Photo: Woman filling out a form by Hunter Matthews on Unsplash

Trademark Thursday Part VIII: How to Register

Registration usually goes like this:

1. Thorough search.

Before you even register, you/your attorney will do a thorough search to make sure nobody else is using a confusingly similar mark that may cause the USPTO to reject your application. If your attorney finds any red flags, at this stage they will discuss it with you and give advice on what your next steps should be. If all is clear, you can move on to the registration phase.

2. File your application for registration.

When you file your application, you will need to decide what classes (categories) you want to register in, you will need to provide a description of the goods/services, and you will have to provide “specimens” showing the mark being used in commerce. These three requirements are areas people accidentally mess up a lot when trying to register without an attorney, so having a lawyer on board can really increase your success here. If your registration fails, your USPTO filing fees will not be refunded.

If you aren’t actually using your mark in commerce yet but you know you will be using it soon, you can apply for what’s called an Intent to Use application. If you file an intent to use application, the registration process is basically the same as below, except instead of final approval, you get a notice of “allowance.” Final approval cannot happen until you provide later proof that you are now actually using the mark in commerce. You have six months from a date after the publication period to start using the mark in commerce and provide them with proof (this is called a “Statement of Use”), or request a six month extension. Intent to use applications have additional filing fees.

3. Wait!

It will be 4-6 months before anyone from the USPTO even looks at your application. Hold tight!

4. USPTO reviews your file.

An examiner at the USPTO will review your application and will do a thorough search of their own to make sure there are no other marks that conflict with yours and that your mark meets all the criteria for registration.

5. Office Action letter.

If the examiner sees issues with your application, they will send what’s called an Office Action letter. Do not be alarmed if you receive one of these; they are very common, and most issues can be resolved fairly easily. These can address small issues like a request for more information, or it can address large issues like their belief that your mark conflicts with another. Common Office Action issues include a request to disclaim a word (such as, your mark includes the word “the,” and they want you disclaim the word “the” so it doesn’t prevent other people from using it), or their belief that the specimens you sent do not successfully show actual use in commerce. If you filed for a trademark without a lawyer and you receive an Office Action letter, it is a very good idea to hire a lawyer to help you resolve it. You have six months to reply to the Office Action letter — it sounds like a long time, but it’s very common for people to miss that deadline, so make sure you start early!

6. Approval or Denial letter.

If the examiner sees no issues, or you successfully resolved all issues they raised in an Office Action letter, they will approve your mark, which then goes to the publication step.

If you are not able to overcome their objections, they will issue a refusal. If you still disagree, you can appeal.

7. Publication.

You’re not done yet! After your mark is approved, the USPTO publishes your mark in their Official Gazette. Once published, anyone who has an issue with your mark has 30 days to file an opposition to your registration. If an opposition is filed, a proceeding that’s very similar to a federal court proceeding is held. If nobody files an opposition (or the opposition is unsuccessful), the USPTO will send you official notice that your mark has been successfully registered, and you will receive a registration certificate.

The entire process can take a year or more, depending on how many issues come up throughout. 

8. Success!

You now have all the rights and responsibilities of a federal trademark registration, and you are now allowed to use the ® symbol next to your mark, signaling that is has been federally registered.

9. Maintaining your registration.

Trademark registration doesn’t last forever, and you have some ongoing obligations.

You are responsible for keeping your contact information up to date with the USPTO at all times.

You must continue using the mark in order to stay protected, otherwise you can lose it. To prove you are still using it, you have to file a Declaration of Use approximately five years after your initial registration, then another five years after that (at this point, you also apply for a renewal), and again every ten years thereafter. Failure to do this can result in losing your registration and having to start all over.

You are also responsible for enforcing your rights if you ever notice anyone infringing your mark. It is up to YOU, not the USPTO, to police your mark and to try to stop them from using it without your permission. Again, if you fail, you may lose your trademark rights. 

Read the rest of the Trademark Series:
Part VI: Distinctive