To recap, in Part 1 of this series, we discussed the importance of conducting a trademark search, and in Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. Assuming your trademarks aren’t confusingly similar with that of another company offering related goods or services, how do you go about actually registering your trademark with the U.S. Patent and Trademark Office (USPTO)?
Trademark Electronic Application System (TEAS)
Most trademark registration applications are completed electronically on the USPTO website via their Trademark Electronic Application System (TEAS). There are 3 different application options, but most businesses and non-profits should be able to file the standard TEAS Plus applications (not to be confused with the more expensive TEAS Regular application). Remember, the USPTO will not refund your application fee if your application is rejected. The USPTO filing fee is charged for each trademark per class of goods or services (again, see Part 2 for more information about the classification system).
What goes in the application?
Owner of the Mark: In most instances, this should be the business itself, not you the individual owner of the business. A trademark can be a very valuable piece of intellectual property if it belongs to the business. If you file the application in your individual name, you are depriving your business of this asset and making it difficult to license the mark or even sell the business at a later date.
Depiction of the Mark: If the trademark is a word mark, then it is referred to as a standard character mark. This type of trademark protects the wording itself without regard to specific fonts, styles, colors, etc. This is especially good for newer businesses whose logos tend to change over time as they find their place in the market.
Other marks, like logos, are referred to as special form drawings. For these, you will need to submit a clear .jpg image of the mark exactly as it should appear in the final registration certificate and without the TM, SM, or R symbols. This means that if you are claiming certain colors as a feature of the mark, then the image should be in those colors; otherwise, it should be in black and white.
Goods/Services: What goods or services are you using the mark on or in connection with? The USPTO has a very extensive ID Manual that you will need to use to identify your goods and services on the standard TEAS Plus application. You can only list goods and services that you are actually selling (or have a bona fide intent to sell).
Basis for Filing: For our purposes, there are two types of application that you can submit: a “use in commerce” application and an “intent to use” application. These options set forth the “basis” for filing your trademark application. If your business is already using the mark in interstate commerce (meaning, you already sell the goods or services listed on the application across state lines), then you would select the “use in commerce” basis. You must provide both the date of first use of the mark anywhere and the date of first use of the mark in interstate commerce.
Otherwise, you would select the “intent to use” basis, but you should be aware that this option requires additional paperwork to be filed later (which means additional filing and legal fees).
Specimen: The specimen shows how you actually use the mark on your goods or with your services. For products, the mark typically appears on the product itself or on the labeling or packaging. For services, the mark typically appears in connection with advertising or even providing the services, i.e. websites, brochures, advertisements, stationery, etc. The important thing is that the specimen show a clear connection between the mark and the goods or services. Finally, a specimen (in .jpg or .pdf format) must be submitted for each class of goods or services.
With intent to use applications, you won’t have a specimen showing actual use until a later date. For this reason, intent to use applications require a separate Statement of Use identifying your dates of use and providing the UPSTO with the actual specimen.
What happens next?
After the application is submitted, it takes the USPTO approximately 3 months to assign an examining attorney. This attorney conducts their own trademark search and makes a legal determination about whether or not your application meets the legal requirements and your trademark can be registered. If the examining attorney raises any issues with the application, you will receive an Office Action giving you 6 months to respond.
If there are no issues, or once the issues have been resolved, the examining attorney then approves the mark for publication. This gives the general public 30 days to object to the registration of your mark by filing an opposition (or a request for an extension of time).
If there are no objections (or you are successful in overcoming any objections), and you filed a “use in commerce” application, then the USPTO typically issues the registration certificate about 11 weeks after publication.
Alternatively, if you filed on the basis of “intent to use,” then the USPTO would issues a Notice of Allowance (typically about 8 weeks after publication). This gives you 6 months to file a Statement of Use (or request additional time to begin using the mark in commerce). Both options incur additional fees, but you can file a request for an extension of time up to 5 times (giving you a total of 36 months to start using the mark in commerce).
Altogether, this process (from search to registration certificate) typically takes about 8-12 months, but can go much longer if there are competing applications or opposition proceedings.
In the final part of this series, we’ll discuss what you must do to protect your trademark once it is registered. In the meantime, if you need assistance with any stage of the trademark search and registration process: