Trademarks are important pieces to many businesses. They are how people associate a business with a particular service or product. While there are certain common law protections provided to trademark holders even if they do not file with the United States Patent and Trademark Office (“USPTO”), filing with the USPTO provides the most protection for a mark. This will serve as a general outline of the process for filing trademark applications with the USPTO.
Identifying the Mark and Goods and/or Services Provided
The first step is to identify the mark you wish to protect. This could be a design mark (ie. a logo), a wordmark (ie. a word or phrase), or both. The key is to determine how you are using or plan on using the mark and identifying whether certain colors or fonts are going to be integral portions of your mark. Another key thing to identify is what goods and/or services are going to be provided in connection with the mark. This aids in the review of existing marks and is required in the application process.
Reviewing Existing Marks
Once you have identified your mark, you should review USPTO records to determine whether there are any existing registered marks that will create issues for your application. The most common would be a mark that creates a “likelihood of confusion.” The determination of whether there is a likelihood of confusion involves an analysis of numerous factors, including the similarity of the marks, the similarity of goods and/or services, and the geographic proximity of where the goods and/or services are provided.
Use in Commerce
The next step is to determine whether you are, or will soon be, using the mark in commerce. A “use in commerce” is a public-facing use, such as use in advertising, on a website, or on packaging for a product. This determination drives which type of application will be filed with the USPTO.
Which application to file
Whether your mark is being used in commerce will guide which application needs to be filed with the USPTO. A Section 1(a) application is used when the mark is being used in commerce. A Section 1(b) application is used when the mark has not been used in commerce. There are various other types of applications but Section 1(a) and Section 1(b) applications are the most common.
Application Timeline
Section 1(a)
After filing a Section 1(a) application, the USPTO reviews the application and the applicant receives a response in approximately three months. The response is typically one of two types: an office action or a notice of publication.
An office action is a letter from the USPTO identifying issues with the application that must be addressed before the mark can be registered. These range from administrative issues such as disclaimers as to certain portions of the mark or adjusting descriptions of the marks or the goods and/or services, to likelihood of confusion refusals.
If an office action is issued and the applicant decides to continue to pursue registration, the applicant has 6 months from the date the office action was issued to file a response. If an applicant does not respond within 6 months, the application will be abandoned. If a response is filed, within 1-2 months the USPTO will either approve the mark for publication or issue a final letter which an applicant can appeal.
Once an application is approved for publication, the mark will be published in the Trademark Official Gazette, allowing others to oppose the registration and, if no one opposes, the mark will be officially registered with the USPTO in approximately 3 months.
Section 1(b)
A Section 1(b) application follows a similar pattern to the Section 1(a) application except for one key distinction: once the application is approved and the mark is published for opposition, the applicant has 6 months to file either a Statement of Use showing the mark being used in commerce or an extension, which provides an additional 6 months for the applicant to start using the mark in commerce. An applicant can file up to 5 separate 6 month extensions.
Post Registration Maintenance
Once your mark is officially registered, there are certain filings that need to be done between the 5th and 6th year after registration, between the 9th and 10th year, and then every 10 years thereafter to show that you are still using the mark.
The trademark filing process is lengthy with various nuances throughout. If you have a mark that you believe could be registered with the USPTO, Erickson | Sederstrom has attorneys that can assist with this process from start to finish or anywhere in between