Trademark law is a legal tool that provides businesses the essential brand identity protection. It is vital for businesses to be established entities and be associated with the goods and services they produce. Here in this writing, you will be reading step by step as to how you can obtain the trademark registration from United States Patent and Trademark Office (USPTO) that will secure your business operations in the future.
You must make sure that you are applying for the right protection. There are numerous intellectual property protection applications such as patents, copyrights, and domain names. Trademark application protects your brand name and logos that you utilize on your goods and services. Thus, you should be applying for trademark registration only if you want your brand name and logo to be protected and your goods and services to be associated with them.
If you are applying for trademark protection, you are then expected to create your own unique mark. Uniqueness is essential here. This is because marks often get confused with other brands’ marks. Mark confusions may also lead to legal protection hardships and may be considered non-registrable by the USPTO. While creating your mark, you should also take into account your area of goods and services. You need to make sure that your offered goods and services are not in the same category with brands whose marks may be taken as yours. For further information on creating your mark, please refer to this video by USPTO.
You are now good to prepare and submit your application via USPTO.gov website. Steps are as follows:
- Set up your USPTO.gov account to reach your Trademark Electronic Application System (TEAS). To set up your account, please follow this link.
- File your online application. You will be asked to pay a non-refundable processing fee.
- Regularly check (at least every six months) your application status via Trademark Status and Document Retrieval (TSDR) system. This is especially important as it will warn you of upcoming filing deadlines.
- Maintain and -if necessary- update a valid mail and email address.
After you submit your application, USPTO’s primary evaluation will determine whether you met the filing requirements or not. If you did so, an application serial number will be assigned on your name and your file will be forwarded to an examining attorney. The examination duration varies but it will likely take several months.
If the examining attorney approves your registration, your mark will be allotted for publication in the weekly “Official Gazette” of the USPTO. You will be notified regarding the date of publication. After the publication, there will be an interval amounting to a month. During this time, any brand who might be damaged by your registration can file an opposition to the process or ask for extension for opposition.
In the case of no opposition, your application will move on to the next step. This usually takes three to four months.
Certificate of Registration: USPTO will register your mark and send you a registration certification. You are required to file maintenance documents for your registration to remain valid after the registration.
Notice of Allowance: This is a notification document by USPTO. It is sent approximately eight weeks after your mark is published in the “Official Gazette.” It declares that your mark is free of any opposition. Notice of Allowance is only delivered to applicants who used Section 1 Filing Basis during their applications (US residents).
After a Notice of Allowance issued, you have six months to either,
- Use the mark in commerce and submit a statement of use (SOU), or
- Ask for a six-month extension to prepare your SOU for later filing.
To learn more about SOUs and extension request processes, please refer to this link.
If you fail to file your SOU in time, your application will be discarded until you write a petition to restart your application. Please watch this video to learn more about the petition process.
Reviewing of SOU by USPTO:
After you submit your SOU, an examining attorney reviews your SOU for approval.
- If there are no refusals and additional requirements asked, your SOU will pass the attorney’s review.
- In the case of refusals and additional requirements, you will be issued another letter of office action by the examining attorney. The following process is identical to the one described in Step 4.
If all the issues are eventually resolved, USPTO will issue your registration within two months.
Trademark protection is essential for business to operate as it provides companies with consistent brand identity. And brand identity is what designates businesses as distinct entities. Henceforth, having protected and unified trademarks is a must for every company that aspires to function harmoniously. Grape Law PLLC understands the importance of trademark protection and promises its clients the all-around safety of their brands.