THE FEDERAL TRADEMARK PROCESS: AN OVERVIEW
Congratulations! You’ve made the decision that a trademark is right for you and your brand. Now what? Well… now we get down to the nitty-gritty of trademarks. The federal trademark process can be overwhelming but below you will find an overview of what to expect.
Phase One: The Application Phase
1. Federal Trademark Clearance Search
First things first, select your mark. Are you seeking to protect your brand name? Your logo? Both? This step is very important. Not all intended trademarks can be registered. Examples of trademarks that are not registerable include trademarks that “merely describe” the goods or services you offer, are “confusingly similar” or cause a “likelihood of confusion” with a previously registered trademark. You will know whether your trademark is confusingly similar or conflicting with another trademark by performing a trademark clearance search.
A trademark clearance search is a thorough examination of all registered, pending and unregistered trademarks. Performing this search is the first step to the federal trademark process. In this step, you’ll find out if your desired trademark is identical or confusingly similar to another mark. Remember, trademarks protect you as a brand owner by prohibiting other people from using a same or similar trademark as yours to sell their own goods or services. Therefore, if your mark is identical or confusing similar to someone else’s mark, your mark is not registrable. The best way to avoid this issue is to perform a trademark clearance search.
2. Applying For Your Trademark
It is important to note and understand this going in: all trademark applications cost money. Not all trademark applications will be approved, but application fees are nonrefundable. The United States and Patent Office (USPTO) charges between $250 and $350 per trademark per class. The final price may increase depending upon how many international classes you apply for your trademark under.
International Classes are categories used to describe your goods or services. The USPTO requires clear and concise descriptions of all goods and services applied for. As such, each application will require a specification of class. It is important to properly identify your class. Applying under the incorrect class or otherwise misidentifying your goods or services will result in a denial from the USPTO when your specimen fails to identify the trademark being used as applied.
It is also important to submit the proper specimen with your application. The specimen is simply a sample of your trademark. A sufficient specimen would show your mark being used in commerce associated with the goods or services identified in your application. Examples of proper specimens for goods include packaging, label or tags for the goods, sales displays, webpages selling the products, etc. Proper specimens for services include ads, marketing materials, business signs, business cards, invoices, etc. Make sure you choose an appropriate specimen. Otherwise, the USPTO will issue an office action, delaying the processing of your application.
Learn how to build a stronger brand and protect it with our trademark ebook.
Phase Two: The Waiting Period
Now that your application has been submitted through USPTO’s Trademark Electronic Application System, TEAS, you are in the waiting period. Trust me, this is not a very exciting phase. You will be doing a lot of, well… waiting. You are assigned a serial number when you submit your application.You can use this number to check the status of your application at any time using the Trademark Status and Document Retrieval (TSDR) database offered by the USPTO. The TSDR will contain a record of all action taken on your application. This phase can last anywhere from six to eight months. Sometimes longer if the USPTO is overwhelmed with applications.
Phase Three: Review
The waiting period ends when your application is assigned to an examining attorney. At this time, it will move on to the review phase. The examining attorney will review your application thoroughly to make sure all trademark rules are being followed and that your desired trademark is not violating someone else’s trademark rights. If the examining attorney finds that your application is infringing upon someone else’s trademark rights or finds any other issues that need to be addressed, they will send you an official letter called an Office Action.
Phase Four: Office Action Process
If you receive an Office Action from the USPTO, that means the examining attorney found some issue within your application. It may be that you did not provide a proper specimen. It may be that your desired mark is identical or similar to another person’s mark. It may even be that your mark is too descriptive. Whatever the reason may be, you will only have six months to respond and address the problem. If you do not respond within the allotted time, your application will be abandoned. Please note, beginning in 2023, the USPTO will shorten the allowable amount of time to respond to an office action to three months, instead of six. You can request additional time to respond, for a fee of course.
Phase Five: Publication
You are officially one step closer to the finish line. You have almost conquered the federal trademark process. Exciting right? I know, but first we have additional steps to take before everything is official.
If you do not receive an Office Action, or if you overcome the objections contained within an Office Action, your trademark will be approved for publication in the Official Gazette. The Official Gazette is a publication of the USPTO which runs weekly. Once your trademark is published, parties will have 30 days to object or oppose the registration of your mark. A party that believes it would be harmed by the registration of your mark must formally oppose it within 30 days or request an extension of time to oppose. If you filed your trademark as an in use in commerce under Section1(a) and no one objects or an opposition is not successful, your mark will move on to final rev. If you filed your trademark as an intent to use in commerce under Section 1(b), you would receive a Notice of Allowance.
If you are looking to start the trademark process and feel overwhelmed and decide you need help, reach out to the Off The Mark team. Schedule a consultation where we answer your questions, assess your needs, and create a strategy specific to your business to protect your brand.
Phase Six: The Opposition Period
After publication in the Official Gazette, individuals will have 30 days to formally object to the registration of your trademark. If someone does file an opposition to your mark, the opposition will be heard during a hearing before the Trademark Trial and Appeal Board (TTAB). This phase is best handled by a trademark attorney who is familiar with TTAB proceedings. This hearing will be held before an administrative panel. Of course, you can consult an attorney if you make it to this phase. This phase is adversarial although you and the opposing party may be able to reach an agreement that suits both brands. If no opposition is filed, if an opposition is unsuccessful, or you come to an agreement with the opposing party, your application will move to a final review if you filed under an in use in commerce application or to the notice of allowance if you filed under the intent to use application.
Phase Seven: Notice of Allowance
With an intent to use trademark, the Examining Attorney will issue a Notice of Allowance approximately eight (8) weeks after the Publication phase ends. A Notice of Allowance gives the applicant six months to submit proof that the applied-for trademark is being used in commerce. If the applicant is using their trademark in commerce, meaning their goods or services are available in more than one state, the applicant will file a Statement of Use. If the applicant is not using their trademark in commerce they must request an extension. The Statement of Use, like the specimen submitted during the application phase, must show the mark being used in commerce. USPTO will review the Statement of Use and decide if it meets sufficient standards for registration. If it does, the mark will move on to registration. If it does not, the UPSTO will issue an Office Action detailing the deficiencies. If you decide that an extension of time is warranted, you may petition for such. The filing fee for either a Statement of Use or a petition for an extension of time is $125 per class. You will be allowed to file an extension every six months up to five times. When your Statement of Use is accepted you are ready for the finish line.
Phase Eight: Registration
If you make it to this phase, you deserve a dance break. Your trademark has made it to registration! Whoo-hoo! That means that your trademark is officially protected. Your trademark rights prohibit other people from using your trademark to sell their goods or services. Within two months the final review of in-use applications, the USPTO will issue an official registration certificate. Within 2 weeks of an acceptance of your Statement of Use, the USPTO will issue an official registration certificate. Barring unforeseen circumstances, you’re officially OFFICIAL! However, don’t lose sight. Registration is only the beginning. Now that you are protected you must be diligent in keeping would-be infringers off of your trademark. You must also maintain your registration with USPTO. Failure to maintain your trademark will result in it being canceled or expired. If that happens, you’ll have to start all over. Unless the federal trademark process excites you that much, it’s probably best to avoid having to do that.
Come back next month when we discuss the post-registration process.