Navigating the Trademark Process

The Trademark Process

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Navigating the trademark process can be difficult and hard to understand. Whether or not filing a trademark application for federal registration is right for you and your business is an entirely different subject that I will save for an entirely different post.  If you are like me, and don’t have a lot of time to read a long post on filing trademark applications, here’s a handy infographic for you to feast your eyes on. If you like to immerse yourself in the written word, then read on my fair friend.

What are Trademarks

A trademark is any word, name, symbol, device, or any combination used to identify and distinguish the source of goods and/or services offered by their owners. Some examples of registered trademarks are: Facebook®, Google®, Ikea®

The Pre-Filing Process

Before submitting an application for trademark registration with the United States Patent and Trademark Office, or USPTO, you want to clearly have in mind the following three considerations: 1) the specific mark you want to register, 2) the types of goods and/or services you wish your mark to represent, and 3) whether you will be filing your application based on actual use or intent to use your mark. Each of these considerations can impact the overall registrability of your trademark, so it is recommended that you speak with an experienced trademark attorney to help ensure your mark has the best chance at success throughout the registration process.

Clearance Searches

To finalize which mark you wish to submit for consideration by the USPTO, you should first perform what is referred to as a clearance or “knockout” search. This involves searching the USPTO’s database of already registered and pending registrations, as well as a general search on various search engines for potentially conflicting marks at the common law level.

Choosing a Class of Goods and Services

In determining the types of goods and/or services your mark will encompass, the USPTO provides an “Acceptable Identification of Classes of Goods and Services Manual.” This manual allows applicants to search for specific classes (compiled in numerical format) that best represent the goods and/or services covered by your mark. It is important to keep in mind that you should be specific regarding selection of goods and/or services; however, you should only select those classes that you are currently using (if filing a use-based application).

Selecting the Type of Application

This takes us to selecting whether you wish to file a use-based application or an intent-to-use application. Trademark rights stem from use in the United States, not registration. Generally speaking the first to use a mark in commerce, has the right to claim priority of ownership over a particular trademark. However, those who have not yet used their marks in commerce, but wish to establish their ownership over a particular mark may file an “intent-to-use” application, or ITU. This permits an owner to file an application with the USPTO for registration and be provided an opportunity to demonstrate use of the mark in commerce after the application has already been filed.

Submitting Your Application

Once you’ve selected your final mark, you will begin the process by filing your application with the USPTO. Currently, the USPTO accepts applications through its electronic filing systems: TEAS and TEAS Plus. Each type of application has a different cost associated with it; TEAS Plus is $275 per class of goods and services and TEAS is $375 per class.

Examining Attorney Assignment

In approximately 90 days after you application is submitted, you will be assigned an Examining Attorney with the USPTO. The Examining Attorney is responsible for determining whether there are any problems with your application. These problems can be either substantive or procedural.

Office Actions

If the Examining Attorney determines that there are issues with your application, he/she will issue an “Office Action.” This is a letter detailing the various substantive and/or procedural problems with your application, and suggestions for overcoming any such issues. Upon issuance of the first Office Action, the applicant has a period of 6 months to respond timely. If the applicant fails to respond in the allotted period of time, the application will be deemed abandoned.

Publication in the Trademark Official Gazette

Assuming an applicant responds effectively to an Office Action and overcomes any cited issues with his/her application, the Examining Attorney will certify the mark for publication. On the date of publication, the mark will be published in the Trademark Official Gazette for a period of 30 days. During this period, anyone who feels they may be damaged should the mark reach registration may oppose the mark by filing an Opposition Proceeding with the Trademark Trial and Appeal Board (TTAB).

Registration

If no one opposes during the 30 day period, then a trademark registration will issue approximately 11 weeks after publication. Trademark registration takes approximately 10 months total, if no issues with the mark arise. The process can take much longer depending on whether any oppositions are filed or Office Actions issued. If an ITU (Intent to Use) application is filed, the process is the same as above; however, the USPTO will issue a Notice of Allowance for all marks not yet used in commerce seeking registration. Upon receiving a Notice of Allowance, an applicant has a period of six months to submit a Statement of Use, demonstrating use of the mark in commerce, along with a fee. If the applicant cannot yet demonstrate use in commerce, he/she may submit a written request for an extension of time within which to submit evidence of use in commerce, along with a fee. The USPTO grants extensions of time in six month intervals. The aggregate of time may not exceed 24 months total. This means, an applicant is eligible for up to 4 extensions of time to file a Statement of Use. If an applicant has exhausted all extension periods and is still unable to submit evidence of use in commerce, the application will be deemed abandoned.

Maintenance

There are certain items required by the USPTO for a registrant to submit in order to keep a trademark live. These include Sections 8 and 15 declarations of use and incontestability. These may be filed between the 5th and 6th year of registration, and every 10 years thereafter. Failure to do so will result in cancellation of your trademark.

For more information about the trademark filing process, or if you think you need help with your trademark filing, contact Kristen at TRESTLE LAW today!