In What Are The Laws Surrounding Trademarks, we analyzed the various sets of laws affecting trademarks. They include judicial, state, and federal principles. Now, we want to offer a brief guide to the application process itself. In later sections we will explain exactly what you need to demonstrate in order to succeed, but for now we merely want to outline the general steps.
Before even beginning the trademark application process, you need to be aware of other businesses or individuals that have superior rights to you. They might already have state or federal trademarks similar to your own mark. The consequence of this would be that you will probably not be able to register your mark and that you could incur legal liability for doing so. Therefore, you need to have a competent attorney perform a search to determine the use and extent of applicable trademarks. To learn more about the search process, click here.
This is the bulk of the work in the trademark registration process. You will need to provide information including, among other things, a description of the mark, the mark’s usage period, and the goods or service the mark designates. The goal of the application is twofold: attain extensive protection for your mark and ensure that the registration process is successful.
After proper submission, the United States Patent and Trademark Office will assign the application a filing date and serial number. After three or four months, you should expect a response from the Examiner’s office either allowing the mark to be registered or prohibiting it from being registered. If it is the latter, you will receive an “Office Action” letter that must be responded to within six months if you disagree with their basis for refusal. If the Examiner believes that you did not sufficiently answer all of the reasons for the rejection, then it will issue a “Final Refusal” and your only option will be to appeal to the Trial and Appeal Board within the PTO.
If the Examiner within the PTO does not have any objections or if you sufficiently answer all of the objections, then your mark will be approved and a publication notice in the Official Gazette describing the approval. The Official Gazette is a publication produced by the PTO. After this publication, any party that objects to the approval has 30 days to file an objection. Then, there will be a hearing in front of the Trademark Trial and Appeal Board (a proceeding resembling federal court). However, if nobody objects within that 30-day window, then they lose the opportunity for a hearing and the process moves on to the final step.
Assuming you made it this far, the PTO will issue you a certificate of registration generally about three months after the publication date. However, if you were not using the mark prior to the application and you filed based on an intent to use it, then the PTO will issue you a Notice of Allowance and you will have six months to either begin using the mark or receive an extension; otherwise, it will be abandoned.
In the next article, we discuss what you need to demonstrate in order to receive a trademark.Next: How do I actually get a trademark?
© 2016 John V. Robinson, P.C.
© 2016 John V. Robinson, P.C.