A business puts a lot of time and effort creating their brand, and a trademark is a significant part of that strategy. Mistakes are often made in the trademark registration process, however, and those mistakes can lead to delays, denials, and disappointments.
At the Law Office of Lindsey M. Straus, I will review your intellectual property, including trademarks, and advise you on all the steps that I can take on your behalf to protect your work and your business. I handle the paperwork, the research, and more to make sure my clients' expectations are exceeded and their businesses benefit because of it. Contact me at (508) 896-8008 to schedule a free consultation and learn more.
Understanding Trademarks
Trademarks are one of the most common and critical ways to grow a business and build a solid, loyal customer-base. The United States Patent and Trademark Office (USPTO) defines a trademark as
any word, phrase, symbol, design, or a combination of these things that identifies your goods and services. It's how customers recognize you in the marketplace and distinguish you from your competitors.
In order to be trademarked, the word, phrase, symbol, or design must be distinctive. It cannot be descriptive of your goods or services, generic or confusingly similar to a trademark that is already in use by businesses offering identical or similar goods or services.
Contrary to popular belief, a trademark does not have to be registered in order to provide your business with protection against infringement. However, registration provides more extensive rights and protections to the owner. For example, if a small business begins to grow outside of a specific geographic area, trademark registration can provide nationwide rights and protection.
The Process to Register a Trademark with the United States Patent & Trademark Office
There are several steps that must be taken timely and properly to register a trademark. First, of course, is an application. Once the application is submitted, it is reviewed by an Examining Attorney. If approved, the trademark is published. After publication, the trademark - assuming no one objects within 30 days of publication - is officially registered and protected. Each case may vary to some extent, but generally, the below steps are a part of this process.
Trademark Identification and Filing Basis
The process to register a trademark is relatively straightforward. It is important, however, to ensure that the application that is submitted is thorough and meets the requirements.
Your trademark must be distinctive. By researching the USPTO website, I can identify whether there is another trademark - either registered or applied-for - that is like, or similar to, the trademark you wish to register. Aside from ensuring its uniqueness, I will also help you decide:
- the kind of trademark to apply for (word mark, design or composite mark (e.g. logo), or sound mark); and
- the types of services and goods to which it will apply.
The USPTO ID Master List will help determine acceptable identification of services and goods and in what trademark classes in which they fall. It cannot be stressed enough how important it is to describe in full detail the trademark classes to which your trademark will apply because your trademark will generally apply only to these specific products or services and nothing else. For example, if you only apply to use the trademark for cosmetics, you cannot use it for soaps, unless you apply for the latter as well.
Next, we must determine the correct “filing basis” for your trademark. The requirements which must be met to proceed to registration depends on the chosen filing basis. There are four possible bases.
- Use In Commerce Basis: used when your mark is currently being used in commerce with your services and/or goods
- Intent-To-Use Basis: you have a bona fide intention to use your mark with your services and/or goods in the near future
- Foreign Registration Basis: you already own a foreign registration of the same mark for the same services and/or goods in your country of origin
- Foreign Application Basis: also known as the foreign priority basis, this basis is used when you already own an application that was filed in a foreign country that was filed within six months of your application in the United States for the same mark and the same services and/or goods.
As an attorney who has filed hundreds of trademark applications, I am well-versed in this step and can thoroughly and comprehensively make the necessary identifications and determinations, saving you time and money. Because the law governing applications to the USPTO is federal, I am able to file applications for businesses regardless of what state your business is located in.
Trademark Application and Approval
Once you have identified your trademark and filing basis, it is time to file the application. The filing fee is usually $250 per class of services or goods, although in some cases, where your business is offering new or unique goods or services, the fee will be $350 per class.
Examination Period
After submission of the application, it's a waiting game for approval. You are likely to receive a lot of spam mail offering you services at an additional cost. As I tell my clients, if the communication from anyone but me, hit delete or toss it in the trash. The Trademark Office is currently taking about eight months to reach applications. If any discrepancies or other issues are found with the application, I will receive a letter as your Attorney of Record to that effect called an Office Action. To keep your application active, it is necessary to reply to this letter within three months (which can be extended to six months upon payment of a small fee). Again, it is here that my experience as a trademark attorney will benefit you: I can help avoid issues from arising and, thus, avoid delays, and respond to any issues raised by the Examining Attorney in the Office Action.
Approval Status and Opposition Period
Once approved or denied by the Examining Attorney, I will be notified by letter. Approved applications are published in the “Trademark Official Gazette.” This newsletter is issued by the USPTO, and gives anyone who believes they may be harmed by the registration of your trademark 30 days to oppose it by filing a Notice of Opposition.
Notice of Allowance and Registration
If there is no opposition to your trademark, your trademark will likely be registered within the next 3-4 months if it has a commerce filing basis.
However, if your application is based on a bona fide intent to use the trademark in commerce, your trademark will not be registered, but I will receive a Notice of Allowance. This notice will require the submission of a Statement of Use showing that you are using your trademark in offering goods and/or services. If you have not begun using the mark in commerce, no need to worry: up to five 6-month extensions can be requested in which to file the Statement of Use. Upon acceptance of your Statement of Use, your trademark will be registered.
Trademark Registration FAQ
Questions swirl around the trademark registration process because it can be extensive and confusing. Here, common questions often asked by first-time clients are answered so that you can be informed and make smart decisions for your business.
How Long Does the Registration Process Take?
The time it takes to register a trademark varies. Typically, however, the process takes 12 to 18 months. Once the application is submitted, the USPTO is advising applicants that it is currently taking around 8 months for an Examining Attorney to review it.
What is the Biggest Reason Leading to Denied Trademark Applications?
The top reason trademark applications are denied is this: they are too similar to an already-existing, registered or applied-for trademark. The risk of confusion between the two trademarks means yours gets denied because the other one is already registered or their application was filed before yours. Making sure to conduct a complete search is critical to a smooth process.
How Can I Make a Trademark Strong?
Strong trademarks are those that do not use descriptive or generic words. Descriptive words like creamy, smooth, or bold are not distinctive enough. Generic words like hotel, laundry services, or tee-shirt business are not distinctive enough.
Strong trademarks are those that include fanciful, arbitrary, or suggestive trademarks:
- Fanciful trademarks are those with made-up words, like Pepsi® and Exxon®
- Arbitrary trademarks are those with actual words with no association of the goods or services, like Apple®
- Suggestive trademarks are those with words suggesting the quality of the goods or services but do not state the actual good or service, like Coppertone® for suntan oil
One of the services I provide as a trademark attorney is to help you get creative and ensure your that your trademark is a strong one. This allows you to avoid a denied application and improve branding strategies.
Do I Need a Lawyer to Register my Trademark?
Foreign-domiciled trademark applicants and registrants must be represented by a United States licensed attorney. This is not required for trademark applicants and registrants domiciled in the United States. It is required that all applicants maintain a current domicile address in all trademark filings.
Even when it is not required that an applicant be represented by an attorney, the benefits of legal representation can not be understated. An experienced trademark lawyer, at a minimum, will prepare accurate applications and timely respond to legal inquiries from the USPTO.
Contact a Trademark Registration Lawyer in Brewster. Barnstable County Today
Trademark registration offers protection, but you must submit a thorough, comprehensive, adequately supported application. At the Law Office of Lindsey M. Straus, I will work with you every step of the way. Contact me today to schedule a free consultation either by filling out the online form or calling me at (508) 896-8008.
