US Trademark Registration

Documents Required

Initially, you only have to provide us with the following details:

• Name of the applicant
• Address of the applicant
• Details of the mark
• Specimen or drawing of the intended mark (video clip or audio files if it is sound mark)
• Business type and objectives.

US Trademark Registration Process

The US trademark registration process can be a little complicated and time consuming. Here is an overview of the process.

Step 1: Trademark Search

Prior to filing a US trademark application, you must check whether the intended mark is available to register. This can be done through online trademark search in the USPTO database. If no similar results show up when you search for your mark, then good news, your mark is available to register.

If you get search results, then you need to understand what it means. Our experts will take care of the trademark search and provide you with a search report as a part of the service.

Step 2: Identification of Class

The USPTO has classified all the goods and services under 45 classes, under which the trademarks have to be registered. These classes are also called NICE classification (NCL). For example, all musical instruments fall under Class 15; Class 14 contains all precious metals and their alloys, precious stones, etc.

The class has to be identified based on the products and/or services. Selecting classes is crucial as it will decide the scope of trademark protection for business. For example, if you register a trademark under Class 7, your mark is protected only in that class and other people can register it in other classes.

Our experts will guide you in choosing the right classes for your business.

Step 3: Preparing a US Trademark Application

The trademark application must be filled with utmost care. It requires details like applicant's basic information, details of the mark, explanation of relevance of mark, specimen of use, filing basis, etc.

If the trademark is already in use, then proof of usage needs to be submitted with the application.

Upon the filing of a trademark application, all trademark applications must adhere to a certain trademark timeline.

This process normally takes 3 to 4 months if all documentation and other conditions are in place.

Step 4: Filing of Application

Once the application is prepared with all the essential details, it is filed with the USPTO by our US attorney. A link will be sent to you for signature and fee payment for the same. Once the filing is completed, an official filing receipt along with the serial number will be issued. The real-time status of the filed trademark can be tracked at http://tsdr.uspto.gov/ using the serial number.

If all goes according to plan, your trademark could be registered in less than 12 months. This can vary by a few months depending on key parts of your application, and we can file any objections within 15 days if required.

Step 5: Trademark Examination

Within the next three months your application will be assigned to the Trademark Examiner or Trademark Attorney, who will investigate the application for substantive grounds of objection (similarity with other marks, etc.).

Step 6: Trademark Office Action

If any informality and/or substantive ground of objection is found during the examination, an Office Action notice will be issued. You have a 6 months time period to file a reply to the Office Action and deal with the respective informality and/or respond to why the substantive ground of objection must be waived.

Step 7: Publication of Trademark

In the event of no informality and/or objection, or once a response to the Office Action has been filed and the same is duly accepted by the Examiner, your trademark application shall be approved for publication in the respective Trademark Official Gazette. A prior Notice of Publication shall be issued by the USPTO stating the date of the publication of the trademark application.

Step 8: Trademark Opposition Period

Within 30 days from the date of publication of the trademark application in the Trademark Official Gazette, any third party and other trademark owners may oppose your proposed mark on the grounds that it is similar to their brand and/or may cause commercial or economic harm to them. In such a case, they can also file for an extension of time for a period of a maximum of 180 days for filing an opposition against the trademark, subject to the approval from the USPTO.

If an opposition is filed, the opposition proceedings shall be initiated.

If no opposition arises during this period, the USPTO shall issue the Registration Certificate for the trademark, provided the application is not filed on an ‘Intent to Use’ basis (Sec. 1b). For a trademark application filed on ‘Intent to Use’ basis, the USPTO shall issue a Notice of Allowance.

US Trademark Validity

The trademark, once registered, shall be valid for a period of 10 years from the date of application. You can file for renewal before the end of the 10 years to continue getting trademark protection.

Why Vakilsearch?

Here is why you should choose Vakilsearch for US trademark registration:

• We conduct a thorough search of the USPTO directory
• Our experts guide you with the classes you need to apply under
• We fill and file the application
• We constantly provide you with updates until the registration process is complete
• You get the best support throughout the process and all your queries will be answered.

Benefits of Registering a US Trademark

USA trademark registration offers the following benefits to the business:

• Protects your brand identity and value
• Makes it easier to secure trademark in other countries
• Builds an asset
• Prevents counterfeiting and fraud
• Defines your rights
• A single registration in one language that is valid in all US States
• Your brand is protected in a market of around 331 million consumers.

Important terms

Absolute Grounds

Absolute grounds for refusal of registration are factors within the individual trademark in isolation which hinder registration.

Application Number

A serial number assigned by the registering office as a unique identifier for each incoming application.

Collective Mark

A trademark registered (or used) by an organisation for the purpose of licensing it to its members as a sign of membership in that particular organization.

Exclusive Right

A trademark confers its owner an intellectual property right, which is an exclusive right. That is, the owner of a trademark has, with certain limitations, the right to exclude others from commercially using a similar mark for similar products.

Trademark Renewal

A trademark registration is not automatically perpetual but rather granted for a limited term, nowadays almost universally 10 years at a time.

Service Mark

A trademark which designates services rather than tangible goods.

USPTO

The United States Patent and Trademark Office. The federal-level trademark office in the US, for registering trademarks which are used in interstate commerce.

Word Mark

A trademark in the form of a word regardless of their graphic design.