Trademark Registration Process And Timeline

If you’re starting a new business, expanding your business, or developing a new product, protecting your intellectual property is crucial. Here’s everything you need to know about trademark registration and how to do it properly.

 Trademark Registration 

A trademark can be registered for various brand elements as specified below. 

Once you obtain a registered trademark, this provides you with the exclusive right to use that trademark throughout the United States in connection with the selected product or service category. No other entity or individual may use an identical or confusingly similar trademark to yours. This right builds consumer trust and reliability and ensures that no one can infringe on your intellectual property rights. 

Clearance Search Process 

1. Clearance Search – Before a trademark application can be filed, the desired mark must be available for registration. This means that a mark will not proceed to registration if there is already an identical or confusingly similar mark registered with The United States Patent and Trademark Office (“USPTO”). To ensure your desired trademark does not conflict with any other marks, we conduct a clearance search before an application is submitted, reviewing all pending and registered marks on the federal registry, domain names, and social media handles.

2. Clearance Search Report – Our firm uses a software to conduct this clearance search, producing a Clearance Search Report of approximately 200 pages. Our firm reviews the Report and determines whether or not the client should proceed to apply for the desired trademark. 

3. Opinion Letter – Based on the firm’s review of the Clearance Search Report, the firm will provide an opinion letter to you, advising you on how to proceed and notifying you about any potential risks involved. 

Application Process 

The application process consists of the following steps:

Application

We will file the application for the desired trademark for you under the category(s) of goods or services you intend to use the trademark for if the firm’s opinion letter advises you to proceed with the application. Approximately 8-9 months will be required for the USPTO to review your application for the first time.

Office actions

Throughout the application process, issues may arise where the USPTO will require additional information or documentation before the application can proceed. These requests made by the USPTO are called Office Actions. There are two types of Office Actions one can receive: 

a. Administrative Office Actions – This is where the USPTO requires minor clarifications or requests on the application, which are resolved easily and quickly. 

b. Substantive Office Actions – This is where the USPTO determines that there may be a conflicting mark, either pending or registered, with which your application conflicts. In order to respond to a Substantive Office Action, a legal memo is submitted to the USPTO, convincing them that the two marks in question are different and distinguishable and can both exist on the federal registry without conflicting with each other. Once any and all Office Actions are resolved, the application proceeds to Publication. 

Publication

Your mark is ready to be published in the Trademark Office’s Official Gazette. Any third party who has legal grounds to oppose your application has a period of thirty days from the publication date to file a Notice of Opposition to your application. If we receive a Notice of Opposition (which we believe is unlikely), we will be contacted by the USPTO. We will then consult with you and decide the appropriate steps. If no opposition is filed, the mark will proceed to registration after the publication period ends. This could take several weeks. 

a. Statement of Use – If the trademark was not already being used in commerce in the United States at the time the application was submitted, an additional filing will be required, showing that the trademark is being used in commerce, before proceeding to registration. A trademark cannot be registered unless it is being used. This filing is called the Statement of Use Filing. If the trademark was already in use at the time the application was submitted, a separate Statement of Use Filing will not be required, and the proof of use will be submitted along with the initial application. The application will not proceed until a Statement of Use Filing is made, if required. 

Also read:Do I Need a Trademark Attorney?

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Registration

Once your trademark is registered, it will be published on the federal registry, and you will receive a registration certificate. You may begin using the ® symbol. The timeline from the application filing date to the registration date is approximately 12-18 months. 

Maintenance and renewal filings

a. Between the 5th and 6th year after registration, you need to file an affidavit of continued use, stating that you are still using the registered mark in commerce in the United States. 

b. Every 10th year after registration, you will need to file a renewal of registration. We will remind you as these dates approach.

Article by Tamar Toledano

Tamar Toledano is an attorney at Trademark 360, specializing in the practice of Trademark Law. Tamar has been assisting business owners with brand protection by handling their trademark registration applications, handling all communications with the USPTO, and overcoming any legal issues that arise throughout the process. Tamar is a Cum Laude graduate of the Benjamin N. Cardozo School of Law and holds a Bachelor's Degree from Thomas Edison State University. Tamar is admitted to practice law in the State of New York and the State of New Jersey.

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