WHAT TO EXPECT DURING THE TRADEMARK REGISTRATION PROCESS
Apple, Google, McDonald’s, Gatorade, and Adidas are among the most famous trademarks in the United States. Trademarks registered with the United States Patent and Trademark Office (USPTO) receive broad legal protections.
If you’re starting off in a business, you may want to receive trademark protection for your name, slogan, logo, or symbol, but there are various steps you must take in the process to achieve USPTO recognition. The first, of course, is to prove that your mark is distinctive to your brand and is not being used for a similar product or service by someone else.
For example, “I’m Lovin’ It” may be a trademarked slogan for McDonald’s and its fast food, but if you wanted to register it for a different commercial purpose – say, for cosmetics – the USPTO might allow it. What you can’t receive trademark protection for is a generic term. “Eyeliner” cannot be registered, nor necessarily can “radiant” be registered to protect your brand of cosmetics.
If you have a slogan, name, symbol, or logo for which you wish to receive trademark protection from the USPTO, contact the attorneys at COFFYLAW, LLC. With more than 80 years of combined experience, their trademark and patent attorneys can help you protect your business against others who may want to exploit or profit off your unique identity.
With offices in New Jersey and New York, COFFYLAW, LLC represents clients across the nation.
What Is a Trademark?
The USPTO answers this question in this way: “A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”
Trademarks receive common law protection without USPTO registration, but that protection is limited to the area in which your business operates. If you open “Joe’s Doghouse” to sell your brand of hot dogs in St. Louis, and someone opens an establishment of the same name in Kansas City, your mark would not be protected. Common law rights are limited to your geographic area.
Some states do allow for the registration of trademarks, but again, the accompanying protections would only extend throughout that state. USPTO registration provides nationwide protection. Non-registered trademarks are free to use the trademark symbol (™) to assert local protection, but USPTO registration confers the right to use the Circle R (®) symbol.
Registering With the USPTO
The first step in the process of getting your mark protected by the USPTO is to conduct a search to verify whether your symbol, logo, saying, or name is being used by anyone else. You can certainly start with Google or another search engine, but it will also require that you use the USPTO’s Trademark Electronic Search System (TESS).
Trademark searches can be time-consuming and present interpretive challenges, so it’s a good idea to partner with an experienced trademark attorney to make sure you’re on solid footing before proceeding to file for protection. In fact, the USPTO’s website says that they “strongly encourage you to hire a U.S.-licensed attorney who specializes in trademark law to guide you through the application process.”
Once you are certain your mark is unique enough to qualify, you must set up a USPTO account using the agency’s Trademark Electronic Application System (TEAS), which requires a two-step identification. Your application must be accompanied by a processing fee that is non-refundable. As the application process goes forward, you and your attorney should monitor what’s happening using the agency’s Trademark Status and Document Retrieval (TSDR) system.
Once the agency determines that your application meets minimum filing standards, an application serial number will be assigned and the application forwarded to a USPTO examining attorney. This step can involve several months. The examining attorney will further search for conflicting marks and determine whether the application complies with all rules and statutes.
Approval or Disapproval?
If the examiner determines that the mark does not qualify, they will issue an “office action” and send a letter to the applicant notifying them of the decision. The applicant must then respond within six months or the application will be deemed abandoned.
On the other hand, if the examiner approves your mark, it will be published in the USPTO’s “Official Gazette,” and other parties have 30 days to challenge the mark or request an extension to review the mark and oppose it. If a third party does oppose your mark, the case will be heard before the Trademark Trial and Appeal Board (TTAB).
If there is no opposition or the opposition is unsuccessful, the USPTO will register the mark and send the owner a certificate of registration, but this step of the process usually takes three to four months after official publication.
Turn to Knowledgeable Legal Guidance
As you can see, the path to securing a trademark can be a rocky one. Though it’s possible to navigate the system on your own, it can be challenging and confusing. The best advice, as even the USPTO suggests, is to hire a knowledgeable and experienced trademark attorney to guide you through every step.
The attorneys at COFFYLAW, LLC stand ready to help you seek USPTO protection for your trademark. With offices in New Jersey and New York, COFFYLAW, LLC represents clients across the nation.