The trademark registration process appears to be a complicated task. Let a trademark lawyer walk you through every step of the process. To simplify things, we will break the entire process down into four phases: Pre-registration, Mark Selection, the Application Form, Evaluation, until you get the verdict on your application.
Once you have set up your business, you may have decided to immediately register a trademark. Before doing that, however, there are several questions or considerations that must be addressed.
If the answer to the two questions is “yes”, you will move on to the next phase.
The first thing you have to do before you can apply for a trademark is to select the mark that you will use. This is actually the most difficult part of the process, since selecting a mark must be done with a lot of thought, and several considerations coming into play.
First, you have to see if the mark that you want to register is eligible for registration for trademark protection. Is it “registerable”?
There are two basic requirements that will make a mark eligible:
There are four categories of distinctiveness that the mark may fall under:
The second thing to consider is whether the mark that you have selected is strong enough on its own, and if the business will not have a difficult time protecting it.
When selecting a mark, consider the following:
This entails conducting an analysis of all trademarks that are registered with the USPTO, as well as the trademark registries in all the 50 states of the United States. If the product or service is also expected to be sold in countries outside the US, there is a need to check the trademark registries of the countries concerned. You may perform a search on USPTO’s Trademark Electronic Search System (TESS) – this is free of charge.
Once you have selected a mark, you must identify your filing basis. There are two bases for you to choose from:
Now you are ready to prepare your application.
Initial application forms are available in the official website of the USPTO (http://www.uspto.gov). The USPTO offers the Trademark Electronic Application System (TEAS), which allows applications to file their application directly online.
To obtain a filing date, make sure that you comply with all the requirements when preparing your application form. Currently, USPTO has three application filing options available, each with their own corresponding processing fees.
Take note that filing an application does not automatically mean the trademark will be registered. In the event that the registration is unsuccessful, the fees paid will not be refunded.
Aside from the processing fees stated above, there are other fees that may be required from applicants.
This phase involves examination of the application, publication in the Official Gazette, and issuance of a certificate of registration.
Vigilance is a must during the period following the submission of application. Monitoring is done through checking the Trademark Status and Document Retrieval (TSDR) System every 3 to 4 months.
Your application will be forwarded to an examining attorney, who will be responsible for its complete and final review. It is important that you extend complete cooperation with the examining attorney assigned by the USPTO to your application.
In the event that he finds grounds to refuse the registration of your trademark, he will issue an Office Action explaining the reasons thereof. He may also contact that applicant directly if there are corrections or deficiencies of a minor nature that must be rectified.
The Office Action must be acted upon by the applicant within 6 months from the date it was mailed by the USPTO examining attorney. No action taken means that the applicant has already given up on the application for trademark registration.
Now here is a question on most everyone’s minds: how long does it take for the examination to be completed? It may take several months up to a year. It usually takes around 12 months for the examination to be completed and the registration to be issued, and this is when there are no problems with the application. It may take even longer if there are issues, such as incomplete supporting documents, or certain oppositions to the application.
If there are no issues with the application, the examining attorney will now signify his approval of the mark. Approval of the mark by the examining attorney is first manifested through publication in the weekly publication of USPTO, the “Official Gazette”, after duly informing the applicant of the fact. A period of 30 days from the date of publication is provided for any party to come forward with their concerns or oppositions to the mark.
If there is an opposition, the proceedings will be taken to the Trademark Trial and Appeal Board. If not, the USPTO will now register the mark. The applicant, who is now the rightful owner of the mark, will be given a certificate of registration signifying the fact.
That does not end there, however. The new owner of the registered mark has to file certain documents to maintain the registration and keep it alive.
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