Deep Dive: Understanding the Trademark Journey
The trademark registration process may seem complex, but we make it easier to understand.
Months Average
Major Phases
Years Protection
Phase 1: Preliminary Research
Before filing a trademark application, a trademark search is beneficial to assess whether the trademark is available for use, and to assess the likelihood of successful registration.
Trademark Search
Although there is no legal obligation to perform a search, we always recommend performing a search of both federal trademark registrations and common law (i.e., unregistered) trademarks. The search aims to find both identical trademarks, and non-identical trademarks that may nevertheless be deemed to be confusingly similar to your trademark. If you perform your own search and do not find any relevant results, that is a good sign, but it is not a guarantee that you would not face issues from similar trademarks. For this reason, it is a good idea to hire a trademark attorney to perform a search.
Clearance Analysis
We analyze the search results and provide a detailed analysis of potential conflicts and the likelihood of successful registration. This helps you make an informed decision before investing in the application process. We also analyze your trademark to assess whether it is sufficiently distinctive to be eligible for protection.
Classification Strategy
We identify the appropriate trademark classifications for your goods and/or services. Proper classification is important - filing in the wrong class can result in rejection and increased fees for adding the proper classifications later, and may fail to maximize your protection in important areas.
Phase 2: Application Preparation
Preparing a strong trademark application requires attention to detail and strategic decisions.
Application Type Selection
We determine whether to file based on current use in commerce (Section 1(a)) or intent to use (Section 1(b)). Each has different requirements and implications for your timeline.
Specimen Preparation
For use-based applications, proper specimens showing the mark in commerce are required. We assist with specimen selection and leverage our knowledge of USPTO specimen requirements to maximize the chances your specimens will be accepted, and to avoid delays.
Description of Goods/Services
The description of goods and services should be precise enough to define your protection scope while still being acceptable to the examining attorney. Overly broad descriptions may face rejection, depending on the results of the search.
Phase 3: USPTO Examination
After filing, your application is assigned to a USPTO examining attorney who reviews it for compliance.
Initial Review
The examining attorney reviews your application for compliance with all legal requirements, including likelihood of confusion with existing marks and whether the mark is merely descriptive.
Office Actions
If issues are found, the USPTO issues an Office Action. The USPTO provides three months to respond to an Office Action. A response should address all issues flagged, and providing arguments and/or evidence to overcome refusals. If needed, a three month time extension is available.
Approval for Publication
Once the examining attorney is satisfied and all issues raised are addressed, your application is approved for publication in the Official Gazette, where it's open to opposition from third parties.
Phase 4: Publication & Opposition
Your mark is published, giving third parties the opportunity to oppose registration if they believe it would harm them.
Publication Period
Your trademark is published in the Official Gazette for 30 days. During this time, anyone who believes they would be harmed by registration can file an opposition or request an extension of time to oppose.
Opposition Proceedings
If an opposition is filed, it triggers a proceeding before the Trademark Trial and Appeal Board (TTAB). If you hire us, we vigorously defend your application while exploring settlement options if appropriate.
No Opposition
If no opposition is filed (or any opposition is resolved in your favor), your application proceeds to registration for use-based applications, or to the Notice of Allowance stage for intent-to-use applications.
Phase 5: Registration
The final steps before your trademark officially registers depend on the type of application you filed.
Use-Based Applications
If your application was filed based on current use in commerce (Section 1(a)), and no opposition was filed or any opposition was resolved in your favor, your application will proceed directly to registration. The USPTO will issue your Certificate of Registration.
Intent-to-Use Applications
If your application was filed based on intent to use (Section 1(b)), you will receive a Notice of Allowance after publication. You then have six months to file a Statement of Use demonstrating actual use of the mark in commerce, with extensions available if needed (up to 36 months total from the Notice of Allowance).
Certificate of Registration
Once all requirements are satisfied, the USPTO issues your Certificate of Registration. This document provides conclusive evidence of your exclusive right to use the mark for the goods and/or services listed in your registration, and enables you to use the ® symbol.
Phase 6: Maintenance
Trademark registration is not a one-time event. To maintain your rights, you must continue using your mark and file periodic maintenance documents.
Continued Use Requirement
Your trademark rights depend on continued use of the mark in commerce. If use stops, it will eventually lead to cancellation of your registration. Consistent, proper use of your mark maintains your rights.
Section 8 Declaration (Years 5-6)
Between the 5th and 6th year after registration, you must file a Declaration of Continued Use (Section 8) with specimens showing current use. Failure to file results in cancellation of your registration. At this time, you may also file a Section 15 Declaration to claim "incontestable" status, which provides additional legal protections.
Section 8 & 9 Renewal (Every 10 Years)
Every 10 years from registration, you must file both a Declaration of Continued Use (Section 8) and an Application for Renewal (Section 9) to maintain your trademark registration.
Ready to Protect Your Brand?
The trademark registration process requires expertise and attention to detail. Let's discuss how we can help secure your brand's future.
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