It isn’t technically necessary to register a trademark in order to get trademark protection because common law trademark rights exist as soon as you create and use a trademarkable feature of your brand. However, many companies still decide to register their trademarks with the U.S. Patent and Trademark Office (USPTO) because doing so comes with several advantages, including the ability to file a lawsuit in federal court if you discover a competitor infringing on your trademark rights.
To learn how to register a trademark and protect your intellectual property rights, keep reading this blog.
What Is the Trademark Registration Process?
Registering a trademark is not a simple matter. For starters, you should expect the trademark filing process to take at least eight (8) months even in the best cases, and up to 18 months if there are delays or legal issues with your application.
There are several stages to the trademark registration process, including the following:
- Trademark Clearance Search
- Prepare & Submit the Application
- Monitor Your Trademark Application Status
- Review of the Trademark Application
- Publication of Your Trademark
- Registration Certificate Issued
Stage #1: Trademark Clearance Search
You must first select a name, design, or other type of mark to be trademarked, and the success or failure of your application for formal trademark recognition will hinge on whether another company already has an existing trademark for a similar name or design. So, before submitting your trademark application to the USPTO, either you or an attorney should perform what is known as a trademark clearance search. By looking through the USPTO trademark database, you can make sure that no one else has already registered a similar trademark before you file your application. The federal trademark register provides information about when a trademark was initially registered, its design, and its product application.
In the event that a trademark already exists for a similar product, the USPTO will likely reject your application. If your application is successful despite the existence of a similar product name or design, you could later find yourself exposed to liability when the other company files a trademark infringement claim against you.
Stage #2: Prepare & Submit the Trademark Application
The USPTO has made it easier to register a trademark by allowing individuals to file their trademark applications online. You can set up a USPTO.gov account on the Trademark Electronic Application System (TEAS). Once your online account has been created, you will be able to file your trademark application. There is a non-refundable application/processing fee of up to $350, as well as additional fees if you need to request more time to show your intent to use the mark. (Assuming your trademark application is ultimately successful, you will then need to pay a filing fee for declaration of use after 5 years, and then a renewal fee every 10 years.)
Stage #3: Monitor Your Trademark Application Status
After submitting your trademark application, it will be your responsibility to keep track of its progress. You’ll be able to do this by using the Trademark Status and Document Retrieval (TSDR) system, which provides easy access to your application and registration information, including the status of any documents that you sent to the USPTO, messages about deadlines for submitting additional documents, and the progress of your application. The system can be accessed 24 hours a day, and logging in requires you to enter either the trademark serial number or the trademark registration number.
You are expected to log in and check your trademark application status at least once every six (6) months, and you should continue checking the status until you’ve received notice that your trademark application was successful. You should also make sure that all personal contact information is correct, including your mailing address and your email address.
Stage #4: Review of the Trademark Application
After you file your trademark application, a review will be assigned to a USPTO examining attorney. The examining attorney will first make sure that your application is compliant with all laws and regulations, and then conduct a thorough search for any conflicting trademarks. At the conclusion of the review, the examining attorney will either accept your trademark or refuse to register your trademark.
If your trademark is rejected, the examining attorney will issue an “office action” via official letter. The office action will provide grounds for the refusal by listing any legal issues that exist with the trademark. If these are minor issues that can be easily remedied, you may be allowed to fix them and still get your trademark approved. You or your attorney will need to respond to the USPTO within six (6) months of receiving the office action. Failure to respond in a timely manner will result in your application being considered “abandoned.”
Stage #5: Publication of Your Trademark
If your trademark application is approved with no objections, the mark will be published in the Trademark Official Gazette (TMOG). This is the official journal of the USPTO, and it is published every week on Tuesday. The publication serves as notice to the public of the existence of your trademark. Once the mark is published in the Trademark Official Gazette, other parties will have just 30 days to take action if they wish to oppose your trademark registration. If an opposition is filed by someone who believes that you are attempting to register a trademark that they already own, the case will go before the USPTO Trademark Trial and Appeal Board (TTAB).
Stage #6: Registration Certificate Issued
After 30 days have passed without objection to your trademark since its publication in the Official Gazette, the registration process will enter the final stage. The issuance of a trademark registration certificate won’t happen quickly, so it is imperative that you continue to monitor your application status online. In many cases, it takes another three (3) months before the USPTO officially registers the mark and sends you a registration certificate. You will then need to file all required maintenance documents (e.g., Declaration of Use, Declaration of Incontestability, etc.) in order to ensure that your registration remains active. This can be done through the online system.
What Happens If Your Trademark Application Is Successful?
At the conclusion of the trademark registration process, the USPTO will issue a decision and either accept or reject your trademark application. If the agency accepts your application and grants your trademark, and there is no subsequent opposition to the trademark after notice is published, you will be able to use the trademark registration symbol ® on your product’s packaging and other materials, which is a good way to deter any possible competitors from attempting to use your trademark.
Once your trademark has been officially registered, the USPTO will enter it in an online database. This will serve as legal notice to everyone in the United States and throughout the world that your trademark is enforceable. If anyone ever violates your trademark rights, you will be able to file a lawsuit in U.S. district court.
Contact the L.A. Trademark Attorneys at Tauler Smith LLP Today
The legal team at Tauler Smith LLP includes Los Angeles intellectual property lawyers who have extensive experience representing both plaintiffs and defendants in trademark disputes. If you received a trademark violation letter, or if you need help protecting your trademark against infringement, we can assist you. Call us today at 310-590-3927 or submit the online contact form to schedule a consultation.