Step-by-Step Process of How Granite Trademark Services will Secure Your Federal Trademark Registration with the USPTO
The process of obtaining federal trademark registration with the United States Patent and Trademark Office (USPTO) can be overwhelming and confusing. At Granite Trademark Services, our clients will be updated throughout the application process from start to finish. Before beginning the process, it will be beneficial to know what the process entails and the role Granite Trademark Services will play at each stage of the process.
1. Client chooses trademark – a client may have used a trademark for 10 years, 10 days, or does not plan to use the trademark for a few months. Granite Trademark Services can secure trademark protection in any of these scenarios.
2. Client tells Granite Trademark Services the goods and/or services the trademark is used in connection with – this is a fancy way to say, “What do you sell under your trademark?” For example, do you sell goods such as sporting goods or food products? Do you sell services such as financial or construction services? Or do you do both, such as selling your own jackets through your own online store? Based on the information provided, Granite Trademark Services will draft a list of goods and/or services for the client’s review in preparation of filing the trademark application.
3. Granite Trademark Services will conduct a USPTO knock-out search and a comprehensive common law search – in order for the USPTO to approve a trademark application for registration, it must conclude that there are no “confusingly similar” trademarks for the relevant goods and services. To avoid any potential issues, Granite Trademark Services will conduct a search, similar to the searches conducted by the USPTO, to ensure there will be no likelihood of confusion issues, which could result in the application never proceeding to registration.
4. Granite Trademark Services will send a letter via email to the client regarding the likelihood the trademark application will succeed – based on the USPTO knock-out search, the comprehensive common law trademark search, and the distinctiveness of the trademark, Granite Trademark Services will send a letter via email to the client outlining the likelihood of success the application will proceed to registration, any potential obstacles, and how to get around those obstacles.
5. Client tells Granite Trademark Services the other information required to file – in order to file a trademark application, the application must include minimum filing requirements such as the name of the applicant, the applicant’s address, the trademark, the goods/services, a specimen, basis for filing, and the date the trademark was first used. Some of these are self-evident; a couple are not, which are described below:
Filing Basis: a trademark owner can file for a trademark that is already in use, which is known as a 1(a) application based on use, or file a trademark the client has a bona fide intent-to-use in the future, which is a 1(b) application.
Use based application; 1(a): if a trademark application is based on current use, the owner must also provide a specimen* (described below), the date the trademark was first used, and the date the trademark was first used in commerce.
Intent-to-use application; 1(b): if a trademark application is based on an intent-to-use the trademark, the owner does not have to provide first use dates or a specimen, since the trademark has not been used yet. Please note, additional fees from the USPTO will be assessed for 1(b) applications.
*Specimen: the USPTO requires a “specimen” showing the trademark as it is used in commerce. Examples of specimens are hangtags on products or advertisements for services. Granite Trademark Services will work closely with clients to ensure a proper specimen is submitted. Learn more about acceptable specimens at our blog here.
6. Based on the information provided, an attorney at Granite Trademark Services will prepare an application for client’s signature and then file it with the USPTO – an attorney will prepare the application, including the trademark selected, description of the mark, description of the goods/services, the filing basis (1(a) or 1(b)), specimen, first use dates, and have the application sent to the client via email for their electronic signature. Once the attorney receives the electronic signature, the attorney will file the application on the client’s behalf.
7. The USPTO will examine the application and either approve it for Publication, or issue an Office Action – based on the extensive pre-filing work by Granite Trademark Services, our clients will likely avoid an Office Action. An Office Action is issued by the USPTO if there is a procedural defect in the application, e.g. the goods listing is incorrect, or there is a substantive defect, e.g. the specimen of use submitted is not legally acceptable. If an Office Action is issued, Granite Trademark Services will correct the issue free of charge for the client. If no Office Action is issued, the trademark application will be approved for Publication.
8. Any third party can “oppose” the trademark application for thirty days after it is approved for publication – the USPTO searches its own database for any likelihood of confusion issues, and also allows any third party to file a Notice of Opposition against the trademark application for thirty days after publication. Because Granite Trademark Services does extensive searches before filing for possible companies that may oppose the applied for trademark, it would be unlikely anyone files an opposition. If so, Granite Trademark Services will contact the other party and find out why the opposition was filed, free of charge.
9a. For use based applications - after the publication period ends for use based applications, the USPTO will issue a registration certificate in about 12 weeks – once the registration certificate is received by Granite Trademark Services, it will be immediately sent to our client.
9b. For Intent-to-use applications - the USPTO sends a Notice Of Allowance about 12 weeks after the publication period ends – the applicant then has six months to: 1) use the trademark in commerce and submit a Statement of Use along with a specimen; or 2) request a six month extension to submit a Statement of Use.