Are you a new business owner OR someone who has spent years of blood and sweat building a brand?
Although the brand you created was YOUR idea, anyone can copy it.
You may have heard about the USPTO for trademark registration. However, you may be unaware of its benefits to your business, and may not understand the importance of registering it.
Imagine your hard work and legacy being copied by someone else after all of these years!
It’s something you don’t want to happen to you, right?
This article will go through what happens during the trademark process, from application to approval
Step-by-Step Guide for Trademark Registration
Have you ever gone trekking without a map or a general idea of where you’re going?
It will be hard to navigate, or worse, you will get lost! It is almost the same with trademark registration without studying and researching its process (or without someone who knows the process).
You could make some serious mistakes and lose your registration as a result. Skipping steps or hurrying through the process is not advisable. To be honest, I recommend that you seek legal assistance.
Below is the step-by-step guide for trademark registration.
Step 1 – Create a Strong Mark
The first step of the trademark process is coming up with the mark itself.
However, I find it’s best not to stop with your first “perfect” idea – often this will end up blocked during trademark registration (more on that later).
In general, there are registrable marks and unregistrable marks. Unregistrable marks include the following:
If your mark is merely a description of the goods and services, such as “Laser eye surgery” or “Custom-made clothing,” then it cannot be registered because it is not distinctive.
If the mark has acquired a secondary meaning as a result of significant advertising and usage in commerce, an exception to this rule may apply. Descriptive marks are not registrable.
Generic marks are when a mark becomes a common term in the market. These types of marks lose their strength as a trademark. For instance, Band-aids, Kleenex, and Aspirin are all brands.
Before we proceed to registrable marks, check out this video from Velcro about Generic Marks.
Suggestive marks are registrable marks that are similar to descriptive marks. The difference between suggestive and descriptive is that it requires imagination, thought, or perception to conclude the nature of the goods and services.
It may be something like “The Highest Quality” or “Today’s Fad,” while a descriptive one would be “Stylish Fashion” or “Luxury Brand”. A good example of a suggestive mark is Nike’s “Just do it” slogan, which is a registered trademark.
Marks, such as the Apple iPhone, can be arbitrary and typically have a common meaning but are used for products or services that don’t relate to their ordinary meaning.
For example, the Apple iPhone company is named as such because apples are often associated with health and knowledge.
What would you think if I told you that the company is named as such because its logo looks like an apple? The logo has nothing to do with health or knowledge but it looks like an apple.
These types of marks are strong and are protectable under trademark law.
The use of fanciful marks, or those that have no actual dictionary meaning, is the strongest type of mark for trademark protection.
Fanciful marks are distinctive and well-known; this makes them easy to identify and provides the owner with significant rights in their ownership. Examples include Kodak, Xerox, and Exxon.
These types of marks are the strongest and are protectable under trademark law.
If you want to learn more about how to create a strong brand name, check out this in-depth guide about Brand Naming and Trademark Protection.
Step 2 – Comprehensive Clearance Search & Analysis
Your trademark application process will go more smoothly if you know what marks are registrable and unregistrable. However, some registrable marks may be impossible to register.
You can improve the chances that the USPTO will approve your mark by doing a clearance search and analysis.
This step will tell you whether you have a similar mark registered with the USPTO. If another similar mark is already registered with the USPTO, your mark will be rejected. And this will cost you time and money.
To avoid this, you need to search for both registered trademarks and unregistered marks.
You can conduct a registered trademark search on the TESS search engine on uspto.gov for the United States, and on the WIPO global brand database international. Please note that this is NOT your traditional “Google” search.
You must also conduct research for unregistered trademarks in your local area because they may have common law rights.
As you can see, trademark law is a system of giving a trademark owner exclusive rights to a brand name. The purpose of trademark law is to prevent customer confusion and to protect the owner’s rights.
Bottom Line: You should hire an attorney to conduct a more comprehensive search. This search uncovers marks that your DIY search may not have found.
Step 3 – Filing of Application for Trademark Registration
After conducting your research and discovering that your mark is “kind of” registrable, you can now apply to the USPTO.
