Trademark Attorney Learning Series
THE FEDERAL TRADEMARK REGISTRATION PROCESS – WHAT TO EXPECT BEFORE FILING AN APPLICATION
Applying for federal trademark registration is an important and crucial step in protecting your company’s brand identity and reputation. Regardless of where you are in your business or how long you’ve been operating, understanding the federal trademark application process is essential for safeguarding the integrity of your goods and services and building consumer confidence. Your trademark is how customers identify your products or service and choose them over another company’s offerings. It’s in your interest to protect it properly!
From conducting your initial trademark research to navigating the legal pitfalls that can trip you up along the way, let’s consider some key considerations involved in successfully applying for and securing a trademark.
Selecting Your Mark
This is obvious, but it’s the first step in the federal trademark process. Choosing a good and memorable mark is important, but there are a few other points to consider. Not every mark is registrable or legally protectable.
- Choose a mark that is unique and distinctive for your specific category of goods/services.
- Avoid “descriptive” marks that either describe your products or service, their nature and/or function.
- Be mindful of misleading or misdescriptive wording
- Surnames or names of living persons (used without permission) may be flagged for refusal
- Ensure your mark doesn’t conflict with someone else’s mark for the same goods/services.
Conduct a thorough trademark search
Use the USPTO search database or hire an experienced trademark attorney to conduct a comprehensive trademark search and analysis. This is one of the first steps in the trademark process to avoid a potential refusal at the USPTO or a possible third-party legal challenge. When the USPTO reviews your trademark application (later down the line), it will conduct its own search to ensure that your proposed mark does not conflict with, or is not too similar to, another registered or pending trademark. The trademark standard of review is a likelihood of confusion. We’ll cover this in another article, but for now, this means neither the trademarks nor the goods/services offered have to be identical. They just have to be similar enough that potential consumers may be confused about the source of those goods/services.
You want to ensure there are no identical matches or similar marks (including phonetic equivalents) used in connection with the same or similar goods or services that you’re offering.
Clearly Identify Your Goods/Services
It is critical to clearly identify the goods/services associated with the trademark as this will determine the class(s) under which the mark is registered. Trademarks are organized into 45 different classes of goods and services. Our team of experienced licensed attorneys will assist you in determining the appropriate classes for your trademark application depending on what you are offering. Keep in mind you must select at least one class of goods/services when applying for a federal trademark, and the standard USPTO government filing fee is currently $350 per class.
Know Your Filing Basis
The most common trademark application filing bases are “use in commerce” or “intent to use.” Your application must satisfy the legal requirements for the chosen filing basis. If you apply for your trademark as being currently “in use,” you must be able to demonstrate how you are using the mark. You will have to submit an acceptable trademark specimen, e.g., product images, a customer facing website, downloadable application, e-commerce website point to sale, menus, signage, tags and/or labels affixed to garments or products. If you are applying as “intent to use,” this means you are not yet using your mark in commerce. You do not need to provide a trademark specimen at the time of filing.
Prepare and Submit Your Application
Once you have chosen your mark and researched its availability, you can file your trademark application through the USPTO website or through your trademark attorney. If submitting on your own, be sure to include a current email address (for notifications from the USPTO) and sign your trademark application. If you are working with our firm, we will serve as your attorney of record at the USPTO. We will receive notifications on your behalf and monitor the progress of your application throughout the trademarking process.
One of the common questions we receive is whether to list your company as the trademark owner or apply in your individual name. This is entirely your decision, but most clients who have organized a business (e.g., as a corporation or LLC) file their trademark application with the company listed as the trademark owner. Your trademark is a business asset, so it makes sense to treat it as such.
Trademark Examination
Once you have submitted your application, as long as it meets the minimum filing requirements, the USPTO will assign you a trademark application serial number. Now be patient! Your application will be assigned to an Examining Attorney at the USPTO, but this can take up to several months. If the USPTO Examiner has any issues with your application, you (or your attorney of record) will receive a notification detailing the issue and how to correct it.
Publication of the Mark
Once the USPTO Examining attorney approves your trademark, it will be published in the USPTO “Official Gazette.” This provides public notice that you are seeking trademark registration. During the 30 day publication period, any interested parties may attempt to oppose your mark. Barring any third party claims during the publication period, your mark should proceed to registration in approximately 3-4 months.
Registration
Success! Your trademark registration process is now complete. You will receive an email with a digital copy of your certificate of registration, granting you exclusive rights to use your trademark in connection with your specified goods/services. Once registered, the USPTO requires mandatory maintenance filings for your trademark registration between years 5 and 6 following your registration date, and renewal affidavits are due between years 9 and 10 to keep your trademark active.
Please note the entire federal trademark process, from start to finish, can take approximately 9-14 months.
Should I work with a trademark attorney?
If you are domiciled in a foreign country, you must be represented at the USPTO by a licensed U.S. attorney. If you are domiciled in the U.S., you are not required to have an attorney. But we strongly recommend working with a licensed trademark attorney who can help you to navigate the trademark process and handle substantive matters on your behalf. Contact us if you have any questions about the trademarking process. We offer complimentary 15-minute telephone consultations with our experienced, licensed trademark attorneys. We’ve been working exclusively in trademarks for more than 20 years and we’ll be happy to assist you in protecting your trademark.
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