So all of our lecturing, pleading, and shameless scare tactics have finally worked and you’re ready to register your trademark. (We applaud you!) Now you just want an idea of what the whole process actually looks like. Well this blog post is for you, friend. Here we’ll break down the process into seven scrumptious, bite-sized pieces.
Step 1: The name.
The name we’re referring to here is the name that you choose to register as a trademark (your brand or business name, etc.). While this isn’t technically a step in the trademark registration process, it is a pretty crucial part of ensuring the success of your application. Why? Because if you don’t have a solidly trademarkable name, your application will likely be rejected. Which means, you’ll be out your application fee and you’ll be without a trademark. More about the importance of naming here and some tips on how to get it right here.
Step 2: The search.
Ok, this also isn’t technically part of the trademark registration process either, but, like naming, it is a crucial step. In fact, it would be straight foolish to skip this step. Why? Because even if you think you’ve found yourself an awesomely trademarkable name, if someone else has already registered the same (or a confusingly similar) your application may be rejected. So before you fork over the money for the application fee, and spend precious time filling out the application, make sure you do a search to see if your name has a good chance o success. More on search methods here.
Step 3: The application.
This is the official first step in the application process. As we’ve discussed elsewhere, the trademark application is a pretty confusing creature. It might appear straight-forward but there a lots of pitfalls for the unwary. Filling out the application generally entails determining your filing basis, classifying your goods and services, providing specimens and praying to the trademark gods that you got it all right. You’ll also submit fees to the USPTO along with your application (and maybe a bit later down the line as well depending on the type of application you file).
Step 4: The examination (no rubber gloves needed).
This is the part where the Examining Attorney (EA) at the USPTO goes through your application to determine if your mark is capable of registration. If the EA finds issues with your application, she will issue an Office Action, which is like a preliminary refusal of your mark. Office Actions can be based on a number of things including that your mark is too descriptive for registration (remember Step 1?), there are previously registered or applied for marks that are identical or similar to yours (remember Step 2?). Office Actions look like legal briefs, and you must respond with convincing arguments (legal and factual) of your own to overcome them. If you can’t change the EA’s mind, your mark will be rejected.
Step 5: The publication
If your application makes it past the EA (huzzah!), your trademark will be published in the USPTO’s Official Gazette. What’s this Official Gazette, you ask? Think stereo manual, meets real estate listings, meets crossword puzzle clues, meets Teen Vogue with a bit of Nicholas Sparks flair. Basically, it’s the kind of publication that you’d want to read… never. (Except if you’re a trademark holder, more on that in Step 7.) Seriously though, the Official Gazette is where your trademark is published for a 30 day period so that anyone who feels they may be harmed by the registration of your mark has a chance to oppose it. Oppositions are procedures before the USPTO Trial and Appeal Board (think Law and Order, except boring as fudge).
Step 6: The allowance (sort of like the money your mom used to give you, except not at all like that, actually).
This step is only for applications filed on an “intent to use” basis (ie, ifyou weren’t using the mark at the time you applied but you had a bona fide intention of using it. If your mark survives publication, the USPTO will issue a Notice of Allowance, which is basically your time to prove that the mark is now being used in commerce. You can six months to make the showing, although you can request an extension.
If you submitted your application based on actual use of the mark (not intended use), once you survive publication, your mark will be registered and you are golden! Except for Step 7…
Step 7: The police (No, not the 5-0. Not Sting, either).
You might think that once your mark has been registered the work is finally done. Well, not really. There are certain things that you must do to make sure that your mark endures. Namely, continue to use it in commerce as a trademark. Plus, you can now use the fancy ® trademark symbol. In fact you have to certify this use to the USPTO between the fifth and sixth years after your registration. You’ll also need to renew your mark after 10 years (assuming it is still used in commerce).
Just as important, however, is policing your mark to make sure that others aren’t misusing it (which can threaten it’s status as a mark) and to make sure that others aren’t infringing on it, which devalues your business and interferes with your revenue. But that's a post for another day…
