Is a trademark application necessary and appropriate for your needs?
It’s crucial to learn if a trademark is appropriate for you because trademarks, copyrights, patents, business name registrations, and domain names differ.
In short, trademarks usually protect logos and brand names used for goods and services. Patents protect inventions, and copyrights protect original literary and artistic works. So, let’s say you invent a new blender. Your next steps would include protecting your new invention by applying for a patent. You would then register a trademark to protect the brand name you come up with for your blender. Then, if you market the blender with a commercial, you might even register copyright.
A domain name is the part of a web address that connects to a specific website’s internet protocol address (or IP address). For example, in “https://www.uspto.gov” the domain name is the central part, “uspto.gov”. However, it is essential to note that instead of registering a domain name through the USPTO, you must register with an accredited domain name registrar. Trademarks and domain names differ in that a trademark identifies services and goods sourced from a particular provider. In contrast, a domain name used as part of a web address does not qualify as a source-indicating trademark. However, if you use the domain name for other parts of your business aside from the web address, it may qualify as a trademark. It’s also important to note that registering a domain name does not entitle you to any trademark rights. So, even if you properly register a domain name, you may be required to give it up if it infringes on any existing trademark rights later on.
Similarly, using a business name does not necessarily entitle you to trademark rights. However, using a business name to source goods or services may qualify as both a business name and trademark. In many local and state jurisdictions, business names are registered as either an assumed filing name or a certificate to do business. In other words, to form a business entity, like a corporation or state division of corporations, you can file documents in the state you are doing business.
Prepare for Application
- Selecting a Mark
As soon as you decide that you need trademark protection, you will need to select a mark. Because this is the first step of the overall application and registration process, you will need to select a mark thoughtfully and carefully. It’s crucial to note that not all marks are registrable with the USPTO, and even more importantly, not all marks are legally protectable. Put simply, some marks are not able to serve as a basis for legal claims making it difficult or impossible for business owners to seek litigation against others using a similar mark on similar goods and services. Most business owners new to trademarks and their application and registration process often choose marks that are nearly impossible to register and protect due to various reasons. So, before you file a trademark or service mark application, you must consider:
- If your chosen mark is registrable, and
- The strength of your mark and the level of difficulty involved in protecting it.
It is also important to remember that while the USPTO registers marks, it is your responsibility, as the mark owner, to enforce your trademark.
- Mark Format
You must determine a mark format from the following options: a stylized/design mark, a sound mark, or a standard character mark.
- Identify Goods or Services
It is vital that you clearly identify the exact goods and services associated with your mark.
- Search the Database
To uncover if anyone has already claimed trademark rights to similar wording and designs used for related goods and services as your own, you must search the USPTO database in advance.
- Filing Basis
You must know your “basis” for filing before filing an application.
- Trademark Attorney
Do you have to use a trademark attorney? Well, that depends. If you are foreign domiciled, then yes. This is because you will have to hire an attorney licensed to practice law in the U.S. to represent you at the USPTO. If you are domiciled in the U.S. or any of its territories, you will not be required to have a trademark attorney. However, we do highly suggest hiring one, anyway. A trademark attorney will effectively guide you through the application process and prevent any costly errors.
Submit Your Application
Use the Trademark Electronic Application System, also known as TEAS, to file your application online. Make sure to read the trademark fee information as it is only a processing fee. Therefore, you should understand that there is a chance your application will not be registered, and your fee will not be refunded.
Monitor Your Application Status
You must stay up to date with your application status throughout the entire process. It is your responsibility to monitor your application’s progress using the Trademark Status and Document Retrieval (TSDR) system. You should be checking your application status at least every six months following the initial filing in best practice. If you do not check regularly, you risk missing a filing deadline.
Maintain Applicant Addresses
You must update your address and email address if any changes occur after filing a trademark application.
Correspond with the Assigned USPTO Examining Attorney
USPTO Reviews Applications
Once the USPTO confirms that you have met the necessary filing requirements, your application will be assigned an application serial number and be sent to an examining attorney. Please note that this part of the application process may take a few months. The examining attorney must review your application to determine if it complies with all applicable statutes and rules and includes all the required fees. As previously stated, filing fees cannot be refunded even if your application is later denied and refused registration on legality. A well-rounded review will consist of a search for similar or conflicting marks and an examination of the written application, drawings, and any other specimen.
USPTO Issues a Letter (office action)
If the assigned examining attorney concludes that your mark cannot be registered, they will issue a letter or office action to disclose any substantive reasons for refusal. This letter will also explain any procedural or technical deficiencies in your application. In the case your application only requires minor corrections, the examining attorney may contact you to clarify any discrepancies over the phone or email.
Prompt Response to
If the examining attorney sends you a letter, you or your attorney must submit a response within six months (of the office action’s issue date), or your application will be declared abandoned.
