What is the Process to Obtain a Federal Trademark?
Obtaining a federal trademark in the United States is a crucial step in protecting your brand, logo, or product name from unauthorized use. Trademarks provide legal rights and exclusive ownership of your intellectual property, allowing you to use it for commercial purposes and prevent others from using it without your permission. The process of obtaining a federal trademark involves several key steps, outlined below.
Preliminary Research:
Before diving into the application process, it’s essential to conduct thorough research to ensure your desired trademark is unique and not already in use. This includes searching the United States Patent and Trademark Office (USPTO) database, as well as other online resources and business directories for marks that are deemed confusingly similar. A comprehensive search helps avoid potential conflicts and rejections. Conflicts with other marks can result in demand letters or worse legal actions for infringement. In addition, picking a mark that is confusingly similar to one already applied for or registered can result in the denial of your application and cost your business non-refundable fees and expenses.
Identify Appropriate Trademark Class and Description:
Trademarks are categorized into classes based on the type of goods or services they represent. You must determine the correct class under which your trademark should be registered. The USPTO has a detailed classification system to assist with this. Drafting the description of your goods and services is also a critical element in avoiding unnecessary refusals from the USPTO and potential conflicts with similar but distinguishable marks.
Prepare and File the Application:
To initiate the trademark registration process, you need to complete and submit an application and pay the corresponding fee to the USPTO. The application is typically filed online through the USPTO’s Trademark Electronic Application System (TEAS). It includes details about your trademark, its description, the class of goods or services, and your basis for filing (use in commerce or intent to use). Filing is the beginning of a long process of review.
Examination by the USPTO:
Once your application is submitted, it goes through a review process by USPTO attorneys called examiners. An assigned examiner will assess the application for compliance with legal requirements and evaluate whether your trademark is distinctive and doesn’t conflict with other trademarks in the USPTO database. Currently, this is an extraordinarily long process and can take half a year or longer to receive feedback from an examiner. Once an examiner reviews the application, they may approve it to move on to the next step in the application process or issue a refusal called an office action, which may be substantive or non-substantive. If you receive an office action, you likely want experienced legal counsel to review and help you respond at this time. If you do not respond successfully to an office action, you will be issued a final refusal and risk losing your application.
Publication for Opposition:
If your trademark application clears the initial examination, it will be published in the USPTO’s Official Gazette, allowing third parties to oppose your registration within a specified timeframe (usually 30 days). This is when a third party can initiate a formal legal proceeding to block registration of your mark by typically claiming that your mark is confusingly similar to their and that they have senior rights. If no one opposes, your application moves closer to registration.
Issuance of a Notice of Allowance:
In cases where you filed an “intent to use” application and your trademark has not yet been used in commerce, the USPTO may issue a Notice of Allowance after the opposition period. This notice allows you a limited time (usually six months) to start using the trademark and submit a Statement of Use. You will have to submit a legally acceptable specimen proving use within this time period or seek an extension. If you do not file within the designated time period, your application will be deemed abandoned and unable to move foreword.
Registration Certificate:
Once your trademark application is approved, and all required documents are accepted, the USPTO will issue a federal registration certificate. This certificate provides proof of your exclusive rights to the trademark and grants you legal protection nationwide. Success (but that’s not all)!
Maintenance and Renewal:
Registered trademarks require periodic maintenance and renewal to remain in force. You must file maintenance documents between the 5th and 6th year and every 10 years to retain its protection. If you failed to file the required maintenance documents, your mark will be abandoned and you will lose all your hard earned rights your obtained via the federal registration.
Enforce and Protect:
Last but not lease, with your federal trademark registration in hand, you have a legal obligation to protect and enforce your rights against others. Again, if you routinely fail to enforce your rights, you may end up losing your own trademark rights. It’s your responsibility to monitor and protect your trademark in the marketplace.
Obtaining a federal trademark can be a complex and time-consuming process, but it’s a vital step in safeguarding your brand’s identity and value. It’s often advisable to seek legal counsel or the services of a trademark attorney to navigate this process successfully and ensure that your trademark receives the protection it deserves. If you have questions about your trademark or would like to seek federal registration, please feel free to reach out to our trademark attorney Christina Saunders Jones at christina@saunders-saunders.com or by phone at 303-396-0270.