, and
  • How difficult it will be to protect your mark based on the strength of the mark selected.

It’s worth noting that the USPTO only registers trademarks. As the owner of the trademark, you are solely responsible for enforcement.

Type of Mark: The Mark format is divided into three categories. Only one of the following forms maybe used:

Standard Character Format: This format can be used to record words, letters, numbers, or combinations of these, without regard for typeface or formatting. A trademark in standard character format allows you to use it in any style or design.

Special Character format: If your mark contains a design element or stylized words, letters, or numerals that you want to protect, use this format. A logo, a symbol, or text in a certain font, color, or typeface, such as Apple’s apple emblem or Coca-unique Cola’s typography on its beverage cans, are examples.

A sound mark: The three-note chime for NBC, the lion’s roar for MGM, and Intel’s sequence for its Pentium chip are all examples.

A Drawing and Specimen: A drawing of your mark and a specimen of your mark are required for the trademark application.

  • Drawing: A mark drawing is a visual representation of what your mark appears like on its own, without anything else around it or tied to a product. Your drawing will consist of typed letters, numbers, or punctuation if you are asking for a trademark in standard character format. Your design will be a.jpg file depicting the mark you want to register if you are registering for a trademark in a particular character format.
  • Specimen: A specimen of your trademark demonstrates how you use it with your goods or services.

Identifying your goods or services: You must be able to identify the goods accurately or services that are linked with your trademark. You cannot modify or add extra items or services later if you make a mistake.

Trademark Filing Basis: You must select a filing method from one of four options:

  • Use in commerce
  • Intent to use
  • Foreign applications exists for the same goods and service
  • Foreign registration exists for the same goods and services

Step 3: Prepare and submit your application 

What are the requirements to obtain a filing date?

  • The name of the applicant.
  • A name and address to which the USPTO should send correspondence.
  • For design and other nontraditional marks, a clear drawing of the mark.
  • A listing of the goods and/or services that are or will be sold or offered regarding the mark.
  • The filing fee for at least one class of goods or services.

What additional requirements must all applications meet to proceed to registration?

  • Information about the applicant:If the applicant is not an individual, the type of legal entity. Citizenship, or state or country of incorporation.
  • The basis for filing.
  • A verified statement. The following persons may sign an application: (1) a person with legal authority to bind the applicant; (2) a person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant; (3) an attorney who has an actual or implied written or verbal power of attorney from the applicant.
  • For marks other than standard character word marks, a description of the mark.
  • For marks other than sound, scent, and other non-visual marks, a drawing showing the mark sought to be registered.
  • When applicable, an English translation or transliteration of any non-English words in the mark.
  • Any unpaid filing fees for additional classes.
  • The USPTO encourages foreign applicants to designate a domestic representative to receive service of notices or process.

Step 4: Work with the assigned USPTO examining attorney

USPTO reviews application

An application serial number is assigned and the application is delivered to an examining attorney when the USPTO deems that you have met the basic filing criteria. This could take several months. The examining attorney examines the application for compliance with all applicable regulations and statutes, as well as the payment of all appropriate fees. Even if the application is later refused registration on legal grounds, the filing fees will not be returned. A thorough inspection of the written application, the artwork, and any specimens is included in the comprehensive evaluation.

USPTO issues letter (office action)

 If the examining attorney concludes that a mark should not be registered, you will get a letter (office action) from the examining attorney stating any substantive reasons for denial as well as any technical or procedural flaws in the application. The examining attorney may contact you by phone or email if only minor adjustments are required.

Applicant timely responds to letter

If the examining attorney issues you an office action, you or your attorney must respond to the office action within six months of the office action’s issue date, otherwise the application will be declared abandoned.

Step 5: Receive approval/denial of your application

USPTO publishes mark

The examining attorney will approve the mark for publication in the “Official Gazette,” a weekly publication of the USPTO, if the examining attorney raises no objections to registration or if you overcome all objections. The United States Patent and Trademark Office (USPTO) will send you a notice of publication including the date of publication. After the mark is published in the “Official Gazette,” anyone who believes the mark will harm them has 30 days from the date of publication to register an opposition to registration or a request to extend the period to oppose. An opposition is analogous to a federal court case, except it is heard by the Trademark Trial and Appeal Board (TTAB), a USPTO administrative tribunal. The application moves on to the next stage of the registration process if no opposition is made or if the opposition is unsuccessful. It can take three to four months for the applicant to obtain official notification of the application’s next status once the notice of publication is sent. During this time, you should keep an eye on your application’s status via the TSDR system.

