Once you have decided to protect your trademark, you have to register it with the US Patent and Trademark Office. The typical registration process follows four basic steps: (1) Preparing the mark for the application process; (2) Preparing and submitting the application; (3) Responding to USPTO Examining Attorney Office Action; and (4) Approval or Denial.
Prepare Your Trademark for the Application Process
Once you have determined that a trademark application is your next step, you must do the following:
- Prepare the mark for registration. If you haven’t already decided on a mark to use, this is the starting point. You will want to pick a mark that is distinguishable from other marks, strong, and protectable. You may have to kiss a lot of frogs before landing on the perfect mark for you and your goods/business. This is completely normal. Be open minded in the process and you will ultimately discover the best mark for your brand.
- Once you have determined what type of mark you want to use, you need to determine how you want the mark to look. What will the format be? Is there a drawing involved? A certain font? Not only will you want to be consistent but if your mark is going to be on mass-produced goods, you will want to also make sure that economically, it is a mark you can actually put into production. Again, you may be kissing a few more frogs here but it’s only natural.
- Next, you will want to do a search to determine that no other company or trademark holder is using a similar mark. Bellatrix PC can aid you in this process.
- After you have conducted a search and determined that your mark is not confusingly similar to other registered trademarks, you will want to determine what category of goods/services you intend to register for. Each category must be paid for separately. The amount of each category is set by the USPTO and varies depending on how you file your application. Traditionally, filing online is the cheaper option. Bellatrix PC can help you determine which categories will be best for you to seek protection under.
- Last but not least, you will want to determine what your filing basis. There are two categories – Use-in-Commerce and Intent-to-Use-in-Commerce. If your products are already on the market, then you will file a Use-in-Commerce application. If your goods or services are not on the market yet, you will file an Intent-to-Use-in-Commerce application. Our attorneys at Bellatrix PC can walk you through in detail what filing basis is best for you.
Prepare and Submit Application
Once you have finished all of the previous steps, it is time to fill out and file your application. You will want to double and triple check all information provided to the USPTO to ensure that it is completely accurate. Trademark applications can be pending for some time, so you will want to make sure you check the status online at least once a month. You will also want to ensure that all contact information is current in case the USPTO sends notices with set deadlines for a reply.
Office Actions with the USPTO Examining Attorneys
Once the USPTO determines that you have met the basic filing requirements, you application is assigned to an examining attorney. The attorney is then going to review the application with a fine-toothed comb to ensure that it complies with all statutes, rules and regulations and that it is not similar to any other marks already registered.
If issues arise, and they usually do, the examining attorney will send what is called an “Office Action.” An office action is simple a letter outlining any issues with the trademark and it provides a deadline in which to respond and/or fix the errors. These must be responded to in a timely manner or your application may be abandoned.
Approval or Denial
Once the examining attorney no longer has any objections to the trademark application, it will be published in the USPTO “Official Gazette.” Your trademark application will run for thirty days to allow for the public to object to registration.
Once publication is finished and no objections have been made, the trademark will officially be approved and registered.
Note that if you have filed an Intent-to-Use-in-Commerce application, there are some additional steps you must take before you can receive full registration.
Our sixth and final article in this series discusses how to protect your trademark so that you do not lose it.
If you are ready to get started protecting your business’s valuable intellectual property, please go to our Trademarks Packages page to start the process.