Basics of registering a trademark

Having a registered trademark is a valuable asset to any business because it is the only sure way to know that you own the rights to your brand. In this article we will discuss the steps it takes to acquire a trademark.

1.     Trademark Clearance Search

The first step to acquiring a registered trademark is searching the trademark database for potentially conflicting marks. While this step is optional, it is one of the most important steps in the trademark process, and it will save you money in the long run. Anyone can search the database but searching for an exact match is not enough. An experienced searcher will search for similar terms; marks with a similar meaning; and many other variables. The best way to ensure a thorough search is completed, is to hire an experienced professional to perform the search.

2.     Identifying the goods and/or services covered by your trademark

The next steps before filing a trademark application are to identify and classify the goods and services you would like protected by your trademark. Start by making a general list of the products or services your business provides. Be sure this list is complete. You can always remove items during the examining process, but you cannot add new items. You then have two options to consider when you are ready to classify the goods and services:

a.      The least expensive option is to search the USPTO’s catalog and choose the items that are the closest match to your list. If you choose this route, the filing fee for the application will be $225/per class (category) of goods/services.

b.     If you can’t find matching items in the USPTO’s catalog, you can submit custom listings of your goods/services. The filing fee for this application will be $275/per class (category) of goods/services.

3.     Provide Proof of Use

In order to register your trademark, you will need to be able to provide proof of use to the USPTO. You can either provide this proof with the initial application, or later in the process (for an additional fee) if you are not yet using the mark in commerce.

Two things are required to prove the use of your mark:

a.      Photographs showing the mark being used on product packaging or hang tags for goods; or, website screenshots, or other marketing materials for services. Printers proofs, or other digitally created items are not acceptable.

b.     The date of first use or sale in commerce.

4.     File the Application

Once the information has been organized, we are ready to file the application with the USPTO. At this point, you should use the ™ symbol after your mark to show that a trademark application is pending.

5.     Responding to Communications from the Trademark Examiner

After the application has been filed, it can take 2-3 months for the application to be assigned to a trademark examiner. At that point, the examiner will issue certain communications depending on his/her findings after reviewing the application.

a.      Office Action

If the examiner finds something that would bar the application from registration, he/she will issue an office action that requires a response within six months from the issue date. The matters that come up in an office action can range from very simple corrections, to more substantial refusals that will require a detailed response.

b.     Notice of Allowance

Once the issues from office actions have been resolved, the examiner will issue a Notice of allowance if the application was filed on an intent-to-use basis. At this point, the applicant has six months from the date of the Notice of Allowance to either provide proof of use, or to request a six-month extension (for an additional fee). Extensions can be requested up to six times.

c.      Registration Certificate

After the applicant has provided proof of use (either at the time of the application, or as a response to the Notice of Allowance), the examiner will issue the registration certificate. Congratulations! At this time, you should use the ® symbol after use of your trademark to show that the mark is registered.

6.     Maintaining your Trademark

In order to maintain your trademark registration, you are required to renew your trademark, and prove that the mark is still in use at six, and ten years from the registration date, and again every ten years thereafter.