Main guide: Trademark
Main guide: Intellectual Property
In the United States, the registration process includes roughly five steps. The entire process will require a minimum of 10 - 12 months.
A registered trademark confers a set of exclusive rights upon the registered trademark owner. Common rights include the right to exclusive use of the mark in the relation to products or services for which it is registered. Once trademark rights are established in a particular jurisdiction, these rights can generally only be enforced in that jurisdiction. However, there is a range of international trademark systems that allow for the protection of trademarks across multiple jurisdictions.
Step 1: The Availability Search
Main guide: Trademark Search
First, you must conduct a comprehensive trademark availability search - the results of which will determine whether other parties are using trademarks similar to yours. The trademark availability search report should be reviewed and analyzed by a licensed trademark attorney.
You can search all registered trademarks free of charge on the U.S. Patent and Trademark Office (USPTO) website using the Trademark Electronic Search System (TESS). Alternatively, private trademark search firms will conduct a search for a fee.
Step 2: The Application
This is the step where the trademark owner files an application to register the trademark. A properly crafted trademark registration application is crucial because it ensures that your trademark registration provides the broadest possible protection. Additionally, a well drafted application will move through the USPTO review quicker.
You will want to know the following information:
- the exact name of the individual, corporation, or other legal entity that seeks to own the trademark
- the exact dates on which the trademark was first used in commerce
- the nature of the goods or services sold under the trademark
Step 3: The Registration Process
Properly prepared and submitted applications will be assigned a "filing date" on the date the application was received. On that date, the USPTO will also assign the application a serial number. Should the minimum requirements not be met, the entire filing will be rejected.
Approximately 2 - 4 months after the application is filed, a USPTO Examiner will review the application and determine whether or not the mark can be registered.
If the USPTO Examiner determines that the mark cannot be registered, they will issue an "Office Action." This document lists the grounds for refusal and any corrections required in the application. The Office Action must be responded to within six months, otherwise the application is deemed "abandoned." A proper response to an Office Action often requires the legal knowledge and expertise of a trademark attorney. Responses that do not overcome all objections will be issued a "final refusal," at which point the only recourse is to bring an appeal before the Trademark Trial and Appeal Board, and administrative body with the USPTO.
Common grounds for issuance of an Office Action include: a likelihood of confusion between the applicant's mark and the registered mark, the mark is merely descriptive in relation to the applicant's goods or services, marks consisting of geographic terms or surnames.
Step 4: Publication for Opposition
Once accepted (either initially or after all objections are overcome) the USPTO Examiner will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. At this point the USPTO will provide a Notice of Publication indicating the date of publication. This gives any party who believes it may be damaged by registration of the mark a 30 day window to file an opposition to registration. Oppositions are held before the Trademark Trial and Appeal Board, and are similar to formal proceedings held in federal court.
If no opposition is filed within the 30-day period, the application enters the next and final stage of the registration process.
Step 5: Issuance of Registration Certificate
If the trademark was used in commerce prior to the application being filed, approximately 3 months after the mark was published the USPTO will register the mark and issue a registration certificate.
If the application was based on the intent to use the trademark, the USPTO will issue a Notice of Allowance about 3 months after the mark was published. Within 6 months of the Notice of Allowance being issued, the trademark registrant must either use the mark in commerce and notify the USPTO or request a 6-month extension. After the USPTO has been notified that the trademark is used in commerce, it will issue the registration certificate.