Registration certificate issues for applications based on use

If no party files an opposition or a request to extend the time to oppose and the mark is based on use in commerce, a foreign registration, or an extension of protection of an international registration to the United States under Section 66(a), the USPTO will register the mark and send the owner a certificate of registration. Following registration, the mark’s owner must file necessary maintenance paperwork to keep the registration active.

Notice of allowance issues for applications based on an intent to use the mark

If the applicant’s bona fide intention to use the mark in commerce is published, and no party submits an opposition or a request to extend the time to oppose, the USPTO will issue a notice of permission around eight weeks after the mark is published. Following that, the applicant has six months from the date of the notice of allowance to:

  • Use the mark in commerce and submit a statement of use (SOU); or
  • Request a six-month extension of time to file a statement of use (extension request).

 A notice of approval is a formal statement from the USPTO indicating that a certain mark has survived the opposition period following publication in the Official Gazette and has thus been permitted; it does not imply that the mark has yet been registered. Another stage on the route to registration is receiving a notice of authorization. Only applications with a filing basis of intent to use a mark in commerce are granted notices of allowance under Section 1 of the Trademark Act (b).

Applicant files timely statement of use or extension request

The applicant has six months from the date of mailing of the notice of allowance to file a statement of use (SOU) or a request for an extension. There is no restriction to the number of extension requests that can be made, but there is a limit to the total number of extension requests that can be submitted and the timeframe in which they must be submitted.

Applicant does not file timely statement of use or extension request

The application is abandoned (no longer pending/under consideration for approval) if the applicant does not provide a statement of use or an extension request within six months of the date the notice of authorization was issued. The applicant must file a petition to resuscitate the application within two months after the date of abandonment in order to continue the application procedure.

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USPTO reviews statement of use

Before an examining attorney may properly analyse a statement of use (SOU), it must meet certain filing criteria. If the SOU meets the basic filing criteria, it is reviewed by an examining attorney to see if it is eligible for registration. Registration is not guaranteed by submitting a SOU. Even if the SOU/application is later refused registration on legal grounds, you cannot withdraw the SOU and the filing fee(s) will not be returned. The examining attorney authorises the SOU if no refusals or extra requirements are found.

If the examining attorney determines that refusals or requirements must be met, you will get a letter (office action) detailing the refusals/requirements. If the examining attorney determines that legal requirements must be completed before the mark can be published, this is the same process that occurs before the mark may be published. The process and timelines remain the same, with the exception that if all objections are resolved and the statement of use is approved, the USPTO will issue a registration within two months. The application will be abandoned if all issues are not resolved.

Applicant’s response fails to overcome all objections

The reviewing attorney will issue a final denial office action if your response does not overcome all objections. If you disagree with the final denial, you can appeal the decision to the TTAB for a fee.

Step 6:Maintain your registration 

Registration certificate issues

The USPTO issues a registration typically two months after the SOU is accepted. The registrant must file required maintenance paperwork to keep the registration “alive.” Failure to file these required documents will result in the registration being cancelled and/or expiring. If your registration is cancelled or expires, your only choice is to submit a new application and start the process again from the beginning. When you submit a new application, the fact that your mark was previously registered does not guarantee registration.

Monitoring registration status

 Even after your mark is registered, you should use the Trademark Status and Document Retrieval (TSDR) system to check on the status of your registration on an annual basis. Check the status of your registration after making any of the filings required to keep your registration alive, such as between the fifth and sixth years after the registration date and between the ninth and tenth years after the registration date.

Registrant address and email address

Maintaining and updating your address, including your email address, is crucial.

Protecting your rights

Because the USPTO does not “monitor” the use of marks, you are responsible for enforcing your rights if you acquire a registration. While the USPTO makes every effort to ensure that no other party obtains a federal registration for an identical or similar mark for or as applied to related goods/services, the holder of a registration is responsible for taking any legal action necessary to prevent an infringing mark from being used. If a right holder believes a registered mark is being infringed upon or may be infringed against in the future, the registered mark can be recorded with US Customs and Border Protection’s e-Recordation application.

 

Step 1: Is a trademark application right for you?
Step 2: Get ready to apply
Step 3: Prepare and submit your application
Step 4: Work with the assigned USPTO examining attorney
Step 5: Receive approval/denial of your application
Step 6: Maintain your registration