U.S. trademarks are regulated by the federal government through the United States Patent and Trademark Office (USPTO). The process usually takes 12-18 months to complete once it’s started. So don’t expect it go quick. The process to apply for a trademark is relatively straightforward, but it does require some thought and planning. The steps necessary for a trademark application review are outlined in this article so that you know what to expect when you file your own application.
The Steps of Submitting the Trademark Application
The process of applying for a trademark can be daunting, but understanding the steps can help make the process go more smoothly. Here are the steps of the trademark application process:
- Choose Your Mark. Choose a name or logo for your business (this is called your “mark”). This is the first step in creating a strong brand identity. Your name and logo will be what customers remember and associate with your business, so choose wisely!
- Clearance Search. You need to conduct a thorough clearance search to come up with a strategy for executing your trademark application. Just Googling your proposed mark and seeing there’s not an exact match is not enough. At a bare minimum, you should be searching the USPTO database to see if your chosen name and logo are available. You don’t want to choose a name or logo that’s already been taken by someone else, so it’s important to do a thorough search before moving forward. My office conducts clearance searches all the time to assess the likelihood a mark will be registered. What we find likely will surprise you.
- File the Application. The next step is filing the application with the USPTO. Once you’ve confirmed that your chosen name and logo are available, you’ll need to file an application with the USPTO. Understanding the different elements of the application are critical because it’s very easy to make a mistake on the application.
- Pay the application fee. The current fees for filing trademark applications are on the USPTO website. What most people get confused about is how expensive an application can become. For example, if you have a brand name and a logo, that’s two applications, so two application fees, and the cost doubles. And then if you submit in multiple classes, it’s one fee per application per class. So it can multiply quickly.
- Wait for a response from the USPTO. Once your application has been received, it will be assigned to an examiner who will review it to make sure it meets all requirements. This process takes a while, unfortunately, and it’s common to not get an initial response for 6-9 months! I commonly see opposing parties respond privately to applicants more quickly than the USPTO.
Applying for a Trademark
The process of applying for a trademark can be daunting, but understanding the steps involved can help to make the process go more smoothly. At the United States Patent and Trademark Office (USPTO), there are several steps that must be followed in order to complete a trademark application. First, the applicant must identify the goods or services that they wish to trademark. The USPTO requires that applicants clearly identify the purpose of the trademark in order to determine if it is eligible for registration. Next, the applicant must perform a search of existing trademarks to make sure that their desired mark is not already in use. Once the search is complete, the applicant must file a trademark application with the USPTO. The USPTO will then review the trademark application to make sure that all of the required information has been provided and that the mark meets all of the eligibility requirements. If everything is in order, the USPTO will publish the mark in the Official Gazette, which is a weekly publication that lists newly registered trademarks. After publication, anyone who believes that they would be harmed by registration of the trademark has 30 days to file an opposition. If no one files an opposition, or if any oppositions that are filed are unsuccessful, then the trademark will proceed to full registration.
USPTO Attorney Examination
After you file your trademark application with the United States Patent and Trademark Office (USPTO), it will be assigned to an examining attorney. The examining attorney will review your trademark application to make sure it meets all the legal requirements for registration. Usually it takes 6-9 months for the examination to occur.
If the examining attorney finds that your trademark application does not meet all the requirements, they will issue a letter called an Office Action. The Office Action will list all of the reasons why your trademark application is not currently registrable. You will have a chance to respond to the Office Action and explain why you believe your trademark application should be registered.
If the examining attorney agrees that your trademark application meets all the requirements, they will publish your mark in the Official Gazette. This is a weekly publication that contains information about newly registered trademarks. After your mark is published in the Official Gazette, anyone who believes they would be harmed by your registration can file an objection to your mark. You will have a chance to respond to any objections that are filed against your mark. If the objection is overcome, your trademark will be registered!
Issuing a Notice of Allowance
After you’ve filed your trademark application with the USPTO, an examining attorney will review your trademark application. If they find that your trademark is eligible for registration, they will issue a Notice of Allowance. This notice means that you can now use your trademark in commerce. However, you must first file a Statement of Use within six months of the Notice of Allowance being issued. Once your Statement of Use is approved, your trademark will be registered!
Not Allowed – What an Office Action Means for Your Trademark Application
An Office Action is issued when the USPTO Examining Attorney finds something in your application that is either procedurally or substantively deficient. A procedural deficiency is generally an administrative matter that can be resolved by correcting the application. A substantive deficiency means that the mark itself is insufficient under current federal trademark law. The vast majority of Office Actions are procedural. Trademark owners should consider the following guidelines when responding to an Office Action: Do not ignore Office Actions – Respond in six months or you will lose your application. If you fail to respond to this action, the application will be abandoned and cannot be revived later. Respond in writing – Most Office Actions will require a written response from you (either an amendment or a statement of use). If the Office Action has rejected your application for being incomplete, you will be expected to submit the missing items within six months or your application may be abandoned by the USPTO.
What Happens After Issuance
After the trademark office issues a trademark, the owner must take steps to protect and enforce it. This includes monitoring use of the mark and taking action against infringement. The owner must also renew the trademark registration periodically to keep it in force.
After you have filed your trademark application with the USPTO, the examining attorney will review your application. If they find that your mark meets all the requirements, they will publish it in the Official Gazette. Once your mark is published, anyone can oppose it within a period of time. If no one opposes your mark, or if you successfully defend it in an opposition proceeding, your mark will be registered!