Do you have a brand name,special logo, emblem, or “mark” for your business?  If so, have you ever considered filing for a trademark?  If you have not considered doing so, a few reasons you should consider it are:

  • your trademark is protected under the federal Anticybersquatting Consumer Protection Act;
  • if you make physical goods, you can ask the U.S. Customs and Border Protection to automatically confiscate counterfeit and infringing imported goods;
  • you qualify to get trademark protection in other countries;
  • it allows you to bring an infringement lawsuit in federal instead of state court; and
  • it awards trademark owners presumptive ownership on a national level.

Once you have determined that you have an item requiring trademark protection, you are ready to begin the process. First, you must select your mark.  According to the United States Patent and Trademark Office (USPTO), a mark can consist of a “standard character mark，a stylized/design mark, or a sound mark.”  Your mark must clearly identify the goods/services for which the mark will apply.  But not all marks can be registered，so you must determine if your mark can be registered and how difficult it will be to protect your mark.  As the owner of the mark, it is your sole responsibility to protect it.

Now that you have picked your mark, you must search the USPTO database to determine if anyone else is using the same or similar mark.  If no one is using a same or similar mark，then you need to determine your basis for filing and complete the application.  The application and its fee do not guarantee approval, nor is the fee refunded if you do not get approved.

After Application is Filed

After your application is filed and you’ve met the minimum filing requirements, your application will be assigned a serial number and it will be forwarded to an examining attorney.  This whole process can take several months.  The examining attorney will review your application to ensure that it meets with all applicable statutes and rules.  Upon conclusion of the attorney’s review, if they determine that your mark should not be registered, they will send a letter (Office Action) explaining the deficiencies and any minor corrections that can be made.  If you receive this Office Action, you must timely respond or your application will be deemed as abandoned.

After Application is Approved

If the examining attorney approves your application, your mark will be published in the USPTO weekly publication called the “Official Gazette.”  The general public has thirty days from publishing to file an opposition or request an extension to respond.  If an opposition were to be filed, the proceeding is held before the Trademark Trial and Appeal Board，which is an administrative tribunal in the USPTO.

If no opposition is filed, you will receive a Notice of Allowance, whereby you have six months to either use the mark in commerce or you must request an extension. Once your mark is used within the required time period，you must submit a Statement of Use (SOU)，which will then be examined by an examining attorney. If the SOU is approved, then the USPTO will issue your registration.

A very important item to note is that once your mark is registered, you have to keep your registration “live” by filing specific maintenance documents during the life of your mark.  If you fail to timely file the maintenance documents, your registration will cancel and you must start this whole process over again!  Also, don’t forget that it’s your responsibility to protect your mark from infringement.

As you can see, this process is very time and labor intensive，which is why having an attorney familiar with this process, like Robert Pellegrini at PK Boston, can save you both time and money in registering your trademark.