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The Trademark Application Process

A federal trademark registration provides several benefits not afforded under “common-law” rights. These benefits include: (a) a legal presumption that the registrant is the owner of the mark and that the registrant has the exclusive right to use the mark nationwide with the goods or services listed in the registration; (b) the mark will exist on the USPTO database, putting others on notice of possibly infringing marks; (c) the right to bring an infringement action in federal court; and (d) the right to use the registration symbol (®) next to the mark. There are 5 stages involved in a federal trademark registration process.

1) Carefully Selecting a Trademark

It is important to carefully select a mark since not every mark is registrable or legally protectable. A mark owner must also consider the mark format, specifically if it a standard character mark or a stylized mark, and the goods and services to which the mark will apply. It is a good idea to do a preliminary search on the USPTO database to determine whether there are similar word or design marks used on related goods and services that are registered or pending. One must also determine the basis for filing an application (use-in-commerce or “intent-to-use”). Under the intent-to-use basis, applicants must have a bona fide intent to use the mark in commerce in connection with the goods or services listed in the application . Under the “use-in commerce” basis, applicants must demonstrate that they have used the mark in commerce in connection with the goods or services listed in the application prior to submitting the application.

2) Preparing and Submitting an Application

Applications can be filed using the Trademark Electronic Application System (TEAS) on the USPTO website or paper applications mailed to the USPTO. Each application requires an applicant to pay a fee, which is based on the type of application form used and the number of International Classes of goods and services listed in the application. Paper applications have the highest filing fee. An applicant can monitor the progress of their application through the Trademark Status and Document Retrieval (TSDR) system.

Applicants must provide various information in the application, including the owner of the mark (applicant), a name and address for correspondence, a drawing of the mark, the goods or services used with the mark, the application filing fee, the basis for filing, a specimen for used-based applications, and the applicant’s signature. Further, an applicant must list the International Classes that the goods and services fall within. If the USPTO ID of Goods and Services Manual does not contain an accurate listing of the goods and services, an applicant must create their own description using clear and concise terms.

3) Working With the Assigned USPTO Examining Attorney

After the USPTO determines that an applicant has met the minimum filing requirements, the application will receive an application serial number and will be forwarded to the examining attorney. This process may take several months. The examining attorney will determine if the application complies with rules and statutes and confirm that the correct fees were paid.

If the examining attorney decides that the mark should not be registered, the USPTO will issue an Office Action explaining why it refused registration and any describing any technical or procedural errors in the application. The applicant has six months of the mailing date to respond to the Office Action, or the application will be declared abandoned. The applicant may be able to overcome the Examiner’s refusal by amending the application or submitting convincing arguments against the Examiner’s bases for refusal.

4) Approval and Publication in the USPTO’s “Official Gazette”

Once the examining attorney approves a mark, the mark is published in the “Official Gazette,” the USPTO’s weekly publication. Third parties have 30 days from the publication date to file an opposition to registration or request an extension of time to oppose if they believe they may be damaged by registration of the mark. Opposition proceedings will be held before the trademark Trial and Appeal Board, an administrative tribunal within the USPTO.

If an applicant has filed an “intent-to-use” application, the USPTO files a notice of allowance eight weeks following publication of the mark. The applicant has six months to use the mark in commerce and submit a statement of use or request a six-month extension. Failure to do either will result in the application deemed abandoned.

5) Maintaining Your Registration

In order for a trademark registration to remain valid, a registrant must file an Affidavit of Use between the fifth and sixth year following registration and within the year before the end of every ten-year period after the registration date. The registrant must also file a Section 9 renewal application within the year before the end of each ten-year period following the registration date. Both have a six-month grace period before additional fees are imposed. Failure to file the above will result in cancellation of the registration.

If you are interested in filing a trademark application and need assistance, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining trademark registrations for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies, some of whom have over a hundred trademark applications and registrations in the US and worldwide.