A U.S. federal trademark registration is a valuable commodity. 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
Prior to starting use of a new trademark you should check to make sure someone else is not already using an identical or highly similar trademark. A professional Search 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 as well as knowing that your trademark is likely to be registered. As government filing fees are non-refundable, it’s often more cost-effective to ensure that your trademark is clear for registration prior to spending the money to apply to register the same.
Step 2: The Application Process
Once it is clear your trademark is available, you should apply to Register Your Trademark with the U.S. Patent and Trademark Office (USPTO). Of note, there are generally two types of applications: In Use and Intent-to-Use. As such, even if you have yet to begin use of your trademark you can still file and protect it securing your valuable trademark rights once it is filed.
Step 3: The Examination Process
Roughly 6 to 8 months after the application is filed your trademark is assigned to a trademark examining attorney in USPTO. Traditionally this wait was roughly 3 months, however, in recent years the USPTO has struggled to keep pace with the influx of new filings as a result of the Amazon Brand Registry and purported foreign applicant fraud. As a result, expect to wait 6 to 8 months until your application is initially examined.
Returning to the actual examination, the trademark examining attorney will review your trademark and determine whether it is entitled to registration (i.e., Is it too similar to another trademark already in use, etc.).
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 (More on this Below).
However, if there are any minor issues (e.g., clarification of the applicant’s name or entity type, amendments to the identification of goods, disclaimers, color claims, etc.) or more significant refusals (e.g., trademark is merely descriptive or likely to cause confusion with a prior registered trademark) the examining attorney will issue what is known as an Office Action.
An Office Action is official correspondence from the USPTO. Currently, if an Office Action is issued you have 6 months to file an Office Action Response and get your trademark back on track to registration. Of note, in December of 2022 the USPTO is shortening this period to only 3 months.
Once an acceptable response is filed the examining attorney will approve the mark for publication.
Step 4: Publication for Opposition
Approximately 4 to 6 weeks after being approved for publication your trademark application will be published for opposition for 30 days. During this period any party wishing to object to the registration of the trademark.
Opposition is exceedingly rare and the vast majority of trademark applications that are Published for Opposition are never opposed and simply move on to Stage 5: Registration of Your Trademark.
Step 5: Registration of Your Trademark
Provided no one opposes the registration of your trademark, if you filed a use-based application (i.e., your trademark was in use when the application was filed) approximately 4 to 6 weeks after the 30-day opposition period ends your trademark will register and you will receive an electronic registration certificate.
If, however, you filed an intent-to-use application you will receive what is known as a Notice of Allowance. This effectively is a permission slip that says once you begin using your trademark you simply need to let the USPTO know by filing a Statement of Use. Once filed, you will then receive your electronic certificate of registration.
