What does the process of filing a trademark consist of?
- First, determine if you need to register a trademark or a copyright. The two are frequently confused.
- Second, have a consultation with a qualified trademark attorney.
- Third, your trademark attorney will perform a trademark search to determine if your proposed trademark can be registered.
- Fourth, if the trademark search identifies a conflicting trademark, your attorney will determine if it has priority or if it will adversely effect your application.
- Fifth, if the trademark search doesn’t identify any conflicting trademarks or any potential conflicts are resolved, your trademark attorney will file an application with the US Patent and Trademark Office (USPTO).
- Sixth, the USPTO will examine the application and determine if they have questions and institute an Office Action or approve the application.
- Seventh, there is then a period for others to register oppositions to the filing of your proposed trademark.
- Eighth, the current time between the filing of a trademark registration application and the USPTO recording the trademark on the principal register is between 6 months to 1 year. However, your protection relates back to the filing date.
- Once your trademark is recorded on the principal register you may use the ® symbol, signifying that it is a registered trademark.
A trademark registration can be confusing and complicated. A qualified trademark attorney can help you.
The Trademark Registration Process – Step by Step
Is it a trademark or a copyright?
First, you must determine whether you need to register a trademark or a copyright. In a nutshell, a trademark is a name, logo or slogan, but it can also be a sound or color (for example, the Yahoo yodel or Facebook blue). The purpose of a trademark is to distinguish the origin of goods or services.
A copyright is a protection for “works of original authorship.” This can be anything from a book, song, recording, film, painting, sculpture, architectural drawing to software.
See a qualified trademark attorney for a consultation
Second, you should have a consultation with a qualified trademark attorney specializing in intellectual property. He should have a discussion with you regarding the nature of your business and the nature of the intellectual property, which you wish to protect.
He should also discuss with you an overall comprehensive IP strategy, including trademark surveillance and enforcement.
Time for a trademark search
Third, your trademark attorney will perform an extensive search for potentially conflicting trademarks, whether in or outside of your industry or geographic area. International searches are not necessary unless the trademark registration is part of a comprehensive global IP strategy. Global searches can be performed upon request.
If a conflicting trademark is discovered
Fourth, if a conflicting trademark is not discovered, your trademark attorney will proceed to the next step in the process; if a conflicting trademark is discovered, your trademark attorney will determine if the conflicting trademark has priority over your proposed trademark or if the trademark can be licensed or determine if any potential future dispute can be resolved before it becomes a problem. Your trademark attorney will then provide you with an opinion letter.
Trademark registration application
Fifth, provided the search does not uncover any conflicting trademarks, which create a prohibition to filing, your trademark attorney will process the trademark registration (application) within 5 days of our retention.
The USPTO and their initial examination
Sixth, the United States Patent and Trademark Office (USPTO) will examine the trademark registration and may approve it or request additional information via an office action. Unlike other law firms and trademark registration service (s) we handle basic office actions at no additional cost (additionally, so as to ensure enforcement of your trademark we also provide one free cease and desist letter should someone else start using your trademark). Most office actions are favorable resolved and the trademark goes on to be registered.
Opposition to your application
Seventh, there is then a period for others to register oppositions to the registration of your proposed trademark. This occurs infrequently and when it does occur it can often be resolved with the party filing the opposition at a minimum of expense.
How long before a trademark registration application is approved?
Eighth, the time between the submission of the trademark registration with the USPTO and their recording of the trademark on the principal register is currently somewhere between 6 months to 1 year.
Use of the registered trademark symbol.
Ninth, once your trademark is recorded on the principal register you may use the ® symbol (and in fact must use the ® symbol) in conjunction with your trademark. You must also renew your trademark periodically. If properly renewed, you can maintain exclusive use of the trademark indefinitely.
Whether you want to file a trademark registration, you’ve received an office action or an opposition, if you want to protect your businesses most valuable asset, you will want to consult with a trademark attorney who can protect your rights.
Contact an attorney with Veritas Business Law, LLC for a free consultation.