How to Apply for a Trademark

15 Oct How to Apply for a Trademark

Many small and creative businesses are interested in trademarking their business name or logo. While it may seem like a daunting task and does take some time (approximately six months without any bumps in the road), registering a trademark is something that can be done relatively smoothly with the support of an experienced lawyer.

The Application Rundown

The U.S. Patent and Trademark Office (USPTO) oversees the application process, and they have some set procedures. To prepare an application, your lawyer will need to know several items:

1. The name and address of the person or entity who will be owning the trademark. The trademark owners can be one or more individuals, one or more companies, or a combination of individuals and companies.
2. If the owner is a company, you’ll need to state the type of company (corporation, LLC, partnership) and the state where the company was formed and registered.
3. You will need to know if you want to register just the words of the potential trademark, a logo, or a combination of words and logo. Registering just words offers flexibility for future logo designs and changes, but registering a logo often increases the chances of registration since the presence of more elements increases the uniqueness of a trademark.
4. Your application will either be filed as “in commerce” or “intent-to-use.” Should your product or service already be operating in the market, you will provide the corresponding dates and proof that your product or service is available to the public. Your lawyer will ask for “specimens,” which are photos or screenshots of your product/service on a live webpage, brochure, etc. If you have not officially launched your trademark, you will file as “intent-to-use,” meaning that you are not selling yet, but plan to within the next 3 to 18 months.
5. You will consult with your lawyer to determine the classification of goods and services for the trademark. Each trademarked item must be connected to a good or service description that is in the USPTO system. The USPTO uses a series of International Classifications (agreed to by treaty among nearly all nations) to classify goods. It is possible to have a similar trademark with another entity, but the goods or services must be different so that consumers would not confuse different products or companies. So long as the product or service is clearly in a different field, the two similar trademarks may coexist.
6. The international classifications are important because registration fees are calculated based on the number of international classes the trademark will have. The application fee is non-refundable and ranges from $225-$275 per international class based on a couple of technical factors. Depending on your trademark you could register it in one international class, or in several.

Trademark Application Timeline

Those are the basics for the application. The timing of the applications looks largely like this:

Pre-Registration

Gather all the necessary items above, any logo images, or other specimens. Consult with the lawyer about your goods and services description. The lawyer may need to do some searches to eliminate easily found potential conflicts. This work can be done in less than a day in many cases.

Day 1

Application Day. The application is submitted and the non-refundable fee is paid to the USPTO.

Day 90 (Approx.)

The USPTO begins its review. The review is usually pretty short, can be less than a day or as long as a week depending on the nature of the proposed trademark. The USPTO Examining Attorney will determine if the proposed trademark meets all the requirements for registration. If the application meets all the requirements, it will proceed to the next stage of registration. If the application is deficient in some way; the Examining Attorney may either communicate informally if the deficiencies are relatively minor needing only clarification or the Examining Attorney may issue a formal Office Action which describes the deficiencies requiring a formal response (read more below).

Day 120 (Approx.)

Assuming the Examining Attorney has not issued an Office Action, the proposed trademark will be published for opposition by anyone who might be harmed or damaged by registration of the trademark.

Day 150 (Approx.)

If nobody opposes the trademark, then the mark will proceed to the final registration process.

Day 180 (Approx.)

Congratulations! Assuming nothing arises in the previous steps, you would be fully registered and get your registration certificate in the mail.

What is an Office Action?

Sometimes after submitting a trademark application, the trademark office responds with something called an “office action.” This office action means that there is an issue with the trademark that needs to be addressed. A wide variety of items can trigger a non-final office action, ranging from minor matters such as needing clarification of a statement, needing to address some problems with the images we submitted, or needing to change the description of goods. More complicated issues could range from a mismatch between the trademark and the specimen submitted to a potential refusal to register. An office action is a bump in the road, but it is relatively common and not something to worry too much about.

In some cases an office action is sent when there is a conflicting trademark that may cause confusion with another trademark. When that happens, the USPTO sends an office action explaining their legal reasoning why they believe there is a likelihood of confusion among the trademarks. While this action increases the complexity of a response to the office action, it is not always a death sentence for your application. In many cases, we can make a successful argument for registration by making a counterargument. The counter-argument might be successful, in which case the application will continue in the process.

If the argument is unsuccessful, we can appeal that decision to the Trademark Trial and Appeal Board. Of course, all of this means some expense. Sometimes, the cost to rebrand would be cheaper than the cost to fight on an appeal.

What is the Opposition Period?

The publication of the mark begins a 30-day clock in which someone who believes registration of your trademark may negatively impact their business or interests can oppose registration. An affected person must file an opposition with the Patent & Trademark Office within the 30-day window. A person can also file an extension of the time of up to 90 days to respond if necessary. If no one files an opposition or an extension within the first 30 days, your application will then proceed to the final registration process.

Keeping Track of your Trademark

Once your trademark is officially approved and yours, you will need to keep track of it! The trademark must be renewed five years later and regularly thereafter. But as long as the trademark is continuously used in commerce, your trademark never expires. Your lawyer will be prepared to contact you on day one of year five of your trademark, and you have that full year to submit the required paperwork.

Should you have any questions on the trademark process, you can contact us any time here.