Introduction
Trademarks are a way to protect your business identity, products, logo and other designs that give you an edge over competitors. US Trademark filing can be used to prevent others from using identical or similar marks on their own goods and services for the purpose of deceiving consumers into thinking that those goods and services come from your company. A trademark is basically a brand name, logo or slogan associated with certain goods and services provided by a particular business or individual.
US trademark law
A trademark is a word, phrase, logo, or design that identifies a product or service and distinguishes it from others. A trademark can be registered with the United States Patent and Trademark Office (USPTO).
The USPTO registers trademarks under the Lanham Act. The Lanham Act defines marks eligible for registration as either:
- fanciful or arbitrary;
- suggestive;
- descriptive; or
Ensure that the mark is in use in commerce.
There are certain procedures that need to be followed by applicants who want their trademark registered. The most important of these procedures is ensuring that the mark is in use in commerce.
This means that even if you have a trademark, but it is not being used yet, you cannot register it unless you can prove that you have been using it for at least one year before applying for registration. Usually, an applicant uses its specimen of the mark as proof of use in commerce when applying for registration.
Complete the trademark application and pay the filing fee.
You will pay the filing fee in two parts. A $225 nonrefundable filing fee is due at the time you file your application, and a $100 application-processing fee is due within one month of filing. You can pay both fees online, or by check or money order made out to “United States Patent and Trademark Office” (USPTO).
To pay by credit card, call 1-800-786-9199 between 8:00 a.m. and 5:00 p.m., Eastern Time (ET), Monday through Friday, except federal holidays.
You can also send payment via postal mail by making it out to either “United States Patent and Trademark Office” or “U.S. Patent & Trademark Office.” Be sure to include your name on all communications with our office so that we know who sent what document back!
Wait for an examining attorney to review your application.
Once you’ve completed the US trademark application , it will be assigned to an examining attorney who reviews your submission. The examining attorney is the person tasked with determining whether or not your application meets all of the requirements of U.S. trademark law and has met all technical requirements for registration. They’ll check to see if you’ve provided a specimen; whether your mark is distinctive; whether there are any other similar marks in use that could form a likelihood of confusion with yours; and more.
If everything checks out, the examiner will issue an Office Action indicating what needs to be corrected in order for them to approve your application. If everything’s good when they’re finished reviewing it, they’ll send it back along to me (a different examiner) so I can approve it if they recommend doing so!
Respond to any Office actions from the examiner within six months.
The examiner will send you an Office action, which is a letter explaining why the trademark application was rejected. In response to the examiner’s letter, you must respond with arguments explaining why your application should not be rejected. If you do not respond to the Office action within six months (extended by one month for each request for information or correction), your application will be abandoned.
If you choose to respond to an Office action, your response will be reviewed by another examiner at USPTO and may result in further questions being asked of the applicant before final approval of registration occurs.
If approved, wait for publication of your mark in the Official Gazette.
After your mark is approved, it will be published in the Official Gazette. This gives third parties who may have concerns about your application time to oppose it. If you haven’t received any communication from the USPTO within three months of publication, you can assume that your mark has been approved.
If someone were to object to your registration after publication, they would file an opposition with the Trademark Trial and Appeal Board (TTAB). The TTAB will issue a decision based on whether or not their objections are valid and if so, what modifications should be made by applicant or opposer(s).
File a Statement of Use (SOU) or an Extension Request if you have not yet used your mark in commerce.
If you have not yet used your mark in commerce, you must file a Statement of Use (SOU) or an Extension Request to register the trademark.
After you submit your SOU or Extension Request, the Trademark Office will review it for formal compliance with the requirements for approval. If approved, they will issue a Notice of Allowance (NOA). At this point, there are still no rights conferred upon you under federal law if someone else has already been using a similar trademark.
You can then file up to three additional documents called: Response to Notice of Allowance; Intent-to-Use Application; and Amendment to Allege Use/Amendment from Intention-to Use Application
For more information about trademarks:
- What is a trademark?
A trademark is a word, phrase, symbol or design that identifies and distinguishes the source of goods or services. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than goods.
- What is a collective mark?
A collective mark identifies membership in an organization rather than individual products or services. Collective trademarks include such things as school insignia, club emblems, union names and seals and other symbols used by groups to indicate their membership in an association or organization. In contrast to trademarks that are developed by individuals or companies to identify their products or services, collective trademarks are created by groups like schools, clubs or labor unions for use solely on behalf of their members when they’re acting together under some common purpose related to those members’ interests. For example: if you’re part of an auto racing team with several members who each owns his own car but races under your name only because he wants publicity for himself through association with your well-known team name (e.g., Team X), then any logos associated with this team would be considered “collective marks.”
Conclusion
If you’re looking to apply for trademark, referring to an experienced attorney would definitely help you with the whole process.
