US Trademark Application Process

US Trademark Application Process
There are multiple steps to the US trademark application process. Below is an example of a typical US trademark or service mark application process.

 

Determine Your Protection Needs
Do not believe the misconception that a trademark is all you need to protect your company assets, brand identity, innovations, and creative works. There are different forms of protection for different intellectual property. Trademarks only protect intellectual property such as brand marks and logos. For example, utility patents and invention patents protect inventions. Design patents and industrial designs protect product designs. Copyrights protect literary, artistic, or musical expressions of an idea. Additional intellectual property rights such as trade secrets can protect other business assets. So fully ascertain your needs before going through the trademark protection process. Great introductory videos regarding US trademark basics can be viewed at the USPTO website:
US Trademark Videos

 

Choose a Trademark
Once you are sure that you need a trademark protection, the next step is to determine the mark you intend to protect. Note that not all marks are registrable with the USPTO nor are all marks legally protectable. So be careful in your choice of marks.

Carry out your research on the recommended mark formats, the registrability of your selected mark, and the difficulty involved in protecting the mark based on the strength of the mark. This will help cut down on the back and forth of registering the mark. A good starting point would be to conduct a trademark search at the USPTO’s Trademark Electronic Search System (TESS).

 

File Your Trademark Application
The US trademark application form requires a variety of information, including Applicant contact information, the description of the mark, the first date of trademark use in US commerce, the first date of trademark use anywhere in the world, etc. A preview of the required information and documents can be found at US trademark application form.

Because of the complexities of the US trademark application process, the USPTO recommends retaining a licensed trademark attorney to process your trademark application. If you are domiciled outside the country, the USPTO requires that you hire a licensed US trademark attorney to file your application.

 

USPTO Reviews Application
Once the USPTO vets the minimum filing requirements, the application is handed over to an examining attorney. This may take a number of months. The examining attorney reviews the application to check for conflicting marks and to check for errors in the written application, the drawing, the fees, and the trademark specimen.

 

Receive the Results of Your Application
After the examination by the examining attorney, the USPTO will either approve the mark for publication in the “Official Gazette,” or deny the application. If the USPTO approves the mark for publication, the USPTO will send you a notice of publication stating the date of publication.

 

Trademark Opposition Period
If your application is approved for publication, it does not stop there. Publication of your trademark begins a 30 day period during which your trademark application can be opposed if a third party raises a credible reason they believe the application should be denied. If after 30 days no party raises such concern, then your application can be allowed.

 

Trademark Certificate Issues
Note that if the registered mark was registered based on either actual use in US commerce, an extension of protection of an international registration to the United States under Section 66(a), or a foreign registration, then the USPTO will send the registrant a certificate of registration.

On the other hand, if the mark is published on the basis of the applicant’s bona fide intention to use (ITU) the mark in commerce, then the USPTO will issue a notice of allowance after the trademark opposition period. Within 6 months after the date of the notice of allowance, the trademark applicant has to either use the mark in US commerce and submit a Statement of Use (SOU), or request a 6 month extension of time to file a Statement of Use. The USPTO will issue the trademark certificate if the statement of use is acceptable.

 

Trademark Maintenance
The registrant can extend the shelf-life of the registration by filing specific maintenance documents. Failure to do so may result in the outright cancellation or expiration of the registration.

To maintain your trademark, a Declaration of Use must be filed 5 years after the registration date. Although optional, many registrants will also file a Declaration of Incontestability after the fifth year, because the Declaration of Incontestability provides additional trademark rights to the registrants. The trademark must also be renewed every 10 years after the registration date. To renew a US trademark, the registrant must file both a Declaration of Use and an Application for Renewal.

 

Trademark Assignment
Changes in the applicant’s information must also be updated. Some common situations are when the applicant’s name has changed, the applicant business has been sold to another company, etc. Depending on the situation, a Trademark Assignment must be drafted, signed, and recorded at the USPTO.

 

 

To get started on your patent or trademark application, email us at contact@intrademark.com. To consult a USPTO registered patent and trademark attorney, please visit Minderlaw.com.

 

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