In today’s global economy, businesses have unprecedented opportunities to expand, but must also fend off foreign competition like never before. Therefore, a strategy for success must include strong branding supported by federal trademark registration. For a small investment, you can greatly enhance your prospects for sustained growth and profitability. Here’s a brief overview of the steps in federal trademark registration to demystify the process.
- Trademark search — Since your trademark must be unique to qualify for registration, you have to conduct a search of existing registrations and pending applications to find marks that are sufficiently similar to disqualify yours. Professional services are available to do this for you. However, you have to be careful. Not all trademark searches are equal. If you skimp on the cost, paying only for a cursory search of the U.S. Patent and Trademark Office database, you might not learn about an existing state-registered trademark. The timing of the search is also important. It’s best to perform the search before you’ve invested in a company name, Internet domain, and logo design, or you might have to scrap all that work and start over from scratch.
- Filing the trademark application — Your application is for inclusion on the Principle Register, where marks that are “fanciful”, “arbitrary” or “suggestive” are registered. These categories get the strongest protection. If an attorney at the Trademark Office examines your application and rules that your mark is merely “descriptive,” you might be advised to apply to the “Supplemental Register,” which would provide much less protection if you had to sue someone for using a similar mark. This possibility and the chance that another critical error could force you to withdraw your application and start over are strong reasons to consider consulting a trademark attorney to draft your application before filing. USPTO has three options for electronic filing with fees of $225, $275 and $400.
- Overcoming obstacles to registration — After you file, your application goes to a trademark examining attorney who conducts a review. If the examining attorney sees a problem, you may receive an Office Action, directing you to address the issues of concern. If the examining attorney rejects your trademark, you may appeal the decision to the Trademark Trial and Appeals Board and, if necessary, seek a judicial review. Another possible option is to amend the application. It’s important to consult an experienced trademark attorney who can help you perform a cost-benefit analysis of your options, so you can make an informed decision about how to proceed.
- Publication — If the examining attorney approves the mark, usually within 12 months if there are no issues, your mark is published in a USPTO publication called the Official Gazette. This gives notice to the public of your pending registration, so that anyone who believes they may be harmed by your registration has 30 days to express their “opposition.” Opposition is rare and usually arises when someone who holds a registration feels your mark will cause confusion in the public with theirs. The Trademark Trial and Appeals Board reviews documents from each party involved in the dispute. The Board either permits or denies the registration, and either party may appeal the decision. If someone files an opposition, you should immediately consult a trademark attorney.
- Issuance of trademark registration certificate — If no one expresses opposition or you prevail over opposition, USPTO issues a Certificate of Registration in about two or three months. At this point, you can start using the trademark registration symbol, ® with your products. This is also the point at which it is safe to spend on items like business cards, letter head, and advertising.
- Post-registration maintenance — Once you’ve successfully registered your trademark, it is yours forever as long as you take the steps to maintain it. You must file an Affidavit of Use (also known as a “Section 8 Affidavit”) between the fifth and sixth year following registration, and within the year before the end of every ten-year period after the date of registration. If you miss either filing date, you have a six-month grace period to file for an additional fee. As long as you maintain your trademark, it remains “incontestable,” giving you the strongest level of protection in a legal proceeding.
When viewed all at once, this may seem like a mountain to climb, but a knowledgeable trademark attorney can help you take the journey step by step to successful completion. The benefit to your business of having a federally protected trademark will be well worth your effort.