Understanding the Trademark Filing Process in the United States
Trademark Filing? First Things First: Identify and Search
Trademark ownership can provide innumerable benefits to your brand and business. Like any application to institutions and state bodies, however, the process of applying for a mark can seem fraught with procedural peculiarities and technical challenges. Below we outline the basic steps of the Trademark filing process and highlight the key concepts that underpin the determination of mark applications.
Identify
The first step in any trademark application process involves identifying the type of mark for which an applicant seeks registration or in other words the category of the mark itself based on its most distinctive and important elements (e.g. alphabetic, linguistic, visual). You are permitted a very wide scale of specificity when identifying the mark type – you may, for instance, register your mark only to the extent of a particular spelling of words or a phrase without specific claims to stylistic features, like font or typeface, color, design (i.e. as a “word mark”). Many trademarks in contrast are registered as a word or phrase graphically constructed with distinct formal features such as colors, font styles, images and symbols (i.e. as “design marks”).
Next, trademark applicants should determine how they will specify the class of goods or services for which the mark will be used, based on the goods and services categorizations used by the Patent Office’s own database. At this stage, you should consult the Trademark ID manual, which lists specific goods and services and their corresponding USPTO-recognized descriptions and classifications.
Search
Once you have determined the type and classification(s) of your mark, conduct what is called a ‘general Trademark search’ that provides you with examples of other successfully registered and comparable marks. Trademark lawyers and experts will be very familiar with this process which aims to determine the likely success of the mark application given the general standards for mark registration and the existence of any identical or very similar marks.
Barriers to registration often arise in instances in which:
· The mark is merely descriptive of the good or service;
· The mark is not submitted in the proper goods or services category;
· The mark is being deceptively; or
· One cannot prove that the mark is being used in commerce.
The success of a mark application will depend at this early stage on the applicant’s procedural and descriptive meticulousness. Applicants attempting to register design marks with the USPTO will need to adduce specific codes attached to drawing and design elements. A helpful starting point for identifying these codes is the Design Search Code Manual, another official database maintained by the Patent Office. Design mark applicants will be required to select the codes applicable to the Client’s mark.
A Trademark search that reflects promising prospects for the application and provides all the relevant classifications, codes and other mark identifiers will enable you to proceed with the filing of a Trademark.
The Filing Process Summarized
In preparing to file an application for trademark registration, you will be required to produce all the details associated with the business that will use the trademark, such as the business’s corporate details and details of the intended owner of the trademark (whether that be an individual or the business itself).
You or you practitioner can then determine whether it is necessary to include special statements as a part of your trademark application. These additional remarks about your application usually aim to qualify the extent of the exclusivity of your intended use of the trademark, either as a matter of your preferences or sheer practicality – a word mark containing the term “lights” for instance may require a disclaimer of the exclusive right to use the word, except when used with other very specific identifying terms in the mark.
You or your practitioner must include a list of these special statements as a part of the application form. If your trademark application is approved, these disclaimers or special statements will typically appear on the trademark registration certificate.
A final step in the filing process involves attaching a ‘specimen’ (e.g. a video, photo, screenshot) demonstrating use of the mark in relation to the goods and services specified in their application. If you are not already using the mark in commercial contexts as a kind of logo, you can apply for further 6 month periods in which to begin using the mark in your day-to-day business and produce a specimen. Be mindful however that every extension of time will entail a fee.
Steps in the USPTO Assessment Summarized
After a trademark application is filed, it is assigned to a USPTO officer for examination. If the officer does not identify any issues with the application, the USPTO will publish the trademark for a period of 30 days in its Official Gazette to summon any objections to the registration of the mark, for instance objections from applicants of pre-existing and similar trademarks. Trademarks are automatically registered if this period of publication passes without any legal objections.
Where and how do I file a Trademark Application?
You can file a trademark application by mail or online, but, as you may have already noticed, the process isn’t always straightforward! In addition to the administrative know-how every trademark filing demands of its applicants, trademark applications will often require the presentation of technical and legal argumentation about marks during the examination and publication periods of the mark. Borderless Counsel, with its plethora of trademark application experience and expertise, is specially equipped to help you submit a successful mark application.
Common Problems: Opposition and Trademark Infringement
During the examination process, the examining officer flags issues with the filing, which could require anything from minor adjustments or clarifications from the applicant to total suspension of the USPTO’s review altogether. The USPTO or other trademark registration body could reject an application, for instance, if the specimen attached shows a mark used in connection with a class of good that is totally irrelevant to any of the class(es) officially listed in the application.
Moreover, it is not unusual for an examining officer to find the application for the mark too vague and require further clarification or specificity from the applicant. As an independent applicant, you may then be uncertain as to how to provide an articulation of your mark specific enough to satisfy the USPTO’s standards or you may want to balance requirements for further individualization of the design against your own conflicting mark preferences, for instance for greater exclusivity of use than the USPTO seems willing to allow. The task of presenting a mark to the USPTO may then become quite tricky – a broader understanding of mark description standards and feasible proposals to the USPTO may seem essential to crafting a successful application that reflects your mark vision.
Indeed, in most cases, a persuasive response to issues raised by the USPTO will require in-depth knowledge of TMEP provisions and trademark caselaw – sources with which independent trademark applicants are usually unfamiliar. This is where trademark expertise services, like those offered by Borderless Counsel, become particularly valuable: their legal knowledge and experience can provide you with the perspective and options regarding your trademark application that are likely to be critical in getting your mark over the line and registered!
Opposition and Infringement
Any party with a claim of ownership of a competing mark can file an opposition to the Trademark filing during the aforementioned 30-day publication period. The purpose of the publication period is to encourage the general public to review the marks that are up for registration and challenge its legal ownership on documented, verifiable bases.
Addressing objections to your trademark filing may also require the assistance of a legal and/or trademark professional. Disputes over trademarks almost always involve the discussion of legal technicalities and precedents. Legal representation also commonly provides contending trademark applicants and registered trademark owners with opportunities to reach settlements diplomatically and at low costs.
What about Maintenance and Registration Issues?
Upon registration, the USPTO will deliver to the practitioner or individual a hard copy of the Trademark certificate, which will include all relevant filing numbers, identifiers, and conditions.
Trademarks can also be sold between legal entities or individuals via contractual agreement, and while marks can also be registered at the State level, which will provide mark protection at that level, all Federal Trademarks are enforceable across the United States.
For help registering your trademark in the US today, get in touch with us at info@borderlesscounsel.com!