Registering for a trademark can be daunting, so it’s important to understand the complexity of the process, the legal requirements, and the timeline.
From determining if a trademark application is appropriate to preparing the application and submitting it to then working with the USPTO examining attorney and maintaining the registration, this blog will break down the entire process.
Step 1: Determine if a Trademark Application is Appropriate
When creating a brand or brand-specific good or service, the creator generally wants to protect it from being stolen or copied. One way to do this is by registering for a trademark with the government.
A trademark application is appropriate for any symbol, word, or phrase that is used to identify and distinguish a company or product from others. To determine if what they hope to trademark is actually trademarkable, the applicant must ensure that their mark is not already in use by another company or product and that the mark is not too similar to existing marks. Additionally, the mark must not be descriptive or generic.
Knowing this, there are three stages to the trademark process:
- Filing an application,
- Monitoring the application process,
- Defending against any infringement claims.
Remember, a trademark is not just a decoration on a website – it’s an integral part of protecting a business. Filing the appropriate trademark application is one way to do this, but owners should always be prepared to fight for the business’ rights if necessary. Working with a qualified trademark attorney to manage the process is highly recommended to simplify the process and ensure the greatest chance for success.
Step 2: Prepare to Apply
The second step in the trademark process is preparing to apply. This includes selecting the mark, conducting a search to see if there are identical or similar trademarks already registered, and deciding on whether or not to hire a trademark attorney.
When selecting the mark, the applicant must ensure that it meets the necessary requirements for a trademark, such as being distinctive and non-descriptive. A search should be conducted to see if any identical or similar trademarks are currently registered. If there is, the applicant will need to either choose a different mark or risk having their application denied.
Hiring a trademark attorney can be helpful, especially if the applicant is unsure of the process or if their mark is similar to existing marks. An attorney can guide the applicant through the process and help to ensure that the application is complete and accurate.
Step 3: Complete and Submit the Application
Moving forward, the next step is to file a trademark application with the USPTO. This document must include the following:
- The name of the applicant;
- An identification of the mark sought;
- The full legal description of the mark, including all characters, syllables, and words comprising it;
- A specification of use for which it is proposed to register it;
- Evidence that the mark has been used before (if applicable).
After filing, the applicant will receive a notification from USPTO that the application has been received and assigned a tracking number. After the application has been filed with the US Patent and Trademark Office (USPTO), it is important to monitor any infringements on the mark’s bylaw rights. If necessary, file takedown requests with law enforcement agencies in order to protect the company’s intellectual property rights. Finally, remember to keep up-to-date with resources such as online databases and legal organizations to avoid any possible infringement threats.
Step 4: Work With USPTO Examining Attorney
The fourth step in the trademark process is working with the USPTO examining attorney. After the application is filed, the USPTO will begin examining it. During this time, the applicant needs to remain patient – the USPTO can take up to eighteen months for a decision on a trademark application.
If the USPTO issues a letter, the applicant will need to respond in a timely manner with any requested information or clarification. The examining attorney will then review the response and make a decision on the application.
Staying on top of communication with the USPTO and being proactive about working with the examining attorney to provide additional information is essential for success.
Step 5: Receive Approval or Denial
If the trademark application is approved, the mark will be published in the Official Gazette, and the applicant will receive a registration certificate. The applicant will also be able to start using the mark in commerce immediately. Any trademarks that have been registered before the approval of the trademark application are also considered approved and will continue to be protected under law.
If the application is denied, the applicant will receive a letter explaining the reasons for the denial and the steps they can take to overcome the refusal. These steps include:
- The applicant can appeal the decision
- Withdraw the trademark application completely (which means it won’t go through any further review)
- Surrender the mark (meaning it will no longer be protected under the law).
It’s important to note that each case is different and what happens will depend on specific details of the case. For more specific information, contact a licensed trademark attorney.
Step 6: Maintain Registration
The final step in the trademark process is maintaining registration. Once the mark is registered, the applicant must use the mark in commerce, file maintenance documents, and pay maintenance fees to keep the registration alive. If the mark is not used for an extended period of time, it may be subject to cancellation.
Staying current with all filings includes regularly filing:
- A Declaration of Use,
- An Amendment of Registration,
- Paying any applicable fees.
Failure to file these documents can lead to penalties and legal action.
It’s also crucial for a business to monitor its trademark registrations regularly for any changes or updates. This includes checking the Trademark Office website and sending a notification when any changes are made to the trademarks. And remember, trademark registration is valid for ten years, so be sure to renew the application when necessary, which can be renewed indefinitely for 10-year periods as long as the trademark is still in use.
Consult with a Trademark Attorney
Hiring a trademark attorney can be a wise decision for businesses of all sizes. By working with an attorney, companies can protect their trademarks while also avoiding unnecessary and costly legal battles.
Here are some of the benefits a business owner can expect when working with a trademark attorney:
- Protection from Trademark Infringement – A trademark attorney can help businesses secure their trademarks from infringement by other companies. An attorney can help to enforce a business’ rights and protect the business from future damage.
- Better Representation in Court – An attorney has years of experience in the courtroom, which can make them an effective advocate on an organization’s behalf. They will know how to draft legal documents supporting any trademark-related incidents and minimize the risk of unfavorable outcomes.
- Simplified Process – A trademark attorney will do the majority of the work for the organization, from overseeing all documentation to corresponding with the examining attorney to make the process as simple and straightforward as possible.
The trademark process is complex but can be broken down into several steps. Working with an experienced trademark attorney, such as those at Michael B. Schulman & Associates, can help business owners navigate the trademark process with ease.
With an attorney’s knowledge and expertise, a business can confidently protect and leverage its trademarks in all dealings with customers, vendors, and other third parties. And by understanding the intricacies of the process, a business owner can be more confident that their trademark is registered correctly and that they have a solid legal foundation to protect their brand. To begin the process of trademarking today, contact Michael B. Schulman & Associates to get started.