Introduction to Registering a Trademark
The owner of a mark (trademark, service mark, or trade dress) receives automatic protection at the common law level as soon as the mark is actually used in commerce. But as with copyrights, that protection is very limited absent state and/or federal registration. If the mark is used only in one particular state, then registration at the state level should be sufficient. However, where a mark is or will be used in more than one state, it is advisable to register a federal trademark with the United States Patent Office. This article will briefly explore the registration process. For more information about state registration, see "State Registration Process". For more information on the benefits of registering your trademark, please see the article entitled, "The Benefits of Registering Your Trademark."
Who May File a Trademark Application?
The application must be filed in the name of the owner of the mark; which is generally an individual, corporation, limited liability company, or partnership. The owner of the mark may submit and prosecute its own application for registration (which we strongly recommend against), or may be represented by an attorney. It may be more beneficial and less costly in the long run if you use the assistance of a qualified trademark attorney to file your trademark, as simple errors and mistakes can at a minimum delay the registration process by as much as one full year, and more often than not can lead to cancellation or abandonment of the application which carries a non-refundable filing fee. Remember, although the application may appear simple, it is actually very detailed, and the amount of information you provide and the manner in which you describe your product or service can make all the difference.
When to File a Trademark Registration Application
Unlike patent applications, which in many cases must be filed in advance of a particular date, there is no specific date by which a trademark application must be filed. But like copyright applications, there are benefits to filing your trademark application as soon as possible.
At the federal level, an application for a federal trademark or service mark can be filed on either on an "Intent to Use" or "In Use" basis. If the applicant has not yet used the mark in interstate commerce, filing on an "Intent to Use" basis can be advantageous; the intent-to-use application will preserve the original filing date, even though the applicant's actual use of the mark in interstate commerce may occur at a later date. To file the "intent-to-use" application, the applicant merely must have a good faith intent to use the mark in interstate commerce. The intent-to-use law, however, does not permit "reserving" trademarks for indefinite periods of time. By filing extensions, one of which is granted automatically, the applicant can extend the intent-to-use application for up to about two years before actually having to prove the mark is being used in interstate commerce. Failure to show actual use of the mark in commerce within this time frame can lead the Patent Office to cancel or abandon your mark. The other downside to the intent-to-use application, is the additional filing fees and attorney's fees associated with showing proper cause for any extension and thereafter actual use of the mark. If the extension will be sought for the maximum period (approximately 2 years), the additional filing fees and attorney's fees can add up quickly.
The Information Needed to Prepare a Trademark Registration Application
The Law Office Of Melissa C. Marsh files many trademark applications at both the state and federal level, as well as foreign Marks through a network of trademark experts around the world. The information necessary for your to compile depends on the type of registration sought:
Regardless of the Application Sought, the following information will need to be collected:
- The Typed Word Mark, Design Logo, or combination thereof (e.g. LEGAL CORNER);
- A detailed description of the products or services to which the Mark relates;
- A drawing of the Mark if it is a logo or stylized lettering, and the colors if such are included;
- Copies of any previously related filings, whether at the state level, the federal level, or in a foreign country; and
- The filing fee: presently $325 for each class.
If the filing is based on Actual Use, then in addition to 1-5 above, you will also need to gather the following information:
- The date you first used the mark in commerce anywhere (actually sold the goods or services which the mark identifies);
- If a federal application is sought, the date you first used the mark in interstate commerce (actually sold the goods or services which the mark identifies in more than one state, or in a foreign country); and
- Three identical copies of the same specimen showing the Mark as used in interstate commerce.
If you are a foreign applicant who resides (lives) abroad, then in addition to 1-8 above, you will also need to:
- Designate a "Domestic Representative" (name, address and telephone number of a person who lives in the United States) by signing a written statement. Unless the applicant is represented by an attorney, this person will receive all communications from the USPTO.
If you live in the U.S., but are seeking to file a foreign trademark application then in addition to 1-8 above, you will also need to:
- Appoint an agent and sign a power of attorney authorizing the agent to prosecute the trademark application.
How Long The Trademark Registration Process Takes
The registration process for a federal mark takes generally takes between 15 and 20 months. Generally the process begins when you file the trademark application either by express mail or federal express. Several months after the Trademark Office receives your application, it will send a formal filing receipt acknowledging receipt of the application only. The application will then be assigned to a trademark examiner, who will review the application. The examiner may approve the application as filed, or may issue an Office Action to seek amendments to the application, or the examiner may refuse the registration on any number of grounds. If approved, the examiner will order that the mark be Published for Opposition in the Trademark Gazette. Upon publication, anyone may file an objection within 30 days. If there are no objections, a Certificate of Registration will be issued.
Unlike the lengthy and complicated federal registration process, state registrations are generally less complicated, less expensive, and accomplished within a 4 to 6 week period.
