Intellectual property diagramA U.S. federal trademark registration is your business’s most important asset.  It’s how consumers in the marketplace identify your goods and services apart from those of your competitors.  It’s also invaluable in stopping your competitors from adopting trademarks that are confusingly similar to yours.

But the path to securing a U.S. federal trademark is often riddled with obstacles.  With that in mind, we have prepared this article so that trademark owners can understand the U.S. trademark registration process and the steps involved therein.

Step1: Trademark Research
Although technically not required, it highly recommended that a trademark be cleared for use through Trademark Research prior to using or applying to register a trademark with the U.S. Patent and Trademark Office.

A properly conducted research report will both provide you with the peace of mind that you may now use your brand without fear of infringing upon another’s prior-used trademark with the knowledge that your trademark is entitled to register in consideration of the numerous possible refusals which may be issued blocking registration of the application. Also, as government filing fees are non-refundable, it is often more cost-effective to ensure that your trademark is clear for registration prior to incurring filing fees to apply to register the same.

Step 2: The Application Process
Once cleared though a Trademark Research report, you should apply to register your trademark with the U.S. Patent and Trademark Office.  In doing so, know that your trademark does not need to be in use to apply for protection.  This is because there are generally two types of applications.  Applications based upon trademarks that are already in use in interstate commerce (a Use-Based Application) and applications intended to reserve an applicant’s future use of a trademark (an Intent-to-Use Application).

Step 3: The Examination Process
Approximately three to five months after the application is filed the mark is assigned to one of roughly 350 trademark examining attorneys who work for the U.S. Patent and Trademark Office.

The trademark examining attorney reviews the application and determines whether mark is entitled to registration. One of their primary functions of the examining attorney is to search the federal registers to determine if the applied-for trademark would be likely to cause confusion with a prior applied-for or registered trademark as well as to consider other possible refusals that could block registration.

If the examining attorney determines that there are no issues which need to be addressed and that the trademark is entitled to registration the examining attorney will approve the trademark for publication (See Below).

However, if any Procedural Issues (e.g., clarification of the applicant’s name or entity type, amendments to the identification of goods, disclaimers, color claims, etc.) or Substantive Refusals (e.g., trademark is merely descriptive or likely to cause confusion with a prior registered trademark) need to be addressed the examining attorney will issue what is known as an Office Action.

An Office Action is the colloquial term for official correspondence from the U.S. Patent and Trademark Office concerning an applied-for trademark.  If an Office Action is issued an applicant is generally given six months to respond to the requirements in the Office Action or the mark will be Abandoned.

If an acceptable Response to an Office Action is filed the examining attorney will approve the mark for publication.

If a response to an Office Action is not accepted the examining attorney will issue what is known as a Final Office Action.

Once a Final Office Action is issued an applicant has six months to either file a Request to Reconsider the Final Office Action, let the mark abandon, or file an Appeal of the Refusal to the Trademark Trial and Appeal Board (the “Board”).

On appeal, if the Board decides in the favor of the applicant the examining attorney’s refusal will be reversed and the mark approved for Publication for Opposition. If the refusal is upheld by the Board, the applicant is permitted to file a federal district court action or appeal the matter further to the U.S. Court of Appeals for the Federal Circuit seeking to set aside the Board’s decision.

Again, all of the foregoing is if the application is refused.  If vetted properly, applications are generally approved for Publication for Opposition as set forth above.

Step 4: Publication for Opposition
Approximately Four to Six weeks after being approved for publication a trademark application is published for opposition.

The mark is published in a book of all published trademarks before the U.S. Patent and Trademark Office known as the Official Gazette.  Trademarks are published for opposition for 30 days. During this period any party wishing to object to the registration of the trademark may do so by filing a Notice of Opposition.

Although rare, if filed a Notice of Opposition institutes an opposition proceeding to determine whether the opposer can set forth sufficient grounds to block the registration of your trademark.   Most opposition proceedings resolve somewhat quickly.  However, a fully litigated opposition proceeding may last in excess of 18 months.

Again, however, this is exceedingly rare and the vast majority of trademark applications that are Published for Opposition are never opposed simply moving on to Stage 5: Registration of Your Trademark. 

Step 5: Registration of Your Trademark
Provided that no Notice of Opposition is filed against your trademark, approximately Four to Six weeks after the opposition period ends, your trademark will receive its Certificate of Registration if it was a Use-Based Application or a of Notice of Allowance if it was an Intent-to-Use Application.

When a Notice of Allowance is received all that is required to complete the registration of the mark is the filing of a Statement of Use.  Once filed, an Intent-to-Use Application will receive its Certificate of Registration as well.

Step 6: Renewals of Registration
Finally, once registered a Trademark Registration may be maintained for as long as use of the trademark continues provided the owner files the required Trademark Renewals.

To maintain the registration a registrant is required to file a Section 8 Affidavit of Continuous Use with the U.S. Patent and Trademark Office between the Fifth and Sixth Anniversary of the date of registration of the mark.

Additionally, the registrant is required to file a Combined Section 8 Affidavit of Continuous Use and Section 9 Application for Renewal on or about every Ten Year anniversary of the registration of the mark.

And there’s a brief overview of the U.S. federal trademark registration process.  As always, if you have any questions regarding this or any related topics Contact Us at The Trademark Company.