By: Serena Minott, Minott Gore PA
Are you considering trademark registration for your brand name, logo or slogan? Here’s a simple, step-by-step guide to the trademarking process before the U.S. Patent and Trademark Office (USPTO).
The Trademark Application
Once your comprehensive trademark search has been completed and shows that your proposed mark is available for use and registration, we begin the federal trademark registration process by preparing the trademark application form. The application includes the name and contact details of the trademark owner, the mark proposed for registration (including any graphics, if registration is sought for a logo design), a description of the goods and/or services offered in connection with the trademark, and a specimen showing how the mark is used in commerce. If the mark is not yet in use, the application must be filed as an Intent to Use mark and include a declaration that the applicant intends to use the trademark in the near future.
Once the trademark application is prepared, you have an opportunity to review, approve and sign it. We then file the application with the USPTO and the applicable government filing fees are due at this time.
At The Trademark Office
Once filed, your trademark application is assigned to an Examiner for formal review within 2-3 months. The USPTO examines the application to make sure that it complies with the administrative requirements or formalities for registration (i.e., whether the application fee has been paid and the application form meets the minimum filing requirements).
The trademark Examiner also conducts a substantive review to determine whether the application and trademark comply with all the substantive requirements of registration (e.g., whether the trademark is in conflict with an existing mark in the relevant class(es), whether the description of goods or services is too broad or vague, whether the application specimen properly shows the trademark in use). If the application meets the basic and substantive review requirements, the Examiner will allow the application to be published in the USPTO Official Gazette for public notice.
If the Examiner finds any issues, deficiencies or conflicts with the trademark application, the Examiner will issue an Office Action stating the basis of his or her findings and provisionally refuse or suspend registration of the mark pending the applicant’s response to the Office Action. Office Actions are a fairly standard part of the registration process and the applicant is permitted six (6) months within which to file a timely response.
Publication and Opposition
Once the application passes the Examiner’s review, the trademark is published in the Official Gazette for a period of 30 days. During this publication period, any party (whether they own a registered trademark or not) may oppose the application on the grounds of their own prior use of the mark, a likelihood of confusion with their trademark, or any other basis. If an opposition is filed against the application, the registration process is effectively paused pending the outcome of the opposition proceeding.
If the USPTO finds that there are no grounds for refusal and the application is not opposed, the trademark will proceed to registration and a Certificate of Registration will be issued. A registered trademark is valid for a term of 10 years. The entire process, from application to registration takes between 8-12 months, but you establish your priority date by filing your application with the USPTO as early as possible. If your application was filed as an Intent to Use mark, the USPTO will issue a Notice of Allowance (NOA), which is a provisional approval of the trademark application. Following the NOA, the applicant must file a Statement of Use showing the mark being used in commerce, or file a Request for Extension of Time to make use of the mark. If the Statement of Use is timely filed and accepted, the mark will proceed to full registration.
Your trademark registration is good for 10 years and may be renewed indefinitely by paying the required renewal fees. The first renewal is due between the 5th and 6th year following the registration date. The second renewal is due between the 9th and 10th year following registration. Your registration may be canceled for failure to file these required renewals, or if another party files a petition to cancel your mark based on non-use.
So there you have it – a simple, no hassle guide to the trademark registration process. Keep in mind the trademarking process can be very complicated and there are many potential risks along the way. If you need additional information or assistance with the trademark registration process, please contact one of our experienced Flat Fee trademark attorneys at (800) 769-7790 or via email.
About Serena Minott
Serena Minott is an attorney-entrepreneur based in Miami, Florida. She is the co-founder of FlatFeeTrademark.com and Minott Gore, P.A., a business and intellectual property law firm. Serena assists entrepreneurs and small business owners in navigating the legal landscape of starting and operating successful organizations. You may reach her at email@example.com.