When it comes to registering a trademark, a lot of people are under the impression that you fill out the form, pay the fee and your mark is automatically protected. Unfortunately, this type of instant gratification is not the business model of the USPTO (United States Patent and Trademark Office).
In reality, the application process is quite involved requiring a thorough examination for formalities and substance. The average time for a trademark application to make it through the process is about 10 months, but that time frame can be longer or shorter, depending on whether you encounter any problems with your trademark application.
Here’s what a typical trademark application goes through…
Application Phase
This is where your trademark application is prepared and then filed. Hopefully, your application is prepared in a way to make sure that it meets all the administrative, substantive and formality requirements that will be examined by the Trademark Office. Before you file you also have a chance to “vet” you mark to make sure that no one else has already called dibs on your chosen mark, or similar a mark which is similar in its look, sound or meaning. The Trademark Office will be looking at these issues. Hopefully, you’ve hired an expert trademark attorney to assist you in making sure your application fits the guidelines, best practices and requirements set forth by the Trademark Office.
Review Phase
Once your trademark application is filed, it is examined for administrative issues by Trademark Office Paralegals (Your trademark application will be considered “Void” if it fails to meet some basic administrative requirements.), and then goes into a queue, awaiting assignment to a Trademark Examining Attorney. Trademark Examiners are lawyers with extensive experience in trademark law surrounding trademark applications. These folks are in such demand that it can take 3-4 months for your application to even be assigned.
Once the Trademark Examining Attorney has had a chance to review your application, they will likely often issue you an Office Action stating that your trademark application fails to meet certain formality or substantive requirements for registration (don’t worry, there are ways to overcome this!), or a Notice of Publication (awesome!). Trademark applications filed by Applicants are 50% more likely to get rejected than those filed by experienced Trademark Attorneys.
Office Action
As discussed, the Trademark Examining Attorney will likely issue an Office Action that there is something wrong with your application that requires a response. While the rules for trademark applications are set forth, often the interpretation of those rules and their application to your specific application is dependent upon the subjective opinion of the specific Examining Attorney who is examining the trademark application. Likewise, knowing how to avoid rejections and/or overcoming the Examining Attorney’s rejections once they are issued often requires experiential knowledge that derives from dealing with many trademark applications over a significant period of time. A rejection in Trademark Office Action could be any number of things, from merely requiring an appropriate disclaimer to a legally explaining why another mark is not confusingly similar to yours. The USPTO allows you six months to respond to an Office Action. If you don’t already have an experienced trademark attorney helping you with your trademark application at this point, it’s time to get one. A good trademark attorney can suggest strategies to overcome an Office Action and put your trademark in the highest likelihood of success to get it registered.
The expert trademark attorneys of Sherman IP LLP will be at your side throughout the pre-registration process to advise you on your next steps.
Notice of Publication
Once the Trademark Examining Attorney has approved your mark, the Trademark Office will issue a Notice of Publication in the Official Gazette. If anyone wishes to oppose your mark, they have 30 days from the Notice to do so. Most trademark applications are not opposed, but when it happens, having an expert trademark attorney on your side can be the difference between success and loss of your mark.
Notice of Allowance or Certificate of Registration
If you’ve filed an intent-to-use trademark application, the Trademark Office will issue a Notice of Allowance. At this time, you must file a Statement of Use in order to continue the registration process.
If you’ve already filed a Statement of Use, or had filed a Use-Bbased Trademark Application (where you submitted specimens when you filed), and no one opposes your mark, the USPTO will simply issue a Certificate of Registration. It’s time to break out the champagne! Once your Certificate of Registration is received, your Registration Certificate will be mailed to you. You can frame it, share it on facebook and keep it safe.
Ongoing Trademark Maintenance
Once your trademark is registered, there are few things you need to do to keep your mark protected. The most important thing is to set up alerts to make sure no one else is infringing on your mark. This can include Google alerts and monitoring the Official Gazette for new marks. This is something you can discuss with your expert trademark attorney. Find the best strategy to police and protect your trademark. Only you will protect your property. If you don’t tell infringers to stop, then no one else will and your trademark will become weaker until it is no longer of any value.
It’s also important to maintain your current correspondence address with the USPTO so that you won’t miss any notices. You’ll need to keep a look out for notices about maintenance documents. About five years after your registration issues, and then on every tenth anniversary of the registration date, you will need file a Declaration or Affidavit that you are continuing to use the trademark with your goods or services. Failure to timely file these “Declarations of Use” will cause the Trademark Registration to be removed from the Federal Register of Trademarks; i.e. the Trademark Registration will no longer be valid. The Trademark Office uses this method to remove trademarks that are no longer being used so other people can use them.
Don’t Delay!
The trademark application process is long, involved and requires patience and knowledge. If you have already filed your trademark application, we hope you did it right. If you haven’t filed yet, learn more by calling now at (424) 229-6800.