Registering your trademark with the United States Patent and Trademark Office is a six step process. Depending on what type of trademark you are planning on having registered, the expected timeline can last anywhere between six and 24 months. While the process can appear overwhelming, understanding what goes on can help you avoid certain pitfalls that would further delay your application.
Step 1: Is an application right for me?
The first part of the trademark process is figuring out if an application is right to protect your brand. To best answer this question, please check out our previous blog post on Trademark Law 101. This article discusses, in-depth, the basics regarding trademark law and offers suggestions as to why you would or would not want to consider getting a federally registered trademark.
To summarize, if you value your brand and are putting in a significant amount of work branding your business, you should consider applying for a trademark to protect your hard work.
Step 2: Preparing for your application
After you figure out if your mark is able to be registered, the second step involves doing the initial preparation towards submitting your mark application. The types of trademark protections available to you will be impacted based on the classification of your mark - so it is extremely important to classify your mark accurately. Your mark can either be classified as an audio mark (ex. distinctive sound identifier), world mark (ex. brand name), or design mark (ex. company logo).
Once you can classify your mark, it is time to come up with an accurate description as to what your mark identifies in terms of goods or services. Having an accurate description as to what your mark identifies is arguably one of the most important steps in the entire trademark process. If your description is too broad or narrow, the rights you are protecting could significantly be limited. Having a trademark lawyer help you with this is highly recommended.
Step 3: Filling Out and Submitting your application
The trademark application is one of the most deceptive applications around. While it seems pretty straightforward, don't be fooled into taking the application too lightly. Step three involves taking the time to fill out all the information that will go into your trademark application. When filling out the application, make sure you keep in mind that all any and all the information you submit along with your registration application will become a matter of public record (including your name, phone number, and address).
Step 4: Review by an examining attorney
The United States Patent and Trademark Office will assign an attorney to review your application. This attorney will review your application and mark in accordance with the rules set out by the United States Patent and Trademark Office and will make the determination as to whether your mark should be registered. If minor corrections are needed, they may call or email you, but if they deem the mark ineligible, they will send you a letter. Should you receive a letter stating the details of the rejection, you will have six months from the date of the letter to correct any issues and respond.
Step 5: Acceptance or denial
If your application is accepted, it will be printed in the United States Patent and Trademark Office's weekly publication, the "Official Gazette." After this publication takes place, the general public will have thirty days to object to the registration of your mark if they believe they have a mark that may be damaged by the publication of your mark. If no such opposition occurs, the United States Patent and Trademark Office will send you a certificate of registration for your mark.
If you registered your mark as an intent to use application (meaning you were not actually using the mark at the time you filed for protection), you will be issued a Notice of Allowance. Once you have this notice, you will have six months to either use your mark in commerce and submit a Statement of Use or file for an extension on the time you have to submit a Statement of Use. If you fail to file the statement or the extension within the six-month period, your application will be considered abandoned.
Step 6: Maintaining your registration
Once your application has been approved (and you have submitted your Statement of Use if necessary) you will receive registration for your mark. To keep this registration current and viable, you will have to file all of the appropriate maintenance documents. Failure to file these documents can result in your registration being cancelled.
The trademark process can be complex but not impossible. Understanding the way your application will be handled will give you a heads up in preparing to file your trademark application.
While applying for a trademark can be done without a trademark attorney, it is highly recommended that you strongly consider hiring one to assist you with your application. A trademark can be one of the most valuable assets in your company's intellectual property portfolio and having your application done correctly can help you in ensuring your protections are in order. If you have questions about obtaining a trademark, please feel free to contact us.
Julian Cordero is an Attorney, Business Strategist, and Music Producer. Oh and he blogs too! Julian is licensed to practice law in New York and is the Managing Attorney of Cordero Law LLC, a New York City based law firm focusing on Business Law, Entertainment Law, and Intellectual Property Law.