The Federal Trademark Process Explained

The Trademarking Process may seem like an enigma, but it can be a straight forward process with a little patience and attention to detail. This article thoroughly breaks down what is required and the typical timeline of registering your Federal Trademark.

1. THE INITIAL SEARCH: The first thing you want to do is make sure your Trademark is available, especially if you are in the beginning stages of your business. Don’t simply do one basic word search, do a thorough search with all the possible names. This stage in the process can help you avoid office actions (see below) as best as possible. If you find that there are registered names similar to yours, locate their classifications to check for any conflict.

2. FILING

   1. CLASSIFICATIONS & DESIGNATIONS: Once you confirm that your name is available, you can file an application with the Trademark Office. You will need to choose the class that your mark falls into. These classifications are identified by certain codes. A couple of common codes are 025 for clothing, 041 for education and communication services, and 035 for business services. You can choose classes that your mark is using right now (1A) or a class you intend to use your mark in the future (1B).

   2. SPECIMENS (Proof): With each 1A classification you need to provide a specimen, evidence that you are actually using the mark in commerce. Service-based businesses must show the mark and a description of their service. Products or Clothing will need to show their mark accompanied with a "display associated with the goods," the specimen must show (1) use of the mark directly associated with the goods and (2) the use must be of a “point-of-sale” nature. The USPTO provides a manual to help you provide the best specimens for your mark.

   3. REGISTRATION COST: The cost to register a trademark is currently $250 per class using TEAS Plus, there are certain requirements that must be met to qualify for this registration, most marks are eligible. TEAS Standard registrations cost $350. The USPTO will charge an additional $100 if they later find that a TEAS standard application should have been filed. You can find more information on registration cost here.

3. EXAMINATION:

   Once you submit your application, it will be assigned to an examining attorney. The examining attorney will do a thorough search and even research different variations of your name. They will either approve your application and publish it for opposition (see below) or issue an office action, explaining why the examining attorney believes your mark should not be registered or requesting more information. Some common office actions are (1) likelihood of confusion, the attorney found a mark in your classification that is too similar to yours; (2) need for disclaimer, asking you to disclaim certain terms that are commonly used in the market; or (3)merely descriptive, the mark you are applying for only describes the services you provide and do not qualify to register. You can respond to an office action within 90 days or request an extension of an additional 90 days if needed. Please keep in mind that this is not an exhaustive list.

4. PUBLISH FOR OPPOSITION:

   If your application is approved, it will be published in the USPTO Official Gazette. Members of the public will have 30 days to object to your registration if they believe that it can cause them harm.

5. REGISTRATION:

   If nobody opposes the registration of your mark, it will move on to the next stage and be registered within a few months. If you filed for intent to use, then your mark will register after you receive a “notice of allowance” and provided a statement of use to the examining attorney by the deadline.

6. TIMELINE: The trademark registration process can take about 12 to 18 months, depending on the caseload.

There are links throughout that send you directly to the USPTO website and guides. You can schedule your consultation today to see if registering your brand is right for you.