To “trademark” a name, such as a company or product name, companies need to apply for a federal trademark registration with the United States Patent and Trademark Office.
What many people and companies do not realize is that by simply using a name to sell a product or service, they already own common law trademark rights to that name. For example, if a married couple open up a coffee shop called BREW-HA-HA, they own common law trademark rights to the name BREW-HA-HA.
However, common law trademark rights are very limited in their scope and do not grant nationwide protection against competitors using the same name. If BREW-HA-HA opened in Scranton, Pennsylvania, they could not stop a coffee shop opening up with the same name in Baton Rouge, Louisiana based on common law trademark rights alone. In order to receive nationwide trademark protection and the broadest trademark rights, companies must file for a trademark registration with the United States Patent and Trademark Office (USPTO).
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Trademark Application Process for Federal Trademark Registration with the USPTO
When people ask “how do I trademark my company name,” they often mean how do they obtain federal trademark protection (because they technically already have common law trademark rights to their name). To obtain a federal trademark registration, and the many benefits that go along with it (such as using the ® symbol) , companies must apply for trademark registration with the USPTO.
The USPTO is the federal agency tasked with reviewing trademark applications and denying or approving them. The application process can take anywhere from about eight months to a few years depending on what issues may arise during the application process.
Step 1: Create a Goods and/or Services List Used in Connection with the Trademark
As part of the trademark application process, trademark owners must select and identify all the goods and/or services they want to receive federal trademark protection for. For example, a company such as APPLE has trademark registrations for APPLE in connection with their main products such as computers, smartphones and tablets; and for the services they provide such as their Apple brick and mortar stores and the Apple App Store.
Goods and services are categorized into forty-five different trademark classes and each class applied for requires an additional filing fee. Many companies will apply for every class they sell products or services in while others, on a tighter budget, will apply for only their core class(es) of goods or services. Counseling a trademark attorney about the goods and/or services identification can help a company determine what is the best filing strategy for them based on a cost benefit analysis.
Step 2: Conduct a Trademark Search
Before filing a trademark application, companies (or their trademark counsel) should conduct a trademark search at the USPTO trademark database and a common law trademark search to ensure there are no companies out their already using the trademark or infringing the company’s trademark rights. If a trademark is already registered with the USPTO, there is a strong probability a second application filed by a different company will not be successful.
If a company files a trademark application without first running trademark clearance searches, or they conduct poor trademark searches, the USPTO may reject their application based on a previously registered trademark and the company will lose all their filing fees, which can cost hundreds of dollars.
Step 3: Review the Results of the Trademark Search
Once proper trademark searches are conducted it is important to review the search results. The USPTO will reject any trademark application they feel will “likely cause confusion” among consumers based on a previously registered trademark.
The “likelihood of confusion” standard is a legal phrase and test. Trademark attorneys spend years studying and reviewing what trademarks are likely to be confusing with other trademarks. For people without this training, it may be difficult to determine if the results of the search mean you can go forward or if there are serious red flags.
One key factor in the likelihood of confusion analysis is how related are the goods and/or services used in connection with the trademark. This is why it is important to create the goods and/or services identification before conducting the searches.
Step 4: Go to the USPTO Website and File the Trademark Application
On the USPTO website, individuals and companies (or their trademark attorney) can file an application for a trademark registration. Companies will need to provide basic details such as what the trademark is, who owns the trademark, when the trademark was first used, what is the trademark filing basis, what goods and/or services they are applying for in the application and more.
If the application meets the minimum filing requirements, it will be accepted by the USPTO and entered into the USPTO's databases.
Some of the fields can be a little confusing, such as how to submit a trademark specimen (and what is a trademark specimen?), which is why it can be helpful and save time for companies to hire a trademark attorney to prepare and file the trademark application on their behalf.
Step 5: An Examining Attorney Reviews the Trademark Application
After a trademark application is filed with the USPTO, the USPTO will process it and, after three months, assign it to an Examining Attorney. The role of the Examining Attorney is to review the trademark application and decide if the trademark can be registered with the USPTO.
Things the Examining Attorney reviews the application for include whether there is already a similar trademark registered, the trademark specimen is acceptable, the trademark is distinctive, not primarily a surname, not a geographic location and not descriptive, and more. Basically, the Examining Attorney determines whether the trademark application meets all the requirements for the trademark to be registered.
Any trademark attorney worth hiring will review the trademark application before filing the same way an Examining Attorney does so they can foresee and avoid any issues that would cause the Examining Attorney to reject the trademark application.
Step 6: The Examining Attorney Approves or Denies the Trademark Application
If the Examining Attorney approves of the application, it will move onto the next stage of the application process. However, if the Examining Attorney sees an issue with the application, he or she will issue an “Office Action” explaining the issue.
Office Actions are not necessarily the death of a trademark application, but they are not good and often lead to the death of an application. Examining Attorneys issue Office Actions for a lot of reasons such as there is already a confusingly similar trademark registered or the goods and services identification are misclassifed.
Applications filed by trademark attorneys are less likely to receive an Office Action, and if they do, an attorney is more likely to be able to convince the Examining Attorney to withdraw the Office Action.
Step 7: The Trademark Application is “Published for Opposition”
If the Examining Attorney accepts a trademark application, the trademark application will be “Published for Opposition.” During the Opposition Period and third party can “Oppose” the trademark application by filing an Opposition.
If an Opposition is filed, and the trademark applicant does not respond in thirty days, the application will be abandoned by the USPTO. The best way to make sure no Opposition will be filed is to conduct comprehensive trademark searches and review them (see Steps 2 and 3).
Step 8: The Trademark is Registered with the USPTO
If the trademark application is approved by the Examining Attorney and survives the Opposition Period, it will be registered by the USPTO. When a trademark is registered, the USPTO sends out a trademark registration certificate to the owner.
Trademark registration certificate for Instagram contains the Goods/Services ID (Class 9), the owner of the trademark, their address, registration number, date registered, first use dates, the USPTO seal and the signature of the USPTO director.
Do I Need a Trademark Attorney?
Companies and individuals can file their trademark applications pro se, i.e. on their own without an attorney. There is some risk involved in filing without first consulting an experienced trademark attorney. Most notably, if the trademark application is not approved by the USPTO, the company that filed the application will not be entitled to any refund for the filing fee of the application, which is often for hundreds of dollars.
Trademark applications filed by attorneys are much more likely to be successful than applications filed pro se. Experienced trademark attorneys can spot issues before a trademark application is filed and will know how to best avoid issues that would result in the USPTO rejecting the trademark application. Additionally, trademark attorneys can advise clients of the likelihood the application will be accepted, develop a plan to ensure success before filing and losing filing fees, and more.
Do you want an experience lawyer to prepare, file and track your trademark application? Are you not sure about the process and want to learn more? Contact Granite Trademark Services today for a Free Trademark Consultation and one of our experienced trademark attorneys will contact you within twenty-four hours.