The reason I used the term “kind of” is that the USPTO makes the final determination of whether your mark qualifies for registration. You stand a greater chance of knowing your potential success rate by hiring an attorney. The Attorney will go through the same exact legal analysis that the trademark examiner follows at the USPTO.
Somewhere in the initial application form, you will encounter a section where you will be asked if your application filing basis is In-Use (Section 1A) or Intent-To-Use (Section 1B).
What is In-Use or Section 1A?
You may apply based on “use” in which you will list the date of the mark’s first use if the mark you are registering for is already in use in commerce.
In this case, the specimen of use will be submitted at the time of application for no additional fee.
If you want to learn more about Specimen, check out this Specimen Guide to know what is acceptable to USPTO.
What is Intent-To-Use or Section 1B?
You must file based on “intent to use” if the mark you are registering has not yet been used but you have real intention to use it in the future.
The USPTO will give you 6 months to file a statement of use (proof that you are using your product or service in the commerce). If you cannot provide it, you may request for an extension for another 6 months. You can only have 3 extensions.
The Waiting Game…
Within a week, USPTO will notify you that your trademark application has been received and the waiting game will now begin.
Before, it took three months for USPTO to assign an application to an examiner. Today, it takes about 6 months or more for it to be assigned to an examiner. The USPTO was not prepared for the surge in applications that occurred during the COVID pandemic.
While they were considering layoffs, they received an enormous quantity of applications. They hired roughly 70 new attorneys to deal with the influx of applications.
Step 4 – Examination Process for Trademark Registration
After 8 months, the application will be assigned to an examiner. The examiner will review the application for any administrative or substantial issues. They will either:
- Submit for Approval (Publication Phase)
- Issue an Office Action
Do you still recall that I mentioned your mark is “kind of” registrable? Well, your application may be rejected by the examiner at this phase or it will be opposed during the publication phase (more on this later).
It could also be that during your initial application, you may have missed or provided inadequate information. In that case, you may receive an office action. In an office action response, you have to send them anything they request. If everything is accurate and meets the USPTO’s requirements, then you may proceed to the publication phase.
Step 5 – Publication Phase
For 30 days, your mark will be published publicly in the official gazette. This allows trademark holders to object to your trademark filing. If there are any similarities, they can challenge your mark, and the Trademark Trial and Appeal Board will handle it (TTAB).
TTAB is a neutral body that functions as a court for trademark matters at the USPTO. The Board’s administrative trademark judges are authorized to determine a party’s right to register a trademark with the federal government.
Step 6 – Receive Registration Certificate
If there are no objections to your trademark filing, congratulations! You will receive your trademark certificate.
There are many advantages if you trademark your business. Check out this article about the 6 benefits of the trademark in your business.
Understanding the process of trademark registration will save you time and money. There are several different twists and turns your brand can take during the registration process.
Prior to submitting an application to the USPTO, it is critical to create a “registrable mark” and conduct a clearance search and analysis. You must NOT miss these steps since they will serve as the basis for how likely your trademark will be approved.
Now that you have decided on your mark, it’s time to hire an attorney to prepare the initial application form.
After you receive a notification that USPTO has received your application, your application will sit in limbo for around 6-8 months.
After 8 months, it will be assigned to an examiner. They will either approve your application and move on to the publication phase or issue an office action.
If approved, it will be published in the official gazette for thirty days and made accessible to the public. In the event that your proposed trademark is somewhat similar to another party’s trademark, they have the right to oppose your mark.
If there are none, congrats! You will receive your certificate of registration.
Get some help…
As your business grows, so does the risk of losing what you’ve worked hard to earn. The first step in ensuring the long-term success of your company is to register it for a trademark.
It is not a requirement to have an attorney to register your mark in the United States. However, trademark registration can be difficult if you’re doing it alone. There could be implications if you don’t conduct research prior to registering your trademark.
Most DIY applicants receive the most office actions and rejections within the USPTO. Also, there are post-registration actions that may arise that could potentially affect your mark. I suggest you seek help from an actual trademark attorney. Opting to provide legal services to yourself in a DIY manner could potentially expose your business to legal issues in the future.
With nearly a decade of experience in Trademark Law, our office can help you register your trademark seamlessly. Schedule a meeting in this LINK and start your trademark journey today!