New clients often ask what it takes to get a federal trademark registration. Here’s a quick rundown:
1. Trademark clearance - The first step entails searching the U.S. Patent and Trademark Office’s database to find previously-filed applications and registrations to determine if your trademark would create a likelihood of confusion. If the marks are similar and the goods or services are similar, the PTO’s examining attorney will deny your application. It makes sense to know what your chances are of getting your trademark registered before you file (and pay the fees). Generic, descriptive, and other types of marks also will be refused and, therefore, risk not being registered.
2. Filing the application - It’s easy to fill out the PTO’s interface. The challenge is making judgment calls along the way, including who owns the application; whether any part of the mark needs to be disclaimed as being unprotectable; how to describe the associated goods or services; what the PTO will accept as proof of use; and whether the mark is generic, descriptive, likely to cause confusion with an existing application or registration, or is subject to any of the other statutory bars to registration. The PTO charges $275 per class of goods or services (if you avail yourself of one of its pre-approved descriptions) and $325 if you write your own.
3. Examination - After filing, your application will sit in an electronic “in” box for a few months before anyone looks at it. When your time comes, an examining attorney will review your application for completeness and against the statutory bars to registration. The more common refusals are for being descriptive and for causing a likelihood of confusion with an existing application or registration. If the examining attorney objects, he or she will issue an “office action” explaining the basis for the refusal. You will then have six months to respond in an effort to address the deficiency or to change the examining attorney’s mind.
4. Publication - Once you clear the examination hurdle, you’re almost home free. The next step is the PTO publishes your mark for potential opposition by third parties. Once published, third parties have 30 days to file a notice of opposition, essentially starting a mini-lawsuit about whether you are entitled to your registration. Third parties can oppose based most commonly on claimed earlier trademark rights in a confusingly similar trademark. Opposition proceedings are decided by a three-judge panel of the Trademark Trial and Appeal Board, the PTO’s administrative law arm.
5. Notice of allowance - If you filed on an intent-to-use (reservation) basis, after clearing the examination and publication hurdles, the PTO issues a “notice of allowance.” That means your mark has been accepted subject to your proving that you have put your mark to use in connection with all of the goods or services listed in your application. You have six months to do so. The PTO charges $100 to process your proof of use. If you need extra time, you can literally buy some. The PTO charges $150 per class of goods to extend the time to file your proof of use by six months. You can keep paying for extensions every six months for up to three years. After that point, if you haven’t proven that you have put your mark to use, your application will be deemed to be abandoned — as if your application had never been filed.
6. Registration - If the PTO accepts your proof of use (if you filed on an intent-to-use basis) or if you cleared the examination and publication hurdles (if you filed on a use basis), the PTO will issue your registration. Congratulations — you’ve accomplished your goal. The filing-to-registration process takes at least 10-12 months.
7. Maintenance - After getting your registration, you’re in the clear for five years. But then you need to start making a series of periodic filings with the PTO to keep your registration current and, in one instance, to cut off potential attacks on your registration. Failure to do so can work to abandon your registration.
I hope this clarifies the process!