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How to Register Your Trademark With the USPTO

Man Working on his Trademark Registration

The Importance of Trademark Registration for Your Business

Like any other asset, trademarks may be owned, licensed, or transferred just like any other property in your business. Having a strong trademark helps consumers identify and distinguish your goods and services from others in the marketplace, allowing you to build goodwill and brand recognition and, ultimately, boost your bottom line. It’s therefore important to protect your trademarks by registering them with the U.S. Patent and Trademark Office (USPTO).

Registering your trademark with the USPTO helps protect it by establishing certain facts about the trademark, including ownership, dates of first use, and the goods and services offered in association with the trademark. 

With your federal trademark registration, you will be able to stop others from federally registering a similar mark for similar or related products or services, assert your trademark rights against others anywhere in the U.S., and use the ® symbol on your trademark as a way of notifying others that it is federally registered.

The USPTO registration process is a multi-step process that takes, on average, a year or more to complete. It is a rigorous process through which your trademark application must be examined and determined to be eligible for registration on the federal trademark registry. 

For this reason, we always recommend conducting a trademark clearance search prior to submitting an application. This will provide information about potential infringement of your proposed mark, the likelihood of success of registration, and whether your trademark meets the basic requirements for registrability.

Filing Your Trademark Application: A Step-by-Step Guide

1. Preparing and Filing Your Trademark Application

All applications require the same basic information concerning the mark itself, the applicant, and the goods and services that you seek to register in association with the mark.

  1. Mark Information.  You must provide the mark that you’d like to register, the format of the mark (i.e., standard character or special form), a “drawing” of the mark (standard character marks are automatically generated and special form marks must be uploaded), and a statement of the mark describing the mark.
  2. Applicant Information. You must provide the owner of the mark, the owner’s address and email address, and, if the business is a legal entity, the legal entity information, or, if the owner is an individual, the citizenship of the owner.
  3. Goods and/or Services.  All goods and services are classified into 45 different “classes.” An application may have one or more classes of goods and services.  For each class in the application, you need to identify the specific goods and services within each class that you are applying for and can do so using the pre-approved descriptions in the USPTO Trademark ID Manual, or it can be custom written if no pre-approved description accurately describes your goods or services. You also need to provide the filing basis for each class, which can be based on the current use of the mark (use-in-commerce basis), a bona fide intention to use the mark (intent-to-use basis), or a foreign application or registration (not addressed here). If filing on a use-in-commerce basis, dates of first use and specimens (evidence of use of the mark) must be submitted with the application.

Where applicable, you may also need to provide a translation, transliteration, name or likeness consent, or concurrent use claim information in your application.

A filing fee must be submitted to the USPTO along with your application and is calculated on a per-class basis.  

For electronic filing, the initial filing fee is generally $250 per class of goods/services if pre-approved descriptions of goods/services are used and $350 per class of goods/services otherwise. Note that other requirements must be met to qualify for the lower filing fee.

Once your application is submitted, the USPTO will acknowledge receipt, assign it a serial number, and, in 8-9 months, assign it to a trademark examining attorney (EA). 

2. Trademark Examination 

Once assigned, the EA will review your application to ensure all the USPTO legal requirements are met and that your trademark is registrable. The EA first ensures that the application meets all the basic requirements and formal prerequisites. Then, the EA conducts a substantive examination to determine whether the mark is eligible for registration and whether it is unique from other marks in the registry. 

The EA will search the USPTO database of registered and pending trademarks to determine whether your mark is confusingly similar to any other marks, misleading, generic, or descriptive, or has another issue that may prohibit its registration. 

If the EA determines that your application meets all the legal requirements for registration on the Principal Register your trademark will proceed towards publication. [See #3 Publication]. 

If the EA determines that there are deficiencies in your application or it isn’t registrable, then the EA will issue a Nonfinal Office Action (OA). This official letter will explain why your registration is being refused and may include recommendations for addressing any issues with the application if they can be remedied. You will have 3 months to respond to an OA and can request a 3-month extension for a fee if more time is needed to respond.  Failure to respond to an OA will result in the abandonment of your application. 

If your response to an OA corrects the issues raised, the EA will approve your trademark for publication. If not, the EA may issue a Final Office Action. You will then have an opportunity to file a request for reconsideration and/or appeal to the Trademark Trial and Appeal Board (TTAB). If the request for reconsideration is successful, then the application will proceed to publication. If not, then if you filed an appeal with the TTAB, you would proceed with the appeal.

3. Trademark Notice of Publication

Once your trademark is approved for publication, it will be published in the online Trademark Official Gazette. While it does mean that your application has made it past a critical part of the application process, publication does not mean that your trademark has been registered! 

Publication begins a 30-day period during which any member of the public who thinks they’ll be harmed by the registration of your trademark may oppose it. They may file a Notice of Opposition, which starts a legal proceeding with the Trademark Trial and Appeal Board (TTAB) about your trademark.

If no one opposes your trademark during the publication period, your application proceeds to the next stage of the registration process. It still hasn’t registered. It can take three to four months from the time your trademark publishes to when you receive official notice that your trademark has either registered or moved to the next stage.

If your application is based on use in commerce, then your trademark will proceed towards registration. If your application is based on an intent -to -use, your trademark will not register yet. 

Instead, a Notice of Allowance will be issued, which means you must begin using the mark in commerce, if you haven’t already, and submit a Statement of Use (SOU) within 6 months of the notice. 

An SOU must be accompanied by at least one specimen per class, showing your trademark used in commerce. If you are unable to submit an SOU within 6 months, you may request an Extension of Time to Submit a Statement of Use and pay the requisite filing fee, which will provide an additional 6 months to submit an SOW, up to a maximum of 5 extensions. When the SOU is filed and accepted, your trademark will proceed toward registration. 

4. Trademark Registration 

When the USPTO has finished processing your application and your trademark registers, the USPTO will send an official notice and electronic certificate of registration. 

This is the point where you should celebrate the registration of your trademark (and begin protecting it by adding the ® symbol alongside your mark wherever it is used).

Protect Your Brand with Experienced Legal Support

Ready to navigate the complexities of trademark registration with confidence and ease? Our experienced business law attorneys are here to guide you every step of the way. From conducting thorough clearance searches to filing your application and beyond, we’re committed to ensuring your brand’s protection and success in the marketplace. Don’t let the challenges of the trademark process slow you down—contact us today to secure the legal help your business deserves. 

Related Resources: What is a Trademark and Why Do You Need One?

Tammy Hui

Tammy HuiOf Counsel
OFFICE: 703-687-6188 ext. 134
DIRECT: 202-430-6762
thui@thegellerlawgroup.com

Jeannine Viscardi

Jeannine ViscardiTrademark & Business Formation Paralegal
OFFICE: 703-687-6188 ext. 137
DIRECT: 703-594-1304
jviscardi@thegellerlawgroup.com

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