The trademark registration process is an exciting, yet lengthy process. You're building your business step by step, brick by brick, and you want to make sure that you own your brand. It begins with submitting an application to the United States Patent and Trademark Office (USPTO). The application will request your personal information such as your name, address, and email address, along with information about the trademark.
· Is the mark a standard character word mark?
· Is it a design mark?
· If it is a design mark, what is the description of the mark?
· Who is the owner of the mark?
· Should any elements of the mark be disclaimed?
· Is there any translation of the mark?
Once your application is submitted, it will be assigned to a trademark examining attorney. This usually takes about 3-4 months. Once it is assigned to an examining attorney, your application will be reviewed. The examining attorney will conduct a search to see if your mark is confusingly similar to another mark. The examining attorney will also assess your mark to see if your mark is merely descriptive, ornamental, fails to function as a trademark, primarily geographic, deceptively misdescriptive, or if your class description is too broad. Your mark will be examined from several different angles to see if it is registerable.
The examining attorney will send you an Office Action if your mark is rejected for one of the aforementioned reasons. You will be able to respond to the Office Action and outline your arguments or make certain edits to your application. This is why it is important to hire an attorney because an experienced trademark attorney will be able to provide you with an analysis of your mark before filing the application.
If the examining attorney finds that your mark is registerable, then the next step is publication. You will receive a Notice of Publication indicating that your trademark will be published in the Trademark Official Gazette (TMOG) for 30 days. This is GREAT news because it means your trademark has received preliminary approval!
The TMOG is published every Tuesday and contains information and a drawing for each mark published, along with a list of cancelled and renewed registrations. During the 30 days that your mark is listed in the TMOG, any third party who believes they would be damaged or otherwise harmed by the registration of your mark can file an Opposition with the Trademark Trial and Appeal Board (TTAB). A third party can also file an extension of time to oppose if more time is needed. If there are no oppositions or extensions filed, then your trademark will be registered!
If your application was based on an Intent to Use, the examining attorney will send a Notice of Allowance which will give you a 6 month deadline to file a Statement of Use. If you still haven’t started using your mark in connection with your goods and services, then you can file an extension and receive and additional 6 months to file the Statement of Use. You can request up to 5 extensions.
If the examining attorney approves your Statement of Use, then your mark will be registered!
The trademark process can take anywhere between 8 – 12 months, possibly even longer if the application is based on an intent to use. But once your trademark is registered you will have the EXCLUSIVE RIGHT to use your mark in commerce in connection with your goods or services. Brand ownership is the goal!