Trademark Application Process (In Use)
+ STEP ONE: A COMPREHENSIVE SEARCH BY A TRADEMARK ATTORNEY
Generally, the most successful path to trademark registration begins with a comprehensive search performed by a knowledgeable trademark attorney.
I cannot stress enough how important your trademark search is. The trademark search is the foundation of your entire trademark registration.
The simple fact is that not every trademark is eligible to be registered.
Do you know where to search, and more importantly do you know what to search for, and what those search results mean?
+ STEP TWO: FILLING OUT THE APPLICATION
After selecting a trademark, and determining the correct class of goods/services that your mark will be used in, an application is submitted to the USPTO for review.
Each step of the application has the potential for oversight and common errors. However, even a slight error or oversight can result in a delay or denial of your application, and potentially additional costs.
This is why form-mills or Legal DIY services like LegalZoom will never be able to compare themselves with legal advice from a knowledgeable trademark attorney.
+ STEP THREE: APPLICATION REVIEW
Once you submit your application it can take approximately three months for an examining attorney from the trademark office to be assigned to your application.
The examining attorney will then review your application. The review is a very in depth process. It includes an analysis of whether your application is complete and all required information and fees have been submitted.
A determination is then made on whether your trademark is eligible for registration based on federal law and a search is conducted for conflicts.
+ STEP FOUR: A FORK IN THE ROAD
Below are the two most common scenarios in simplest terms.
(1) LAND ON GO
If the examining attorney at the trademark office determines that your application meets all of the requirements for registration and that no conflicts exist, your mark will be approved for publication in the Official Gazette.
(2) GO BACK A STEP, OR A FEW STEPS
If the examining attorney at the trademark office determines that your application does not meet all of the requirements necessary for approval, a letter (called an Office Action) will provide you with information on the refusal/requirements.
You will then have six months to respond to each refusal and requirement in the Office Action.
(See: WHAT IS A TRADEMARK OFFICE ACTION?)
If you are able to overcome all refusals and satisfy all of the requirements necessary to be approved for publication, your application will move to the next step of the process.
If not, you would then have the option of appealing your case to the Trademark Trial and Appeal Board. If you choose not to proceed further you can simply abandon your application.
+ STEP FIVE: THE 30-DAY PUBLICATION PERIOD
Any party who believes that it would be harmed by allowing registration of your trademark can file an opposition within the 30-day publication period.
If there is any opposition to your application, it will be suspended, and will remain suspended until such opposition is resolved.
+ STEP SIX: REGISTRATION ISSUED
If there is no opposition to your application during the 30-day publication period it will be registered by the Trademark Office approximately 3 months after publication.
+ WHAT IS A STATEMENT OF USE?
In your statement of use you will need to provide:
(1) The date that your trademark was first used in the United States.
(2) The date that your trademark was first used in interstate commerce.
(3) A proper specimen which shows your mark in use on goods or in the process of selling goods or services.
Failure to properly submit your Statement of Use within six months, or to timely file a Request for an Extension of Time, will lead to your mark going abandoned.
If your Statement of Use is accepted by the trademark office, they will issue you a Certificate of Registration.
If your Statement of Use is denied, the reasons for the rejection will be provided in a trademark Office Action and if the issues are curable, you will then have six months to resolve them.
A Statement of Use cannot be withdrawn and even a slight issue can result in denial. Consultation with a knowledgeable trademark attorney can be very helpful in avoiding common mistakes.
+ WHAT IS A TRADEMARK OFFICE ACTION?
A trademark office action is a notification from the USPTO to the applicant that there is an issue with their application which must be responded to within a specified time, usually within six months.
A trademark examining attorney has no discretion to provide additional time to file a response and if you do not respond within the time period given, the USPTO will declare your application abandoned.
If this occurs, the application process ends, and your trademark will not be registered.
+ WHAT IS A PROPER SPECIMEN?
The required specimen will depend on whether you are using the trademark for goods or services.
A specimen must be submitted for each class of goods or services listed in your application.
If the trademark is being used with goods, some acceptable specimens include; labels, product packaging, manuals or directions, or photos that show the trademark on the actual product itself.
If the trademark is being used in connection with services, some acceptable specimens include different forms of advertising: internet, flyers, coupons, informational brochures.
+ REQUEST FOR AN EXTENSION OF TIME-STATEMENT OF USE
The trademark office will allow you an additional six months to submit a Statement of Use upon timely submission of a Request for an Extension of Time.
+ DO I NEED AN ATTORNEY?
Do not let anyone mislead you about the process to successfully register a trademark. It is not simple.
The USPTO states the following:
"The filing fee is a processing fee that the USPTO will NOT refund, even if the USPTO does not ultimately issue you a registration for your mark."
"Because approval is based on a legal determination by an examining attorney and is NOT automatic, please take all necessary steps to ensure your mark is registrable before filing an application."
With Sturman Law you get a competent attorney who is committed to providing each client with individualized attention and insuring that each legal matter receives a customized strategy.