Learn the Basics of Trademark Registration Process
Step1: Trademark Research
Although not required, it is always recommended that a trademark be cleared for use through Trademark Research prior to filing for protection with the U.S. Patent and Trademark Office.
Clearing your mark for use before filing for protection of the same provides you with the peace of mind that you may now use and develop your brand without fear of it later being rejected by the U.S. Patent and Trademark Office.
Also, as filing fees are non-refundable it is often more cost-effective to ensure your mark is clear for registration through a simple Federal Research Report.
Step 2: The Application Process
We prepare and file your application with the U.S. Patent and Trademark Office. Trained in the methods used by the U.S. Patent and Trademark Office in examining applications, our professionals' filing methods ensure that our clients' marks register as fast as possible with few delays.
There are two general types of applications, those based on a trademark's existing use in commerce (Use-Based Application) and those to reserve a clients' future use of a mark (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.
If he or she determines that there are no issues which need to be addressed and that the mark is entitled to registration the examining attorney approves the mark for publication (See Below).
However, if any Procedural Issues (e.g., clarification of the applicant's name or entity type) or Substantive Refusals need to be addressed the examining attorney will issue what is known as an Office Action.
An applicant is given six months to respond to an 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 a Final Office Action will be issued.
Once a Final Office Action is issued we have six months to either file a Request to Reconsider the Final Office Action, let the mark abandon, or file an Appeal of a Refusal to the Trademark Trial and Appeal Board ("Board").
If Board decides in our favor the examining attorney's refusal will be removed and the mark approved for publication for opposition. If the refusal is upheld by the Board, we may file a federal district court action to appeal the Board's decision although this is rarely done.
Step 4: Publication for Opposition
Approximately Four to Six weeks after being approved for publication, the application is published for opposition.
The mark is published in a book of all published marks before the U.S. Patent and Trademark Office known as the Official Gazette.
Marks are published for opposition for 30 days. During this opposition period any party wishing to object to the registration of the mark may do so by filing a Notice of Opposition.
Although very rare, if filed our experienced professionals are ready to assist you in responding to and moving your mark passed an opposition proceeding and towards registration.
Step 5: Registration of Your Mark
Provided that no Notice of Opposition is filed against your mark, approximately Four to Six weeks after the opposition period ends, your mark receives its Certificate of Registration if it was a Use-Based Application 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.
Step 6: Renewals of Registrations
Once registered, a Trademark Registration may be maintained for as long as use of the Trademark continues.
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.
As part of both or Standard Package and Platinum Package The Trademark Company maintains a calendaring system of all of our customers' pertinent dates and provides free notices to our clients of upcoming filing dates so that their registrations can be maintained.
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