Trademark rights arise by merely using a company or product name in commerce, however, trademark registration give added legal protections to trademark owners.
Most people believe that a person or company only owns a trademark if they have a trademark registration, however, merely using a trademark in commerce creates common law trademark rights. Common law trademark rights provide trademark owners some protections against third parties from infringing their trademark rights. However, Trademark registration, especially at the federal level, provide trademark owners with added legal protections in addition to their common law rights.
How to Apply for a Federal Trademark Registration
The USPTO issues trademark registration certificates to successful trademark applications
Trademark owners seeking greater trademark protection, such as nationwide trademark protection, should apply for a federal trademark registration with the United States Patent and Trademark Office (USPTO). Below is a ten step guide on how to apply for a federal trademark registration.
1. Decide whether to file pro se or hire a trademark attorney
Many trademark applicants wonder "Do I need a trademark lawyer?" There is no requirement to hire a trademark lawyer to file a trademark application. However, trademark applications filed by trademark attorneys are much more likely to be successful and become registered trademarks.
For example, a recently published study reviewed all trademark applications filed from 1984 to 2010 and found 82% of applications filed by attorneys were approved by the Examining Attorney, whereas only 60% of trademark applications filed pro se were accepted. Even these numbers are skewed because large corporations such as McDonalds were considered “pro se” applicants even though they likely had inhouse trademark attorneys filing their trademark applications.
If you do choose to hire a trademark attorney, selecting an attorney who offers to file trademark applications for a flat fee is becoming more desirable because their clients are not surprised with bills in the future that are larger than expected. In addition, online trademark attorneys allow trademark owners to find a trademark lawyers that is not near them, giving trademark applicants more options on what trademark attorney to hire.
2. Conduct trademark searches
Before filing a trademark application, it is important to conduct trademark searches to make sure the trademark application will not be rejected based on a previous trademark application or registration. In particular, it is important to do a USPTO knockout search by using the Trademark Electronic Search System (TESS).
The TESS system is old and difficult to use for people who do not use it often. Due to the importance of conducting a trademark search, it is best practice to have a trademark attorney conduct the search as they are experienced using TESS and know what is and is not an issue.
3. Gather the information needed to meet the minimum filing requirements
The USPTO will not review any application that does not meet the minimum filing requirements. For example, the trademark owner, address, and specimen (for use based trademark applications) need to all be submitted with the original application.
Before beginning to file the trademark application, it is better for trademark applicants to have all the required information at their fingertips rather than starting and pausing throughout the application process.
The USPTO will not accept a trademark application unless the minimum filing requirements are met
4. Go to USPTO website to file online
Once the searches are done and all the necessary information is gathered, trademark applicants can file their trademark application online through the USPTO website. The benefits of filing trademark applications online is that it is cheaper than mailing the application and it cost less.
The USPTO website hosts the Trademark Electronic Application System (TEAS), which allows users to input the necessary information to file the trademark application.
5. Submit necessary information into online trademark application form
Once in TEAS, trademark applicants are guided on how to fill out the trademark application one step at a time. For example, the person filling out the application is instructed to name the trademark owner, their address, what the trademark is and more. It can be confusing at times, which is one of the reasons why hiring a trademark attorney experienced using the system can be helpful and save a lot of time.
6. Sign the trademark application
The last part of the trademark application requires the trademark owner, whether an individual or representative of a company to sign the trademark application. If a trademark attorney is filing the application on behalf of a trademark client, they can send an email to their client that allows them to sign the trademark application electronically.
7. Pay the USPTO filing fee
The last thing a trademark applicant needs to do, even after signing the trademark application, is pay the trademark fee required by the USPTO. Based on whether the trademark application was filed online, in paper or required a custom goods and/or services identification will determine how much the trademark application cost. The cheapest applications, filed on TEAS Plus, cost $225.
8. Wait until the trademark application is reviewed by the Examining Attorney
After the trademark application is filed and paid for, after three months, the USPTO will hand the trademark application to an Examining Attorney for review. The Examining Attorney’s job is to review the application for any defects such as an improper specimen or a confusingly similar trademark. The Examining Attorney's role is outlined in the Trademark Manual of Examining Procedure.
If the Examining Attorney does find an issue with the trademark application, he or she will issue an Office Action. Trademark applicants can respond to Office Actions in several different ways including a phone call or submitting an official response through the USPTO website.
Another reason hiring a trademark attorney is a wise choice is that in the event the Examining Attorney issues an Office Action, the trademark lawyer will overcome the Office Action 73%, whereas pro se applicants only overcome Office Actions 45% of the time.
9. The application is Published for Opposition
If the Examining Attorney approves of the trademark application, the USPTO will approve the application for publication in the Official Gazette. A few weeks after the application is approved for publication, the trademark application is Published for Opposition for thirty days, and during this period any third party who believes they will be harmed by the trademark application can file an Opposition.
An Opposition allows third parties to try to prevent trademark applications from becoming registered trademarks. Oppositions proceedings can be time consuming and costly. The best way to avoid an opposition is to conduct a thorough trademark search.
10. Trademark application is registered with the USPTO
If no Opposition is filed, or the trademark applicant successfully defends against an Opposition, then the USPTO will register the trademark. Once the trademark is registered, the trademark owner can enjoy all the additional benefits that are afforded to registered trademarks.
Do you have any questions about filing a trademark application? Contact us for a free trademark consultation today!