Since the United States is home to many of the world's product lines, it is difficult for a smaller brand to establish an identity in such a crowded market.
Intellectual property (IP) protection is one of the things that can help a business. IP Protection includes trademarks, patents, copyrights, etc., and it is important to choose the right type of IP protection for your business.
Trademark protection is included as part of that protection, which is essential for developing a reputable brand. Trademarks protect the brand name, logo, slogan, etc. of the company and its products. If you’re convinced that trademark protection in the US is what your company needs, the process of registering a trademark starts with the United States Patent and Trademark Office (USPTO).
There are five steps in the USPTO application process, which are:
Step 1: Prepare to Apply
If you’re sure that USPTO trademark protection is what you need right now, the first step involves getting ready to apply for a trademark with the USPTO. To do that, you first need to identify a mark for the trademark registration process. This should be done after due deliberation as the USPTO does not accept any identified marks. A mark should be identified while keeping a few things in mind, such as:
- Whether the USPTO allows for the registration of the identified type of mark
- The protection level required for the identified mark
After a mark is identified, the next step is to determine the format of the mark and the class of goods and services under which the mark will fall. Another important part of the process under this step is to conduct a trademark search to confirm that there is no conflict with pre-existing trademarks.
Step 2: Create and Submit a USPTO Trademark Application
The next step in the USPTO trademark application is creating an account with the USPTO to gain access to the USPTO’s online filing system, i.e., The Trademark Electronic Application System (TEAS) After creating an account and paying the required fees, you will gain access to TEAS, which is where the trademark application will be submitted.
After applying for a trademark on TEAS, you need to constantly check the Trademark Status and Document Retrieval (TSDR) system to get updates about the status of your application. It is advised to check the TSDR system every 6 months from the date of filing.
Step 3: Collaborate with the Assigned USPTO Examining Attorney
After your application is reviewed and the USPTO finds no violations of the registration criteria, it will be assigned a serial number.After this, the application is then given to an examining attorney who reviews it. This review involves checking if the application does not contravene any statutory requirements, which includes checking the successful payment of the requisite fees. This entire review process may take more than a couple of months.
If during this review, the examining attorney rejects the application on legal grounds, the trademark application is rejected and the filing fees are not refunded. This review also includes cross-checking the identified mark with pre-existing trademarks and also includes an examination of the identified mark.
In the event the application is rejected, an office order will be issued by the examining officer, which would include brief reasons based on which the trademark application was rejected. These reasons may be procedural irregularities, statutory deficiencies, etc. From the date of the issuance of the office order, you would have 6 months to submit a response. Failure to do so would deem the application abandoned.
Step 4: Receive Application Approval or Denial
If the examining attorney approves the application, the USPTO publishes the trademark in its official gazette. This weekly publication contains all newly registered trademarks, and the USPTO notifies all the approved applicants about the publication and the date of publication.
After this publication, the USPTO gives a period of 30 days to parties that believe that the registration of the trademark has caused damage to it. In these 30 days, the parties can either file an opposition or ask for more time to respond. Any opposition filed is heard by the administrative tribunal of the Trademark Trial and Appeal Board (TTAB). If no party raises any objections within 30 days, the application moves on to the next stage. The process from the date of publication to getting to the next stage may take 3 to 4 months.
After this 30-day period ends, the applicant will receive the registration certificate. The next step is to keep the registration alive, and this is done by the applicant filing specific documents.
If the applicant intends to use the mark in commerce, then this should’ve been mentioned in the application. If this is the usage of the mark, then the USPTO, within 8 weeks from the date of publication, will send a notice of allowance which enables the applicant to use the mark in commerce.
The applicant then has 6 months from the date of the notice of allowance to either:
- Submit a statement of use (SOU) and state the intention to use the mark in commerce.
- Request the USPTO to provide an extension on filing the SOU.
The applicant is given 6 months from the date of issuance of the notice of allowance to either file an SOU or a request for an extension. If nothing is filed within these 6 months, the application is deemed abandoned.
Step 5: Keep your Registration Current
After the applicant files the SOU and the USPTO approves it, the USPTO issues the registration. The applicant is expected to provide specific documents. Failure to do so leads to cancellation or expiry of the registration.
After receiving the registration, it is advised to use the TSDR system to check the registration status. The USPTO does not check the unauthorised use of marks, and the applicant is the only one responsible for bringing legal claims against the unauthorised use of registered trademarks.
Vakilsearch can help you with the cheapest way to file a trademark application in the United States. Vakilsearch will do trademark research, select trademark classes, prepare the application and the required documents, and apply and monitor the Examination—Publication—Registration process by assigning a licenced trademark attorney in the United States.
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