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| Trademarks
Registration Process |
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Learn the Basics of Trademark Registration
Process
Step1: Trademark Research
Although not required, it is always recommended
that a trademark be cleared for use through
Trademark Research prior to filing for
protection with the U.S. Patent and Trademark
Office.
Clearing your mark for use before filing for
protection of the same provides you with the
peace of mind that you may now use and develop
your brand without fear of it later being
rejected by the U.S. Patent and Trademark
Office.
Also, as filing fees are non-refundable it is
often more cost-effective to ensure your mark is
clear for registration through a simple Federal
Research Report.
Step 2: The Application Process
We prepare and file your application with the
U.S. Patent and Trademark Office. Trained in the
methods used by the U.S. Patent and Trademark
Office in examining applications, our
professionals' filing methods ensure that our
clients' marks register as fast as possible with
few delays.
There are two general types of applications,
those based on a trademark's existing use in
commerce (Use-Based Application) and those to
reserve a clients' future use of a mark
(Intent-to-Use Application).
Step 3: The Examination Process
Approximately three to five months after the
application is filed the mark is assigned to one
of roughly 350 trademark examining attorneys who
work for the U.S. Patent and Trademark Office.
The trademark examining attorney reviews the
application and determines whether mark is
entitled to registration.
If he or she determines that there are no issues
which need to be addressed and that the mark is
entitled to registration the examining attorney
approves the mark for publication (See Below).
However, if any Procedural Issues (e.g.,
clarification of the applicant's name or entity
type) or Substantive Refusals need to be
addressed the examining attorney will issue what
is known as an Office Action.
An applicant is given six months to respond to
an office action or the mark will be Abandoned.
If an acceptable response to an Office Action is
filed the examining attorney will approve the
mark for publication.
If a response to an Office Action is not
accepted a Final Office Action will be issued.
Once a Final Office Action is issued we have six
months to either file a Request to Reconsider
the Final Office Action, let the mark abandon,
or file an Appeal of a Refusal to the Trademark
Trial and Appeal Board ("Board").
If Board decides in our favor the examining
attorney's refusal will be removed and the mark
approved for publication for opposition. If the
refusal is upheld by the Board, we may file a
federal district court action to appeal the
Board's decision although this is rarely done.
Step 4: Publication for Opposition
Approximately Four to Six weeks after being
approved for publication, the application is
published for opposition.
The mark is published in a book of all published
marks before the U.S. Patent and Trademark
Office known as the Official Gazette.
Marks are published for opposition for 30 days.
During this opposition period any party wishing
to object to the registration of the mark may do
so by filing a Notice of Opposition.
Although very rare, if filed our experienced
professionals are ready to assist you in
responding to and moving your mark passed an
opposition proceeding and towards registration.
Step 5: Registration of Your Mark
Provided that no Notice of Opposition is filed
against your mark, approximately Four to Six
weeks after the opposition period ends, your
mark receives its Certificate of Registration if
it was a Use-Based Application of Notice of
Allowance if it was an Intent-to-Use
Application.
When a Notice of Allowance is received all that
is required to complete the registration of the
mark is the filing of a Statement of Use. Once
filed, an Intent-to-Use Application will receive
its Certificate of Registration.
Step 6: Renewals of Registrations
Once registered, a Trademark Registration may be
maintained for as long as use of the Trademark
continues.
To maintain the registration a registrant is
required to file a Section 8 Affidavit of
Continuous Use with the U.S. Patent and
Trademark Office between the Fifth and Sixth
Anniversary of the date of registration of the
mark.
Additionally, the registrant is required to file
a Combined Section 8 Affidavit of Continuous Use
and Section 9 Application for Renewal on or
about every Ten Year anniversary of the
registration of the mark.
As part of both or Standard Package and Platinum
Package The Trademark Company maintains a
calendaring system of all of our customers'
pertinent dates and provides free notices to our
clients of upcoming filing dates so that their
registrations can be maintained. |
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