It is just 3 simple steps:
A trademark, which protects the brand name of a business, can include a word, symbol, logo, or any combination used to distinguish the respective products and/or services from the similar ones in the market.
Trademark protection is territorial and exists only within the boundaries of a country where the trademark has been filed. Entities looking at expanding their businesses internationally must ensure that their trademark is adequately protected in the respective countries where they intend to start their business.
One of the economically leading countries, the United States of America has its own Federal Law and respective State Laws pertaining to trademarks, and a centralized governing authority called as the United States Patent and Trademark Office (USPTO).
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 USTPO database.
The USPTO's Trademark Electronic Search System (TESS) database displays all the registered trademarks and pending trademark applications at one place. You can do a free online search to find if there are any existing, identical marks that may likely cause confusion to the proposed mark. To understand how this works, it is important to know:
The applicants can use any of the three search options, namely Basic word mark search, design mark search and combination of word and design mark search by specifying the “Search term”. All the trademarks related to the specified term will be pulled up at once.
When a particular result is clicked the following details will be displayed:
Vakilsearch trademark professionals and US Trademark Attorneys will help clients understand the results and offer the appropriate advice.
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 as 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 product or service.
The trademark application must include the following details:
The type of business entity - LLP, Private Limted, or LLC, business name and contact details like email address and mobile number.
The intended mark could of three formats:
This format is when the mark consists of words, letters, numbers or combinations without no specific designs and font styles.
If the mark contains any stylized words or numbers in particular typeface, colour and styling as in “Google”, “ebay”, “Kellogg’s” then it would be of special character format.
Sound marks are for businesses who want to register their jingles and chimes. For example, Intel’s five-note logo.
As part of the US trademark registration process, the next step is to provide a specimen of your work, i.e. a drawing of the mark that gives a visual deception of how it looks and how well is it connected with the products/services you offer. The specimen must be submitted in supporting documents like
The intended trademark’s specifications must carefully be drafted to include all the products/services your business offers. It should be as per the acceptable entries of the ID Manual of USPTO, which contains the list of acceptable identification of goods and services. If there is already an accurate description of the products or goods and services it can be used, else the description has to be given in your own words.
As per the Trademark Law, the “filing basis” must include on which basis the trademark or service mark has been filed with the USPTO. It could be one or more basis, depending on the requirement.
Use in Commerce: This basis is if the mark is being used for trade of goods/services across different states and countries or within one state.
Intent to Use: As the name suggests if you “intend” to use the mark in trade and commerce in the near future, maybe within four to five years, it can be filed on this basis.
Foreign Application basis under Section 44(d): If you are looking to register the foreign application that has already been filed within 6 months.
Foreign Registration basis under Section 44(e): If the mark already has a foreign registration, the relevant information along with the certificate has to be submitted.
Once the application is prepared with all the essential details, it is filed with the USPTO and an official filing receipt along with the serial number is issued. The real-time status of the filed trademark can be tracked at http://tsdr.uspto.gov/ using the serial number.
Upon filing the application, within the next three months it 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.).
If any informality and/or substantive ground of objection is found during the examination, an Office Action notice will be issued. You have 6 months time period to file a reply to the Office Action and remove the respective informality and/or respond to why the substantive ground of objection must be waived.
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. The Gazette lists all the newly published marks renewed and cancelled marks. A prior Notice of Publication shall be issued by the USPTO stating the date of the publication of the trademark application.
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 that your mark 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 maximum 180 days for filing an opposition against the trademark, subject to the approval from the USPTO.
In the event an opposition is filed within 30 days or the extended time period, the respective 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 Intent to Use Filing Basic (Sec. 1b). For a trademark application filed on Intent to Use basis, the USPTO shall issue a Notice of Allowance.
Within 6 months from the date of issuance of the notice, the applicant must file the Statement of Use (SOU) with the proof of actual use of the trademark. The applicant has a provision for filing extension of time every 6 months once (not exceeding 36 months from the date of Notice of Allowance) to file the SOU.
If no SOU or extension is filed, the USPTO shall abandon the trademark application. Once the SOU is filed, the USPTO shall review the same and may either approve the SOU or issue Office Action requiring for further clarification. On successful acceptance of the SOU, the trademark will be registered and the USPTO shall issue the corresponding Registration Certificate.
The trademark once registered shall be valid for a period of 10 years from the date of application
Besides just conducting a US trademark search, our expert panel of lawyers offers legal advice on the possibilities of objection/opposition by third parties. A trademark is not only the business identity but also a valuable asset with quite a lot of financial investments, safeguarding the trademark at the very first stage of the application becomes extremely vital.
We provide legal assistance in identifying the accurate class for the filing based on the products and/or services offered by your business.
For instance, the manufacturing of cosmetics and its distribution (retail/wholesale) would not fall under one class, rather it would be two different classes.
Our professionals provide you with a thorough understanding of the various US Trademark Filing Basis options available with the USPTO and help you choose the appropriate US trademark Filing Basis for your business. Not only that we also offer comprehensive advice on the corresponding requisites for each filing basis, that need to be complied with.
The USPTO follows stringent norms regarding the specimen of use submitted for an application filed claiming use. Our expert panel of US attorneys provides insightful and illustrative advice on the appropriate and the acceptable specimen of use.
We keep a close watch on the day-to-day status of the trademark application in the USPTO database. Our team sends regular notifications to you as and when required and duly advice the further course of action.
Our obligation towards your trademark does not end with its successful registration, and we offer all US Trademark Maintenance services, including monitoring the registration status, any updates that your company make with regard to address or entity type.