Trademark Registration in the USA
Trademarks are essential in recognizing your business from other comparative items in a challenging market. They help your brand create marketing and promoting methodologies that help shoppers distinguish your items and administrations effectively. Besides, trademarks award you selective rights to utilize the sign in your trade.
The United States Patent and Trade Office (USPTO) is the federal body responsible for registering trademarks in the US, and the Lanham Act fundamentally administers US trademark law. Let us elaborate further on the steps involved in obtaining a trademark in the United States.
1. Preparing to file a trademark application
Firstly, you have to select a mark that requires protection. The mark might be a design mark, a character mark, or a sound mark. However, you must ensure the mark represents your business at its best. Furthermore, the applicant should provide the registrable mark, and you can avail of legal protection in case of any infringement.
Secondly, the applicant should precisely identify the goods and services to which the mark will apply. This is essential for extensive protection to use your mark in all your products and services.
Thirdly, you should search the USPTO database to ensure your mark is not similar to any other existing trademarks. This basic search will save you plenty of time during the registration process.
You will need to include the following information in your application:
-The name and address of the applicant
-A clear and concise description of the mark
-The goods or services for which the mark will be used
-The manner in which the mark will be used
-The class of goods or services for which the mark will be used
If you are a foreign-domiciled applicant, you must have an attorney licensed to practice law in the United States to represent you.
Filing basis
You have to decide on the filing basis of your trademark application. The basis upon which you intend to file the trademark application with the USPTO is called a filing basis. The basis on which you can submit an application is as follows:
Actual Use (Use in commerce) basis – You can opt for this basis when you currently use the mark in trading all your services and products. You must submit a specimen of use if you file under an actual usage basis. A specimen of use shows the actual representation of your mark in your goods and services, and they can be pictures of your mark in the product or screenshots of the mark on your website or online store.
Foreign registration basis – you can choose this basis of filing if you already have a registration certificate for the mark in any other foreign country. The applicant must submit the registration certificate of the trademark in any other country while applying on a foreign registration basis,
Intent-to-use basis -You can opt for this filing basis when using the mark in your business shortly.
The applicant can opt for more than one filing basis.
2. Submitting your trademark application
The applicant can submit the trademark application online through the Trademark Electronic Application System (TEAS). You can apply for the registration of only one mark per application, and each additional mark requires a separate application.
The applicant should pay a non-refundable processing fee while submitting each application. Moreover, the applicant should produce a separate filing fee for each class of services or goods in the application.
We can categorize the filing fee based on the application as follows:
TEAS plus: One can opt for this filing fee when you submit a complete application (i.e., fill in all required information) and select the class of services and goods from the trademark ID manual only. The fee amounts to $225 per class of goods/services. If you fail to meet the requirements of TEAS plus, you should pay an extra charge of $125, and your application will change to TEAS standard.
TEAS Standard: An applicant can file for registration through TEAS Standard when one does not have all the relevant information to complete the trademark application and when the class of services and goods is not in the Trademark ID manual. The USPTO trademark fee amounts to $250 per class of services/goods.
3. Monitoring application status
Once you successfully apply, you will be held entirely responsible for monitoring the status of your application. The applicant must regularly check the application status and review the documents every 3 to 6 months in the Trademark Status and Document Retrieval (TDSR) database.
4. USPTO examines your application
The USPTO does a preliminary examination to ensure your application meets the minimum filing requirements and passes it on to an examining attorney for thorough scrutiny. The examining attorney thoroughly checks to confirm your application complies with all the legal requirements and contains all relevant documents, images, and the required fees. He also checks for any conflicting existing trademarks in the database.
If the examining authority requires some clarity or feels the mark is unregistrable, he will issue an official office action, explaining the areas that do not comply and require amendments.
The applicant must respond within six months to an office of action. Or else the application will be considered abandoned.
5. Publishing in the Official Gazette
Once your application overcomes the examiner’s attorney’s objections, he will approve publishing your application in the weekly Official Gazette of the USPTO. The USPTO will notify you regarding the publication date. Now, any third party can oppose your trademark or request an extension of time to oppose within 30 days of publication.
Any such opposition is held at the Trademark Trial and Appeal Board (TTAB). Finally, if there is no opposition or if you overcome the opposition, the application proceeds to the registration stage. Generally, it takes three to four months for the USPTO to notify you regarding the next step of the application. Hence, one must periodically monitor the TDSR database for any updates.
6. Registration of the trademark
For marks having filing basis such as foreign registration, commercial use, and extending the protection of an international registration, the USPTO registers the mark and issues a certificate of registration.
Registration for the intent-to-use filing basis
If you file your application under intent-to-use, the USPTO issues a notice of allowance. It is a written notification stating that the mark has successfully reached its registration stage but is yet to be registered. The USPTO issues the notice of allowance at least eight weeks from the publication date. Now, the applicant should use the mark and submit a statement of use (SOU) or request an extension to file the SOU. If the applicant does not stick to the deadline of responding to the notice of allowance, the application will be deemed abandoned. The applicant should file a request to revive the application within two months from the date of abandonment.
Finally, the USPTO will review the SOU and ensures it complies with all requirements and is registrable. The examining attorney may refuse the SOU and issue an office action. The applicant must respond and successfully overcome the refusal to register the trademark. The applicant will receive the registration certificate within two months of approval of the SOU.
Maintaining the registration
Once you receive the registration certificate, you must submit the file-specific maintenance documents to maintain your registration. To keep the trademark registration active, one must also monitor the TDSR database annually, and trademarks of USPTO stand valid for ten years.
Registering for trademarks in USPTO is very systematic, and the applicant holds full responsibility for monitoring the application process status. Hence, most applicants hire trademark expert attorneys to guide them in the paperwork and keep track of the registration.
[cherry_button text=”Need help to file trademarks in USPTO? Reach Us” style=”info” centered=”yes” fluid_position=”right” icon_position=”top” bg_color=”#2065cc” color=”#ffffff” min_width=”33″ target=”_blank”]
