Understanding the Trademark Registration Process
This blog is a part of my Ultimate Guide to Trademarks. Check it out for more info!
The trademark registration process is crucial for businesses and entrepreneurs looking to protect their brand and intellectual property. However, understanding the procedure can sometimes be a challenge. Here’s a simple guide to help you navigate the process.
1. Preliminary Steps
Before diving into the application, it’s essential to conduct a comprehensive trademark search. This step ensures that the mark you intend to register doesn’t already exist and isn’t too similar to another brand. It saves both time and money in the long run.
2. File the Application
Depending on whether your mark is currently used in interstate commerce, you can file one of two types of trademark applications with the United States Patent and Trademark Office (PTO): an “intent to use” application or a “use-based” application.
3. Monitor and Wait Patiently
After submitting your application, you will receive a serial number from the PTO that you can use to monitor your application. Subsequently, there is a considerable waiting period. It can be anywhere from 8 to 12 months before an examining attorney within the PTO reviews your application.
4. Examination and Office Actions
Once the examining attorney gets to your application, one of two things can happen:
Smooth Sailing
If everything is perfect and there are no objections, your use-based application will enter an ‘opposition period.” This 30-day window allows others to raise concerns about your mark. If no one opposes, your trademark is registered. Similarly, if you filed an Intent to Use application, the PTO will issue a Notice of Allowance and you will then file a Statement of Use to evidence your use of the applied-for mark in commerce.
Bumps in the Road: If there are issues with your application, however, the examining attorney will raise them in what’s known as Office Actions. There are two types of office actions:
Non-Substantive Office Actions
These are minor tweaks to your application. For instance, the attorney might suggest changing the class under which you filed your mark or ask you to disclaim certain generic or descriptive terms in your mark.
Substantive Office Actions
These are more challenging issues. For example, you may get an Office Action that your mark won’t register because it is likely to be confused with another registration within the PTO or it is descriptive of the services offered. Substantive Office Actions require legal responses to the Examining Attorney. If you can successfully address these concerns, your mark will proceed to registration. If not, unfortunately, your application might be rejected.
6. Publication
If your application is approved by the Examining Attorney, your application will be published in the PTO’s Official Gazette for a period of 30 days. During this period, third parties may oppose your mark if they believe they will be harmed by the registration. If no opposition is filed, you will receive a certificate of registration if you filed a use-based application. Congratulations!
As discussed above, if you filed an intent to use application, the PTO will issue a Notice of Allowance, after which you must file a Statement of Use to demonstrate your use of the mark in commerce. You can file a six-month extension of time (and can file up to five extensions!) if you have not yet begun using the mark in commerce.
7. Maintenance
Once you have a trademark registration, you must maintain your mark or you risk losing it! Every sixth year, you must file a Section 8 Declaration of Continued Use, together with a specimen of use. Every tenth year, you must also file a Declaration of Continued Use and relevant specimens as well as a Section 9 Renewal Application. Failure to file these documents will result in the loss of your trademark protection.
The Importance of Protection
Securing a trademark isn’t just about legally using a name or logo; it’s about building a unique identity for your business. Without proper protection, you risk diluting your brand’s value. Imagine building a business on a foundation that isn’t distinguishable or defensible – it’s a risky proposition.
Registering a trademark is an intricate process, but it’s vital for brand protection. Remember, while you can potentially use a mark without registration, having official protection ensures that you’re building your business on a solid and distinguishable foundation. Always consider seeking professional guidance to make sure you’re on the right track.
