If you’ve ever tried to file a trademark application, you know that even though it may seem straightforward, there are a lot of legal complications that can come up. First off, you need to know that the trademark process is not short and immediate. It can be time consuming and requires patience. Here’s a step by step description of what the trademark process entails.
Step 1- Search
The first step in a trademark application is to conduct a search to see if there is any conflict with an already registered or pending trademark application. The search can be conducted on free platforms like Google, Bing and USPTO. There are many ways of doing the search on the USPTO search platform to get the optimum result. And there’s many legal angles to look at to determine if there is any similarity to cause confusion in the search result. One important thing to note is that if a domain name is available, it does not mean that the trademark will be available.
Step 2 - Strength of the Mark
Once the search is done, a determination needs to be made if the mark is strong enough to qualify as a trademark. Arbitrary (Apple for computers) and Fanciful (Google, Kodak) trademarks are the strongest marks. Suggestive marks (Greyhound) are considered somewhat strong, whereas descriptive (The Spin Club for spin classes) and generic terms are the weakest and not subject to protection.
Step 3 - Determine Filing Basis
Next, you need to determine if the trademark application will be filed on a current use basis or an intent to use in the future basis. In both cases, the USPTO requires the applicant to file a sample of use, which means, the applicant will need to show how the mark is being used. If the application is for a product, then a good sample of use will be the mark seen on the product itself, or attached to the product like tags, labels or packaging. For a use based application, the sample will be submitted with the initial trademark application. For an intent to use application, the sample will be submitted after the USPTO issues a notice of allowance (which is a few months into the application process).
Step 4 - Identify the Products and/or Services
The next step is to identify the products or services on which the mark will be used. You cannot have blanket protection over a mark. The USPTO identifies classes of goods/services under which trademarks can be registered. There is a filing fee for trademark class or category. So you will need to identify exactly and precisely the goods or services you sell or intend to sell.
The trademark application requires certain other information like name and address of applicant, domicile of applicant, declarations and date of first use for use based applications.
Step 5 - Wait and Watch
Once a trademark application is filed, it takes about 3-4 months for the USPTO to assign an examining attorney to the application. The examining attorney then reviews the application, does his/her own research to determine if the mark is strong enough or conflicts with another mark. If the examining attorney is satisfied, he/she will then publish the mark for opposition in the official gazette for 30 days. During this time, a third party can oppose the mark if they perceive the mark to be similar to theirs and likely to cause confusion. If there is no opposition, the trademark application will then move to the final registration stage and a certificate will be issued.
If the examining attorney’s research shows that there is a potential conflict or the mark itself is not strong enough, then an office action will be issued outlining the reasons for denial of the trademark application. The applicant is typically given 6 months to respond depending on the complexity of the denial and the need for legal arguments. If the applicant can overcome the reasons for denial, then the USPTO will move ahead with registration. All of this takes about 8-18 months until registration is finally complete.
As you probably noticed, there are some legal complexities involved even before a trademark application can be filed. It’s best to engage the help of an attorney to help you through the process.
At Nupur Shah Law, we help with trademark strategy, applications and prosecution. We help with reviewing your work and determining the best possible protection available to you. Call us at 646-820- 1366 or email us at email@example.com. I am happy to have a complimentary conversation with you on how to secure your rights.