Trademarks play a crucial role in protecting the unique identities of businesses and products, enabling consumers to identify and trust specific brands. If you’re a business owner or entrepreneur looking to secure trademark rights, it’s essential to understand the process involved. In this blog post, we will explore the process of obtaining a federal trademark, focusing on the two primary types: intent-to-use applications under Section 1(b) of the Trademark Act and use applications under Section 1(a).
Understanding Trademarks:
Before diving into the application process, let’s clarify what a trademark is. A trademark is a distinctive symbol, word, phrase, design, or combination thereof that distinguishes goods or services from those of others. It helps create brand recognition and protects consumers from confusion or deception.
The Process: Intent-to-Use Application (Section 1(b))
- Conduct a Trademark Search: Before filing an application, it’s crucial to conduct a comprehensive trademark search (sometimes referred to as a “knock out search” or “clearance search”) to ensure your desired mark is not already registered or in use by another party. The USPTO website provides valuable search tools and databases to assist in this process. There are also third-party services that conduct clearance searches.
- File an Intent to Use (ITU) Application: If you have not yet used the trademark but have a bona fide intent to do so in the future, you can file an ITU application. This reserves your priority based on the application filing date, giving you time to develop and launch your product or service. The application requires a detailed description of your goods or services and a filing fee.
- Office Action: After filing your application, it is assigned a serial number and forwarded to an examining attorney. If the examining attorney determines your mark should not be registered, the examining attorney will issue a letter (office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If you receive an office action, you must submit a response within 3 months arguing why you believe your mark should be registered.
- USPTO Publishes Mark: If the examining attorney raises no objections to registration, or if you overcome all objections, the examining attorney will approve the mark for publication in the “Official Gazette,” a weekly publication of the USPTO. The USPTO will send you a notice of publication stating the date of publication. After the mark is published, any party who believes it may be damaged by registration of the mark has 30 days from the publication date to file an opposition to registration. If no opposition is filed or if the opposition is unsuccessful, the USPTO will issue a notice of allowance.
- Notice of Allowance: A notice of allowance (NOA) is a notification from the USPTO that your mark has survived the opposition period following publication and has consequently been allowed; it does not mean the mark has registered.
- Statement of Use: Within 6 months after the NOA you must either file a Statement of Use (SOU) or request a 6-month extension. A SOU provides evidence of your actual use of the mark to the USPTO. The SOU includes specimens, like labels, tags, packaging, or advertisements, showing the mark in connection with the goods or services.
- Registration: If the USPTO approves your SOU, the USPTO will issue a registration and you will receive a Certificate of Registration.
- Maintenance: To keep your registration live, you will need to file certain maintenance documents of your mark will be cancelled. These maintenance documents typically are not due until between the 5th and 6th year after registration.
The Process: Use Application (Section 1(a))
Conduct a Trademark Search: As with the ITU application, start by conducting a thorough trademark search to ensure your desired mark is available for use.
- Use the Trademark in Commerce: Unlike the ITU application, with a use application, you must have already started using the mark in commerce before filing. This includes selling goods or offering services under the trademark.
- File the Use Application: Submit a use application to the USPTO, including a detailed description of the goods or services associated with the mark, specimens showing the mark in use, and the required filing fee.
- USPTO Office Action: Just like an ITU application, an examining attorney with the USPTO reviews your application and either approves your application for publication or issues an office action.
- USPTO Publishes Mark: Also like an ITU application, once the examining attorney’s objections are overcome (or there are none), your mark will be approved for publication then parties may file an opposition.
- Registration and Maintenance: If no opposition is filed or if the opposition is unsuccessful, the USPTO will register your mark. Like an ITU application, you will need to file the required maintenance documents.
Valuable Resources on the USPTO Website:
The USPTO website is a valuable source of information and guidance throughout the trademark application process. Here are some helpful resources:
- Trademark Basics: The USPTO provides an extensive section on trademark basics, including an overview of the registration process, eligibility requirements, and frequently asked questions.
- Trademark Electronic Search System (TESS): TESS allows you to search the USPTO’s database for registered trademarks and pending applications to ensure your desired mark is available.
- Trademark Electronic Application System (TEAS): TEAS is an online portal for filing trademark applications and managing your trademark portfolio. It provides step-by-step guidance, forms, and fee information.
Obtaining a trademark involves navigating a well-defined process, and understanding the differences between intent-to-use and use applications is crucial. By familiarizing yourself with the requirements and leveraging the resources available on the USPTO website, you can confidently pursue trademark protection for your business or product. Remember, trademarks are valuable assets that distinguish your brand and instill consumer trust. Safeguarding your trademark rights ensures your unique identity remains protected in the marketplace.
Contact our team of trademark attorneys today to see how we can help with your trademark application.
