Are you interested in registering your trademark or service mark? Want to know a little about how the process works? Here is a short overview, from the initial search and application through allowance and registration.
Registrability Search and Initial Application
To register a trademark or service mark, you will first need to identify what the mark is. If the mark includes a graphic element (in other words, it is not just plain words) you will need a high quality reproduction of the mark in computer or paper format. You will also need a list of all the goods and services for which the mark is used or will be used.
If the mark is already in use, it is important that this list is accurate, as a misstatement could result in your trademark being invalidated. Often I can come up with a draft list based on materials supplied by a client (such as a website), which I then go over with my client and change as necessary.
With this information, a registrability search can be performed, if so desired. You can try to do this search yourself, searching the PTO database for similar marks for similar goods or services, or you can have a trademark attorney perform it. The attorney can also render an opinion on the registrability of your mark if you desire. In this process, the United States Patent and Trademark Office’s trademark register is examined to see if any existing trademark applications or registrations would prevent registration of your mark.
When I conduct a registrability search, I also perform an internet search for any unregistered users of similar marks that could cause you problems down the road. I typically recommend a registrability search prior to filing an application. If conflicting marks are found, your mark can be modified to avoid them without the wasted time and expense of a full application.
To proceed with your application, you will also need to know the name of the owner of the mark, which may be you or your company, and the owner’s mailing and email address as well as phone and fax number (if applicable).
If your mark has not yet been used in interstate commerce (used on goods shipped across state lines or to advertise services) an intent-to-use application will be filed and no further information will be necessary for the time being. If the mark has been used, your lawyer will need to know the date that the mark was first used anywhere and the date it was first used in interstate commerce, and will also need a specimen showing how the mark is used.
To show use on goods, the specimen may be a photograph showing the mark on the goods, or packaging or shipping materials for the goods, or a tag or label. For services only, the specimen may be an advertisement (website printouts usually make good specimens). An advertisement is not an acceptable specimen to show use of a trademark on goods/products. Under certain circumstances, a catalog or “point of sale” display may also serve as a specimen for goods. Please contact your lawyer if you have any question about the suitability of a specimen.
Preparing and filing your application to register your trademark entails a government fee of $325 per class of goods or services in addition to whatever your attorney charges for his or her services. Many applications fall under a single class.
Examination of Your Application
Your application will be picked up by a Trademark Examiner about three to six months after your application is filed. Many times, your application will be approved by the Examiner and passed to publication without the necessity for any changes. Other times, the Examiner may send out an Office Action requiring changes to your application to comply with certain formalities. The Examiner may also cite other registrations or pending applications that he or she feels prevent registration of your mark, or give other reasons that your mark is not registrable in the opinion of the Examiner.
If an Office Action is sent, it must be replied to within six months. There is no government fee on top of the amount you will be charged by your attorney for his or her services in preparing and filing the Response. If the Examiner still is not satisfied, a second Office Action may be sent. At that point you must meet all the Examiner’s requirements or appeal to the Trademark Trial and Appeal Board or risk abandonment of your application. In some cases, registration of your mark may be refused.
Publication and Allowance of Your Application
After your application is accepted, it will be published in the Official Gazette of the Unites States Patent and Trademark Office. This publication places all other trademark holders on notice that your mark is about to be registered and gives them one month to oppose your registration. If your registration is not opposed, the mark will be allowed and, in the case of marks currently in use, officially registered.
Statement of Use (Intent-to-use applications)
If your application was filed on an intent-to-use basis, a Statement of Use must be filed within six months of allowance, along with a specimen showing use of the mark in interstate commerce, before registration will occur. A Statement of Use carries a government fee of $100 per class.
If the mark is not yet in use by this time, you can request an extension of time to file the Statement of Use. Up to five extensions may be requested, each of which grants you an additional six months in which to use the mark and file a Statement of Use. Each extension carries a government fee of $150/class in addition to whatever your attorney charges for this service.
Combined Declaration of Use and Incontestability
Five years after your mark is registered, you must file a statement of continued use and incontestability under Sections 8 and 15. The government fee is $300 per class. Incontestability, granted after five years of registration, is a powerful advantage for your mark in court and grants you extra leverage in negotiations with infringers or for licensing and sales.
Renewals
If you wish to keep your trademark registration active, you must file a Renewal of Registration nine and a half years after registration and every ten years thereafter. The government fee is $500 per class on top of your attorney’s service charge
Generally, your trademark lawyer will keep all of the relevant dates for your trademarks in a calendar and docketing system. That means you should never have to worry about missing an important deadline and allowing your trademark to lapse. This service is typically included in the cost of filing renewals, etc.
If you have any questions to ask about the trademark registration process or anything to add, please do so in the comments.
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