A Brief Breakdown of the Federal Trademark Application Process

by Daniel Griffith IP

February 8, 2023

The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks. Importantly, it’s worth mentioning that trademark rights first are first established when an entity begins using a mark in connection with goods or services in commerce. This article focuses on the federal trademark registration process as an overview to how it works. The process of obtaining a trademark registration can be complex and time-consuming, but it is essential for protecting your brand and provides significant benefits.

Trademark Clearance Search

The first step in the trademark application process is to conduct a trademark clearance search. This is to ensure that the trademark you are applying for is not already registered or in use by another party. There is some leeway if you uncover an exact, or substantially similar, trademark already in use or already on the register. If the trademark clearance search uncovers a mark that is used with goods or services unlikely to be confused with yours, then it may not pose any risk to your brand. For example, Delta Airlines and Delta faucets – same mark, vastly different goods, and services. The important takeaway is a clearance search is very important, arming yourself with as much knowledge of possible headwinds or risk during the pre-filing search process can save you a lot of time and money in the long run. 

Trademark Application

Once you have determined that your trademark is available (or that the risk of using or filing an application to register is acceptable), you can proceed to the application process. The application is generally pretty simple, and a sufficient application must contain various items, such as the owner’s information, a drawing of the mark, and depending on the basis for the application, a specimen, or an example of how the trademark is actually used with your goods. The application must be filed online. The application must include a description of the goods or services that the trademark is, or will be, be used in connection with.

Application Review

After the application is filed, it will be assigned to an examining attorney at the USPTO. The examining attorney will review the application to ensure that the applied-for mark meets all the legal requirements for registration. This includes checking for any potential conflicts with existing trademarks, as well as ensuring that the trademark is distinctive, is not generic nor descriptive, among other requirements. This process is called the prosecution of the application. 

If the examining attorney finds any issues with the application, they will issue an office action. Office actions are quite common, and the issues raised range from minor to quite complex. An office action is fundamentally a formal notice that sets out the reasons why the application is being rejected, or why additional information is needed to allow the examining attorney to approve it. The applicant has three months to respond to the office action, which may include submitting evidence or making changes to the application, and that time may be extended for an additional three months by paying an additional fee.

Once the examining attorney is satisfied the application meets all the legal requirements, it will be approved for publication in the Official Gazette. This is an online publication by the USPTO that “announces” new trademark applications, and which provides thirty days for any third party to oppose the registration of the applied-for mark if that party feels it will be harmed or negatively affected should the trademark be allowed on the federal register. If there is no opposition filed against the pending application within 30 days of publication, the trademark will be proceed to be registered, under most circumstances.

Opposition?

However, if an opposition is filed, the matter will be sent to the Trademark Trial and Appeal Board (TTAB). Matters before the TTAB are akin to federal litigation, and there the Board will hear evidence from both the applicant and the opposer and decide on whether the trademark should be registered. These are complicated proceedings and can be both time consuming and expensive.

The entire process from filing to registration can take several months to several years, depending on the complexity of the application and whether any office actions or oppositions are filed. Once a trademark is registered, it must be maintained by filing maintenance documents and paying required fees at regular intervals. Importantly, the lifespan of a trademark may last forever, as long as the registration is properly maintained, and the goods or services are to be offered in commerce in connection with the mark. This is in stark contrast to a patent, which has a limited window of time for protection.

In summary, the USPTO trademark application and prosecution process involves conducting a trademark clearance search, filing an application, an examination or prosecution of that application by an examining attorney, publication in the Official Gazette, and potential opposition and hearing before the TTAB. This is a simplified breakdown of the process meant to serve as an introduction to those who are generally unaware of how the process works. This process can be lengthy and requires a thorough understanding of trademark law and the USPTO’s requirements. It is advisable to consult with a trademark attorney throughout the process to ensure that the application is handled correctly and to increase the likelihood of a successful registration.

Filing a new trademark or have a problem with an existing one? Contact Daniel at Griffith IP to schedule a consultation: daniel@griffithip.com

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