Anyone can click a few buttons on the USPTO website . . . the special sauce is in making sure the marks are clear for use before doing so. My firm uses a multi-step process to make sure trademark applications for new and existing brands have the best possible chance of achieving the coveted ®.
- First, we thoroughly search records in the Trademark Office system and unregistered users, to make sure that prior users won't pop up to carve little holes in my clients' registrations at a later date.
- After the search results are analyzed, and if they show the proposed trademark is clear for use and registration, we work with clients to make sure we have accurate data for the application with the U.S. Patent and Trademark Office.
- We then file the application with the U.S. Patent and Trademark Office. Whenever possible, we use the "Teas-Plus" system with pre-approved descriptions of goods/services, to make sure that the terms are familiar to the USPTO
- In about to to three months, the application gets assigned to an Examining Attorney at the USPTO.
- In some cases, the Examining Attorney may have concerns about administrative or substantive issues with the application, in which case he or she will issue an Office Action. We have six months to respond.
- If the application passes the scrutiny of the Examining Attorney, it gets approved for publication in the USPTO's "Official Gazette." When I first started practicing law, the Trademark Office would actually print a little leaflet on newsprint each week. It became electronic-only in 2012.
- After the mark is published for opposition, third parties then have 30 days to file an opposition to the pending trademark if they believe they have prior rights in the mark.
- If an opposition is filed, an action commences before the Trademark Trial and Appeal Board. This is like mini-litigation, though no monetary damages are involved. It can last weeks, months, or years if the parties do not resolve the issues before the electronic "trial" involving the trademark rights.
- If no opposition is filed, the application proceeds to registration (for applications that are based on actual use) or a Notice of Allowance is issued (for an intent-to-use application), which allows the applicant to file a Statement of Use or Request for Extension of Time.
- The Certificate of Registration is then printed up and issued. The applicant usually receives the certificate about Once in a blue moon, the PTO will withdraw an application in between allowance and registration, because of other issues that come up or are noticed by a supervisor.
- With some packages, we monitor the marks for a year following registration to make sure no one is trying to register a similar mark for similar goods and services.
Altogether, about eight to nine months can elapse between the initial filing and registration. Sometimes, the process can stretch for years, for instance if an application is "suspended" pending disposition of an earlier-filed application that the Examining Attorney believes is "confusingly similar." Trademark Trial and Appeal Board proceedings can also delay the process.
Photo by Jess Bailey on Unsplash.