Coming up with an idea is the first part of the process, and it’s also the hardest part.
The remainder of the process follows logical and important steps. You give your goods or services a name or a logo or some other distinctive feature to be identifiable. You also have to make sure that no one else is using that name/logo/identifier by performing a search on your own.
Then, you have an experienced trademark attorney do a more thorough search and give you their professional advice on your trademark’s ability to register with the United States Patent and Trademark Office (USPTO). Sometimes, the trademark has a good chance of registering; sometimes, it’s best to just go back to the drawing board with a new name or logo.
If you want to move forward, then you fill out an application (or have an experienced trademark attorney fill one out for you to make sure it’s done correctly). The application requires that you either show that you’re using the “mark” in commerce or that you swear that you’re going to start using it within a set time. You’ll have to prove that you will use it later or you’ll lose your place in line and the money you spent saving it.
Then, the application gets assigned to a USPTO Examining Attorney, who reviews the application for errors and reviews the mark for compliance with trademark law. Sometimes, the application goes through and is registered on the first shot; everything is filled out right and there are no issues with your mark. For instance, maybe no one else has a “confusingly similar” mark, it isn’t “merely descriptive” or your mark doesn’t use any unacceptable “geographic indicators” or imply any potentially confusing associations. However, that only happens around 30% of the time, even considering people using an attorney.
What usually happens is the Examining Attorney reviews your mark and decides they either need more information, a correction to some technical error, or an explanation why some legal doctrine may prohibit your mark. You get what’s called an “Office Action” after that. That’s basically a refusal from the USPTO, requiring you to respond to the USPTO through various channels. You could have six months to respond to an Office Action, or you don’t have to respond at all until someone else’s mark has cancelled or been registered.
Once you respond to the Office Action, you either keep discussing it with the Examining Attorney until your mark gets cleared for the next step, or you get a Final Rejection. That is as bad as it sounds. To argue a final rejection, you have to appeal to the Trademark Trial and Appeals Board (TTAB) to overturn that.
If you don’t get a Final Rejection, you move through the process and the Examining Attorney publishes your mark in the USPTO Register for “opposition.” If someone thinks there’s a good reason why you shouldn’t have your trademark, they have a certain time to oppose your registration.
If your registration is not opposed by a certain time, it gets registered on what’s called the Principal Register. That’s the ultimate goal. It’s not absolute protection; someone can petition to cancel your mark, and requirements are still in place for maintaining your registration. However, it’s the strongest US legal protection you can get for your brand at the outset normally – a live and registered trademark on the Principal Register.
Sometimes your mark ends up on the Supplemental Register, which doesn’t afford the same protections as being on the Principal Register, but does have some advantages. This occurs often because your mark is not “strong” enough based on its relationship to the goods and services. Steps that you can take to get your mark onto the Principal Register are still available, depending on the circumstances. You’ll have a stake in the ground as far as the date when it is considered “registered” for a lot of different purposes, including enforcing against infringers.
You can file an “Intent to Use” application because you have the idea and the mark, but you haven’t launched into commerce and want to call dibs on your identifying trademark. However, these kinds of applications are not put on either register until you sufficiently prove that you are using the mark in commerce on the goods for your registration.
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