Receiving Approval or Denial of Application
USPTO Publishes Mark
If the examining attorney does not find any discrepancies, or you have already fixed them, the examining attorney will then approve your mark for publication in the “Official Gazette” (a weekly publication of the USPTO). Then, you will receive a notice of publication stating the publication’s date. Once a mark is published in the “Official Gazette,” any party that thinks its registration might damage the mark has 30 days (from the publication date) to file either a request to lengthen the time to oppose a registration. Like federal court proceedings, an opposition is held before the Trademark Trial and Appeal Board (TTAB), the USPTO’s administrative tribunal. However, if there are no successful oppositions, the application moves on to the next step of the registration process. It’s important to note that it may take three to four months from the notice of publication to be sent before the applicant receives official notice of its next status. Therefore, you must continue monitoring your application status through the TSDR system (explained in Step 3).
Issued Registration Certificate for Applications Based on Use
For marks based on use in a foreign registration, commerce, or a protection extension of an international registration to the U.S. under Section 66(a), and no parties file oppositions or request for time extensions, the USPTO will register the mark. Then, they will send the mark owner a certificate of registration. From then on, the mark owner must file the necessary maintenance documents to ensure the registration remains “live.”
Notice of Allowance Issues for Applications Based on an Intent to Use
For marks published based on the applicant’s genuine intent to use the mark in commerce and parties file an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight weeks following the mark’s publication date. Then, the applicant will be given six months from the notice of allowance date to either:
- Use the mark in commerce and submit an SOU (statement of use); or
- Apply for a six-month extension to file a statement of use (extension request).
A notice of allowance does not mean a mark has been registered. Instead, it comes from the USPTO as a written notification stating that the mark has completed the opposition period following its publication in the “Official Gazette” and has, therefore, been allowed. In other words, receiving a notice of allowance is one step closer to registration. It is important to note that notices of allowance are only issued for applications that include a filing basis of intent to use a mark in commerce, as stated in the Trademark Act Section 1(b).
Applicant Files Statement of Use or Extension Request On-Time
An applicant is given six months from the notice of allowance’s mailing date to either file a statement of use (SOU) or file an extension request. While an applicant may file more than one extension request, there are limits on the timeframe they must be submitted within and the total number of extension requests, in general.
Applicant Does Not File Statement of Use or Extension Request On-Time
Suppose the applicant fails to file a statement of use or extension request within the allotted six months. In that case, the application will be considered abandoned and no longer under consideration for approval. If the applicant wishes to continue the application process even after this deadline has passed, they will have two months following the abandonment date to file a petition to revive the application.
USPTO Reviews Statement of Use
Before an examining attorney thoroughly reviews an SOU, or statement of use, it must meet all the minimum filing requirements. Once the SOU’s requirements are met, the examining attorney will determine whether it should receive registration. However, it is important to note that submitting an SOU does not guarantee registration. So, if your SOU/application is later rejected and registration is not granted on legal grounds, you cannot withdraw the SOU or receive refunds for any filing fees. If the SOU meets all the requirements, and there are no refusals, the examining attorney will approve it.
If any requirements or refusals must be satisfied, the examining attorney will issue you a letter, or office action, listing the discrepancies. Similar to the process before the mark’s publication, the examining attorney will determine whether the legal requirements are met, and the process and timeframes are the same. However, if the issues are resolved, and the SOU is approved, the USPTO will issue a registration within about two months. If the applicant leaves any issues unresolved, the application will be abandoned.
Applicant Fails to Resolve Objections
If a mark applicant does not overcome all discrepancies or objections, the examining attorney will issue a final refusal office action. If they disagree with the final result, they may appeal the decision to the TTAB for an additional fee
Registration Certificate Issues
The USPTO issues registrations within about two months following the initial SOU approval. Yet, the registrant must file the necessary specific maintenance documents to keep the registration “alive.” If they fail to file any of these documents, their registration will be canceled or expired. Once this happens, the registrant’s only option is to file a whole new application and start the entire process over again. However, even if your mark was previously registered, this does not guarantee registration for your new application submission.
Monitoring Your Registration Status
You should monitor your registration status through the Trademark Status and Document Retrieval (TSDR) system annually. More specifically, you must check your registration status after you make any of the required filings to keep your registration alive. This includes checking between the fifth and sixth year and between the ninth and tenth year following the registration date.
You must always update and maintain your address and email address.
Protect Your Rights
Because the USPTO does not enforce the use of marks, it is up to you to protect you and your mark once you receive a registration. The USPTO monitors similar marks for related goods and services; however, it is the registration owner’s responsibility to perform the necessary legal action against any parties infringing on their mark.
Stanzione & Associates, PLLC is an intellectual property law firm with over 30 years of experience protecting corporate entities, start-ups, and individual inventors. Stanzione & Associates, PLLC stands above other Intellectual Property law firms because of Mr. Stanzione’s extensive experience working at the United States Patent and Trademark Office (USPTO) as a supervisory level patent examiner. At Stanzione & Associates, PLLC, we have the insight and long-term relationships with the USPTO to work well with patent examiners to achieve quality patents.