Registering a Trademark: What to Expect With Your Application

What to Expect When Registering a Federal Trademark

Before applying for a registered trademark, it’s important to understand exactly what you’re getting into. This is a highly involved process with a lot of legal implications for applicants and their businesses. This article will review the basics of the trademark application process when filing with the United States Patent and Trademark Office (USPTO).

1. Deciding on a Trademark

Finding the right trademark can be challenging even for the most creative business owners. The USPTO has strict standards for what can and can’t be trademarked. To make things even more complicated, many industries are as competitive as ever, which can make it difficult to choose a trademark that isn’t already actively registered. This is one of the reasons that it’s important to perform a trademark search before moving forward with the application process.

2. Filing a Trademark Application

The actual trademark application is filed directly through the USPTO’s website. It comes with a nonrefundable filing fee that ranges from $225 to $400 depending on the type of application. Although the person or entity that will own the trademark can technically file the application themselves, it’s highly advisable to hire an attorney to do this for you to increase your chances of a successful registration. The application requires the name of the trademark’s owner, the trademark’s format, and a description of the associated goods or services.

3. The Trademark Examination Period

After clearing the USPTO’s initial criteria for trademark registration, the application will enter into its examination period. During this stage, an attorney reviews the trademark application, which can take several months depending on the application. If the examining attorney has any questions or sees any potential issues with the trademark, they’ll send a letter called an “office action” to the applicant on file.

4. Trademark Office Actions

Receiving a trademark office action from the USPTO doesn’t mean that the application was rejected. An office action can either be substantive or non-substantive. Generally, non-substantive office actions are sent out for missing information or procedural errors. Most applicants can respond to these on their own. Substantive office actions, however, are much more difficult to overcome and call for an attorney’s assistance.

5. The Trademark Opposition Period

If the trademark is approved by the examining attorney, then it is published in the USPTO’s Trademark Official Gazette for 30 days. This is known as the trademark’s opposition period. During this time, other parties that believe that the proposed mark would harm or infringe on their own rights can file a Notice of Opposition. This Notice pauses the application until the associated proceedings are complete.

6. Trademark Registration, Maintenance, Monitoring and Enforcement

If all previous stages are successfully cleared, then the trademark will be successfully registered. Typically, this comes about 12 weeks after the end of the opposition period. An official certificate confirming this will be sent by mail. However, it’s important to know that while this completes the trademark registration process, it isn’t the end of your work here. Regular maintenance and enforcement is necessary for it to stay active with the USPTO.

Contact our Tampa and St. Pete offices now to schedule your consultation with one of our experienced and reliable intellectual property attorneys.