Trademark Application: A Step-by-Step Look at the U.S. Trademark Process
If you own a business, you probably need a trademark, also known as protection for your “intellectual property.” A trademark provides legal protection for the “goodwill” of your business: how your customers associate your business with the goods you sell or the services you provide. A trademark may be a unique identifier for your business, like a name, slogan, or logo.
Registering your trademark allows you to grow your company with increased confidence of legal protection and reduced fear of a competitor profiting from theft of your intellectual property. In addition to distinguishing your company from others, a trademark is well worth the effort as it may increase your company’s value. However, many business owners don’t know the first steps to applying for a trademark in the United States, which is necessary knowledge for successfully securing your trademark rights.
Here’s a brief overview of what the trademark process looks like. Please keep in mind that this is not legal advice. This is a simplified look at the trademark application process, and the exact steps will differ depending on your particular circumstances.
Overview of the Trademark Process
The process to obtain a federally registered trademark generally follows four steps:
Figure out what you will trademark
File a trademark application with the United States Patent & Trademark Office
The Trademark Office reviews your application
The Trademark Office registers your trademark
1. Figure out what you will trademark
A trademark signifies how a member of the consuming public views your product or service and associates it with your business. It may be words, phrases, a logo or design, and even the smell of a product. The trademark identifies your good or service to the person using it. Distinguishing how you want your company to be known is the first step in deciding what you will trademark.
The most protectable trademarks are arbitrary or fanciful: that is, the “mark” does not clearly describe the good or service it is associated with (think “Xerox”). This type of mark is the most powerful because the consumer can come to associate only your business with the mark, in relation to the goods or services. There are also suggestive trademarks, which are slightly less powerful because they suggest the type of good or service that your company provides (such as “Microsoft”). Similarly, descriptive marks are the least protectable because they merely describe the good or service. You cannot own a trademark by merely describing the good or service, since others must be able to describe it as well! Finally, generic marks, such as “Mattresses,” are not protectable at all, for similar reasons as descriptive marks.
Therefore, it is important to spend time and effort to plan and develop your trademark, if you wish to have the best chance at registering it. A trademark attorney can help you assess the strength of potential trademarks.
2. File the application with the Trademark Office
Once you’ve picked your mark, it’s time to prepare and file a trademark application. The application may be filed on the U.S. Patent and Trademark Office (the “Trademark Office”) website. Although preparing and filing the application can be done by a non-attorney in many cases, there are a number of complexities to the process that make working with an attorney advisable.
For example, you must: pick the “class” of goods and/or services that are offered for sale under your mark; describe those goods/services; and provide the date of use in commerce and a “specimen” of use for each class. You can alternatively file an intent-to-use application if you have an actual intent to use a mark but have not done so yet. Preparing and filing an application usually only takes a few hours - but getting the application right can be a challenge.
3. The Trademark Office reviews your application
After filing the application, an examining attorney at the Trademark Office will be assigned to review your trademark application. The initial review can take about 3-4 months from the filing of your application. The examining attorney examines your trademark application to see whether it meets the requirements of federal trademark law. This is the longest step (at least several months once examination begins, up to over a year), and may require you or your attorney to communicate with the examining attorney if your application receives a refusal called an Office Action.
Common causes for refusal during the application process are descriptiveness (discussed above), and “likelihood of confusion”, which means that you cannot register a mark that would be likely to cause confusion in the consuming public between an already registered mark and your applied-for mark. Prior to filing your application, an attorney can help you properly assess the risks of getting an Office Action.
There is also a publication period during which a member of the public has the opportunity to “oppose” registration of your application. Even if the Trademark Office otherwise approves your application, it may not be possible to register your mark if a member of the public files an opposition during the 30-day publication. Part of the application preparation process with an attorney may include analysis of potential opposers to your application.
4. Registration of your trademark
After successful examination by the Trademark Office and unopposed publication, you will get a certificate of registration in the mail in about 2 months. The total time period from filing to registration may take 8 or more months. If you filed an intent-to-use application, you will need to prove use of the mark in commerce prior to registration. Once your mark is registered, you can then use the “®” symbol in connection with your mark.
Take the First Step in the Trademark Process
Securing a trademark provides your business with a valuable asset. While it is possible to file a trademark by yourself, an attorney can help you put together a solid application by doing research and analysis of potential risks to registerability of your mark. If you have any questions about the trademark process or desire a consultation with Benjamin Rothermel, please fill out the contact form linked below!
Written by Benjamin Rothermel and Connor Jaccard.