U.S. Trademark Registration Process – Overview
U.S. Trademark Registration Process: 6 Key Steps
Below is a summary of the U.S. trademark registration process and 6 key steps to follow.
- To listen to our U.S. Trademark Registration Process Podcast, click here.
What is a Trademark and Service Mark?
A trademark can be a word, name, symbol or device, which is used in trade to indicate the source of goods and to distinguish them from the goods of others.
A service mark is the same as a trademark except that it identifies and distinguishes the source of services rather than products.
The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from offering the same goods or services under a clearly different mark. Also, trademarks, which are used in interstate or foreign commerce, may be registered with the U.S. Patent and Trademark Office (“USPTO”).
- To listen to our U.S. Trademark Selection Podcast, click here.
Step 1: Trademark Search
Before filing a trademark application with the USPTO, it is advisable to conduct a preliminary “knock-out” screening trademark search, which consists of quick and simple searches on the USPTO database and Internet. If our initial screening searches do not reveal any potentially conflicting marks, it is advisable to conduct a more comprehensive trademark search, which essentially tells us whether a mark is available for use and registration.
Comprehensive trademark and business name searches can cover business names, common law marks, state trademark filings, federal trademark registrations, federal trademark applications and domain names.
This is a key step in the U.S. trademark registration process and should not be taken lightly.
- To listen to our Trademark Search Podcast, click here.
Step 2: Prepare and File Trademark Application
A U.S. trademark application is filed based either upon an intent-to-use filing basis (you intend to use the mark for the listed goods/services post filing) or based upon actual use of the mark in interstate commerce (you are using the mark in interstate commerce for the listed goods/services as of the application filing date).
To prepare and file the application, you will need certain information, including:
1. the proper applicant name for the application, which is the party that controls the quality of the goods and/or services
2. the mark to be registered (only one mark per application allowed)
3. an accurate description of the goods and/or services
4. if the mark is already in “use” (as defined by the Lanham Act), the dates of use of the mark for the listed goods and/or services and acceptable specimens of use for the mark for the goods/services
- To listen to our Trademark Registration Process Podcast, click here.
Step 3: Trademark Application Examination
Once the U.S. trademark application is filed, an USPTO Examining Attorney reviews the application to determine whether it complies with all applicable rules and statutes. A complete examination includes a search for conflicting third-party marks on the USPTO database, whether the applied for mark is distinctive (meaning it functions as a trademark) and an examination of the written application, the drawing, and any specimen.
*Important Note: Because the USPTO conducts its conflicts search only on the USPTO database and does not search for state-registered or common law marks (federally unregistered marks), there are still risks of infringing third-party common laws marks even if the USPTO issues a federal trademark registration. For that reason, a complete trademark search before filing the application is necessary to reduce risks of third-party objections and trademark infringement.
If the Examining Attorney determines that the mark should not be registered, the Examining Attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the Examining Attorney may contact the applicant by telephone or e-mail. If the Examining Attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six months of the mailing date of the Office action, or the application will be declared abandoned.
If the Examining Attorney raises no objections to registration, or if the applicant overcomes all objections, the Examining Attorney will approve the mark for publication and the mark will then be published in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a Notice of Publication to the applicant stating the date of publication.
- To listen to our Trademark Registration Process Podcast, click here.
Step 4: Opposition Period
Once the mark is published for opposition, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal.
- Costs: Costs of a full opposition proceeding may range from $100,000 to $300,000 (and potentially much higher)
As you can see, skipping the trademark search step in the U.S. trademark registration process, can be costly.
Step 5: Post Opposition and Registration Issuance Process
Application Based on Use or Foreign Trademark Registration
If the mark is published based upon the actual use of the mark in commerce, or on a foreign trademark registration, and no party files an opposition or a request to extend the time to oppose, the USPTO should register the mark and issue a registration certificate.
Application Based on an Intent-to-Use
If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce, the USPTO will issue a Notice of Allowance if no party files either an opposition or a request to extend the time to oppose. The applicant then has six (6) months from the mailing date of the Notice of Allowance to either:
⦁ submit a Statement of Use affidavit showing proper use of the mark; or
⦁ request a six-month Extension of Time to File the Statement of Use
The applicant may file up to five six-month extensions, not to exceed a total of three years from the mailing date of the Notice of Allowance. Once the applicant has filed its statement of use, and it is accepted by the USPTO, the USPTO should issue a registration certificate.
Alternatively, the applicant may delete certain goods or services from the application to expedite registration for the goods and/or services in use or divide the application into two applications – one for the goods and/or services in use (which would allow the mark to register for those goods and/or services) and a second application for the goods and/or services not yet in use.
Step 6: Post Registration Maintenance
This is a critical step in the U.S. trademark registration process and is sometimes missed resulting in loss of trademark registrations and rights. We offer docketing services for our clients (included in our fees), which tracks maintenance due dates to ensure they are not missed.
Once the applicant receives the registration certificate and has the full protection provided under Federal Trademark Law, the applicant still must take all necessary steps to maintain the registration going forward. Rights in a federally-registered trademark can last indefinitely if the owner continues to use the mark on or in connection with the goods and/or services listed in the registration and files all necessary documentation in the USPTO at the appropriate times.
The owner of a registration must file an Affidavit of Continued Use or Excusable Nonuse, and may file an affidavit declaring the mark as “incontestable,” between the fifth and sixth year of registration. The applicant must also file renewal applications every ten years from the date of registration.
For more information about the U.S. trademark registration process or to discuss how we can help, please contact us.