How Do I Get A Trademark?

Filing a trademark application in the United States involves a detailed procedure under the purview of the United States Patent and Trademark Office (USPTO). Here’s a step-by-step breakdown of the process:

• Preliminary Considerations:

  Determine Eligibility: Ensure that what you want to trademark (name, logo, slogan, etc.) qualifies for trademark protection. Trademarks identify the source of goods/services and distinguish them from others in the marketplace.

  Distinctiveness: The trademark should be distinctive and not generic or merely descriptive for it to be registrable.

  Conduct a Trademark Search:

  Before filing, conduct a search on the USPTO’s online database (TESS – Trademark Electronic Search System) to ensure no one else has registered or applied for a similar or identical mark for related goods/services. This helps in avoiding potential legal disputes and refusal from the USPTO.

  Determine the Appropriate Class of Goods/Services:

  The USPTO has different classes for different types of goods and services. Determine the right class under which you’ll be registering your trademark.

  Prepare and Draft the Application:

  Owner Information: Provide the name and address of the trademark owner.

  Name/Logo/Slogan: Provide a clear representation of the trademark you wish to register.

  Goods/Services Description: Describe the goods/services the trademark will be used in connection with.

  Specimen: If you’re already using the mark in commerce, provide a specimen showing the mark as used on or in connection with the goods/services.

  Basis for Filing: Indicate the basis of your application. The two most common are “Use in Commerce” (for marks already in use) and “Intent to Use” (for marks not yet in use but planned for future use).

• File the Application:

  Submit the application online through the USPTO’s Trademark Electronic Application System (TEAS). There are different forms (TEAS Plus, TEAS Reduced Fee, and TEAS Regular), each with different requirements and fees.

  Pay the required filing fees. Fees can vary based on the form you use and the number of classes in which you’re registering the trademark.

• USPTO Examination Process:

  Once filed, the application is assigned to a USPTO examining attorney.
  The examining attorney reviews the application for procedural and substantive issues.

  If issues arise, the examining attorney will issue an “Office Action” explaining the refusals and/or requirements. You have six months to respond.

• Publication:

  If the examining attorney approves the application, the mark is published in the “Official Gazette,” a weekly publication of the USPTO.

  The public has 30 days from the publication date to file an opposition to the registration. If an opposition is filed, it initiates a legal proceeding before the Trademark Trial and Appeal Board.

• Registration:

  If no opposition is filed or if the opposition is unsuccessful, the application moves to the next stage.

  If you filed based on “Use in Commerce”, the USPTO registers the mark and issues a certificate of registration.

  If you filed based on “Intent to Use”, you’ll need to submit a “Statement of Use” within six months, showing that you’ve started using the mark in commerce. Extensions are available.

• Maintain Your Trademark:

  To keep your registration alive, specific documents and fees must be submitted at regular intervals. For instance, between the 5th and 6th year after registration, a “Section 8 Declaration” attesting to the continued use of the trademark must be filed. Additional maintenance documents are required at the 10th year and every 10 years thereafter.

• Enforcing Your Trademark:

  It’s the trademark owner’s responsibility to enforce the mark. Monitoring unauthorized uses and, if necessary, taking legal action is crucial to maintaining the strength of your trademark.

Consider consulting with an experienced trademark attorney throughout this process. They can provide guidance, conduct comprehensive searches, respond to Office Actions, and handle any complexities that arise. Start now.