The Availability Search
Whether you want to register a trademark that you have just created or a trademark that you have used for years, the first step in the trademark registration process is to determine whether and to what extent other parties are using trademarks similar to yours. A comprehensive trademark availability search will help answer two questions relating to your trademark: (1) "will anyone have rights superior to mine?"; and (2) "will use of my trademark subject me to liability for trademark infringement?"
The availability search should be performed by a competent trademark research company, and the report should be reviewed and analyzed by a competent trademark attorney.
A properly crafted trademark registration application will (1) help to assure that your trademark registration provides the broadest possible protection and (2) help your application to proceed as smoothly and as quickly as possible through the PTO. Prior to preparing the application, I will obtain information from you regarding the exact name of the individual, corporation or other entity that owns the trademark, the exact dates on which the trademark was first "used" and first "used in commerce," and (3) the nature of goods or services sold under the trademark. I will also obtain from you appropriate tags, labels or other materials to be included with your application.
The Examination Process
Assuming the application is properly prepared and submitted, the PTO will assign a "filing date" as of the date the application was received. If the application meets the filing requirements, the PTO assigns it a serial number. If the minimum requirements are not met, the entire filing will be rejected.
Approximately two to four months after the application is filed, an Examiner at the PTO will review the application and determine whether the mark may be registered. If the examining attorney determines that the mark cannot be registered, the examining attorney will issue a letter, referred to as an "Office Action," listing any grounds for refusal and any corrections required in the application. The Office Action must be responded to within six months, or the application will be abandoned. A proper response to an Office Action often requires legal research and a thorough knowledge of the rules relating to the PTO. If the response does not overcome all objections, the Examiner will issue a "final refusal." If a final refusal is issued, the only recourse is to bring an appeal before the Trademark Trial and Appeal Board, an administrative tribunal within the PTO.
The Examiner may refuse to register the trademark for a number of reasons, including a conclusion that there is a likelihood of confusion between the applicant's mark and a registered mark. Marks which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well. In some cases, a properly crafted response to the Office Action can overcome the Examiners initial refusals to register the trademark.
Publication for Opposition
If the Examiner raises no objections, or after all objections are overcome, the Examiner will approve the mark for publication in the Official Gazette, a weekly publication of the PTO. The PTO will provide a Notice of Publication indicating the date of publication. When the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has 30 days from the date of publication to file an opposition to registration. An opposition is similar to a formal proceeding in the federal courts, but is held before the Trademark Trial and Appeal Board. If no opposition is filed within the 30-day period, the application enters the next stage of the registration process.
Issuance of Registration Certificate
If the trademark was in use before the application was filed, the PTO will register the mark and issue a registration certificate about 3 months after the mark was published (if no opposition was filed.)
If, instead, the application was based on the intent to use the mark (an "intent-to-use" application), the PTO will issue a Notice of Allowance about three months after the mark was published (again, provided no opposition was filed). Within six months after the Notice of Allowance is issued, either (1) you must begin using the mark and properly notify the PTO, or (2) request a six-month extension; otherwise, the application will be abandoned. After the PTO has been properly notified that the trademark is in use, the PTO will then issue the registration certificate.
The trademark registration process has many steps and typically requires a minimum of ten to twelve months (or more) to complete. If your trademark is worth registering, it is worth using and registering correctly and in a way that will provide you with the maximum protection. Before you choose to "do it yourself," or before you pay good money to a trademark registration company that does little more than simply fill out a form, please consider finding a competent trademark attorney capable of guiding you through the entire process. If you would like to discuss your trademark issue, please feel free to contact my office.