The Trademark Registration Process
Summary: When you’re considering a trademark registration for your valuable brand, you may be tempted to become a “do-it-yourselfer” and submit your trademark application yourself to save some money. While sometimes this turns out okay, often it can be a real mess that takes time and money to unravel later. Worse, some clients waste money on cut-rate trademark attorneys who don’t bother to find out about the client’s brand usage and goals for the mark. This results in the client getting a registration for the wrong goods or services, or failing to get protection for other anticipated areas of product expansion.
Unlike those cut-rate online filing firms that process as many applications as fast as they can, we actually take the time to understand your business and get an idea of where this brand fits into your business goals. We work with you on perfecting your use of the mark before the application is filed, so you can file the right usage example — called a “Specimen” — and use your mark properly. We help the process go more smoothly so you can get your registration faster, saving you time, money and frustration.
Step 1: Is Your Proposed Mark Available?
Step 1: Is Your Proposed Mark Available?
The first step in our Six Step Process is to evaluate whether your proposed mark is available for use. We check not only the Trademark Office Official TESS database, but also do an online search to locate other possible users of the mark who may not have registered their mark with the U.S. Patent and Trademark Office.
Step 2: File the Trademark Application
Step 2: File the Trademark Application
If we find no “confusingly similar” marks, then we gather the necessary information to submit your trademark application to the U.S Patent and Trademark Office. We need to know things like how long have you been using the mark, what goods or services you’ve been using it on, and who will own the mark. We also collect an example — called a “Specimen” — proving your use of the trademark, if you’re already using it. If you’re not using it yet, we can save this bit for later.
Step 3: Trademark Examination
Step 3: Trademark Examination
After your application is submitted to the U.S. Patent and Trademark Office, it’s assigned to a Trademark Examiner. Trademark Examiners are attorneys who evaluate every trademark application submitted. They examine the Trademark Database for possible conflicts for submitted applications. If an Examiner finds another mark in the database which is “confusingly similar” (the most common objection) they reply to us with an Office Action that details the issue and invites us to respond on the client’s behalf.
This process continues until the mark is approved for publication in the Official Gazette or given a final refusal. Final refusals can be appealed.
Step 4: Publication for Opposition
Step 4: Publication for Opposition
After the Trademark Examiner has approved the mark, he or she issues a “Notice of Publication” in the Official Gazette, which is a weekly publication of the U.S. Patent and Trademark Office. This Notice tells us when the mark will be shown officially to the rest of the world, so that anyone with an objection to the mark can file a Notice of Opposition.
If a Notice of Opposition is filed, the dispute is moved to the Trademark Trial and Appeal Board (TTAB) for adjudication. The TTAB is an administrative body that hears trademark disputes. The proceedings are like a trial, except there are generally no oral arguments.
If no Opposition is filed within 30 days of publication in the Official Gazette, the mark is granted a Certificate of Registration or a Notice of Allowance.
Step 5: Issuance of Registration Certificate or Notice of Allowance
Step 5: Issuance of Registration Certificate or Notice of Allowance
If you are using your mark already, and have proven use in commerce, then the U.S. Patent and Trademark Office (USPTO) will issue you a Certificate of Registration about 3 to 4 months after the mark was published (assuming, of course, that there was no Opposition filed).
If you haven’t started using your mark yet, the USPTO will issue you a “Notice of Allowance” 3 to 4 months after publication. Now you have up to 6 months to prove your use of the mark. If you can’t show use in 6 months, you can file an Extension or you can abandon your application.
Did you get your Certificate of Registration? Congratulations! Now you’re official, and you can use the “®” symbol with your mark rather than the “™” symbol.
Step 6: Trademark Commercialization and Enforcement
Step 6: Trademark Commercialization and Enforcement
You went through months of trouble to get your mark, now it’s time to use it. But how do you know that you are using your mark properly? Are you making mistakes that could cost you your trademark rights? The good news: We’re here for you, every step of the way.
We offer comprehensive care for your portfolio of valuable trademarks, to ensure that you are using your brands properly, protecting your property against naughty infringers, and monetizing your brands to your maximum advantage. We track your renewals, remind you of upcoming deadlines, send cease and desist letters to infringing parties, and draft license agreements with your chosen partners. We also help your team know the difference between proper brand use and use that can get you in trouble down the road.
TrademarkDoctor is here for you, for the life of your brands!
Bottom Line: The process of getting a trademark application is sometimes very straightforward, and sometimes not. If you file the wrong specimen, specify the wrong type of goods, or don’t prove proper usage, filing your own trademark application may result in your mark being denied by the Trademark Examiner. Also, because you don’t know what NOT to say, you may say things to the trademark examiner that are damaging to your quest for a trademark registration. These go on the permanent record, so even if the mark is re-filed at a later time, the next examiner will see these in the record of the previous application and deny your mark a second time.
If your brand is worth protecting, then it’s worth the investment to do it right. A good trademark attorney knows the ins and outs of the process, and smooths the way for you. She helps you correct your usage before you file and avoid mistakes in the filing, saving you time and money, and ultimately getting your mark issued sooner.
The trademark law process may seem straightforward, but there are traps for the unwary.
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