Trademark Registration [USPTO] - Process Overview
Step 1 - Trademark Search and Registrability Opinion Letter.
The first step, in the typical registration process of a trademark, is conducting a trademark search. A trademark search is a search of various trademark databases for the purpose of identifying identical or potentially similar/conflicting trademarks, their status, and their owners. The reliability of the trademark search results depends on the number and the quality of the databases searched, and on the search techniques used (wild cards, Boolean operators, phonetic searches, etc).
Is a trademark search needed? For most businesses, whether they are for-profit or non-profit, the answer is yes. It is wise to decide to invest in a business name, product or service name (or logo) only after you have a comfortable degree of certainty that the name or the logo is yours. Or at least, you should know the trademark risk you assume, before spending money and other resources with the registration of a particular trademark and its promotion through marketing.
What's the risk of not conducting a trademark search? That is what is called trademark risk. Trademark risk is the risk that someone else already applied for, or registered the same or a similar trademark, which may result in the registration being denied by the USPTO and the loss of the filing fees, among other things. In addition, it is the risk that someone else can claim rights in your trademark, or even worse, that someone else can claim superior rights to yours. If someone else can claim rights in your trademark, obviously your trademark is a weak mark. Furthermore, if someone else has begun using the trademark before you did, he is a senior user, and therefore, he may have superior rights in the trademark. A senior user may force you to stop using the trademark, and may sue you for trademark infringement. This is especially true when the senior user has the financial means to do so (e.g., a large corporation, etc).
Therefore, a trademark search should be conducted, preferably, before starting to use the trademark in commerce or before applying for registration, whichever occurs first. The scope of the search depends primarily on the budget available to the trademark owner. In other words, the scope of the search is a question of how much security the trademark owner can buy upfront.
Step 2 - Trademark Registration Application.
The second step, in the typical registration process of a trademark, is preparing and filing a complete trademark registration application with the USPTO. The trademark owner may do this on his own, pay for a filing service, or, pay a trademark attorney to conduct a preliminary review the information provided by the trademark owner, and prepare and file the application.
The preliminary review is very important as it can uncover obvious flaws or inconsistencies in the information provided by the trademark owner. These flaws, if undiscovered, may subject the application to a rejection by the examiner later. Here are examples of common flaws, which may cause trouble later during the prosecution of the trademark application: the trademark is descriptive of the goods and services; the mark drawing or the specimen are inappropriate; the filing basis is wrong; the description of goods or services is indefinite. A prior/preliminary review of the information provided by the trademark owner, by a trademark attorney, may help spot and, if not completely remove, at least reduce the number of these flaws before the application is filed.
Step 3 - Trademark Prosecution.
The third step, in the typical registration process of a trademark, is the trademark prosecution step. It comprises such actions as responding timely to any communications from the USPTO in regards to the status and/or the deficiencies of the application or the basis for rejection. Typically, few months after the filing of the application, a USPTO attorney/examiner will review the application, and if no deficiencies of the application or conflicts with other trademarks are found, the application is "allowed." From here, assuming no one will oppose the registration, it is generally only a matter of time before the certificate of registration is received by the trademark owner/applicant.
However, if the examiner finds that, for example, the proposed trademark conflicts with another registered trademark, or that the proposed trademark is descriptive of the goods or services associated with the trademark, he/she issues what is called a non-final Office Action. A timely response to the Office Action, using argument, evidence, etc, and addressing all the issues raised by the examiner, has to be prepared and filed with the USPTO in order to avoid abandonment of the application. If the examiner is convinced by the response, he/she will allow the application to proceed toward registration. Otherwise, he/she will issue a final Office Action. From here, typically, the options are to file a Request for Reconsideration and/or an appeal with the Trademark Trial and Appeal Board (TTAB).
Step 4 - Certificate of Registration.
Finally, once the application is "allowed," it will be published for opposition, and again, if no one opposes the registration of the trademark, the registration will be granted by the USPTO and a registration certificate will be mailed to the trademark owner. Typically, from the time the application is filed to the time the registration certificate is issued, it takes approximately 8-16 months.
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Marin Cionca, Esq.
Registered Patent Attorney
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