In order to get a federal trademark registration, trademark owners must submit a trademark application with the United States Patent and Trademark Office.
The best way to protect brands and company or product names from competitors using similar names is to obtain a federal trademark registration from the United States Patent and Trademark Office (USPTO). In order to obtain a federal trademark registration, a trademark owner must file a trademark application with the USPTO.
The benefits of a trademark registration include:
Trademark Application Requirements
Trademark applications are only accepted by the USPTO if they meet the federal requirements to be registered trademarks. Trademark applications must include the trademark, the date the trademark was first used in commerce, the owner and address of the trademark, the goods and/or services identification, an acceptable specimen of use, and more.
Even if the trademark application includes the required information, the USPTO can still deny the trademark application for any number of reasons. One of the most common reasons trademark applications fail is because there is already a USPTO trademark registration for the same or a confusingly similar name. To avoid a likelihood of confusion denial, it is important for business owners, or their trademark counsel, to conduct comprehensive trademark searches.
Learn more about How to Trademark a Name here.
When the USPTO determines the minimum filing requirements are met, they will assign the trademark application to an Examining Attorney for review
USPTO Trademark Application Process
The USPTO trademark application is not short and takes, at a minimum, eight months. Sometimes the trademark application process can drag on for a few years. The process is time consuming, and often confusing to first time trademark applicants.
The first hold-up occurs after a trademark application is filed. When a trademark application is filed, it takes around three months before it is assigned to an “Examining Attorney” who reviews the trademark to ensure it meets all the requirements to be a registered trademark.
Delays in the application process often occur because the Examining Attorney finds defects with the trademark application and issues an “Office Action.” Office Actions can be issued for some oversight in the application, such as a missclassification of goods, or something more material including a likelihood of confusion refusal based on an already registered trademark.
If the Examining Attorney approves the application, it will be Published for Opposition. While an application is Published for Opposition, any third party can try to stop the trademark application from becoming a trademark registration. It is important to do the prep work required, such as conducting trademark searches, to avoid any Opposition which can be costly and time consuming.
If an application survives the Opposition Period, the USPTO will register the trademark after about a month.
One of the best ways to avoid unnecessary delays is to hire a trademark attorney. Most trademark attorneys will be able to foresee any potential issues and file the trademark application to avoid issues.
Flow chart of trademark application process
Do I Need a Lawyer to File a Trademark Application?
There is no requirement that businesses need a lawyer to file their trademark application. However, studies have shown trademark applications filed by attorneys are much more likely to be successful than trademark applications filed by non-attorneys.
In addition, time is money, and a trademark lawyer can save business owners time, and money, by filing a trademark application for a reasonable upfront price. Rather than slog through hundred of pages of trademark rules and regulations and hoping the trademark application is correct, an experienced trademark attorney can save all that time by knowing the rules inside and out. Their knowledge of the rules also will allow them to spot potential problems before filing and craft their trademark applications to avoid those problems.
Do you have any questions about trademark applications or want to file a trademark application but do not know where to start? Contact us today for a Free Trademark Consultation and one of our attorneys will get back to you within twenty-four hours.