This article explains how you can register your trademark in four simple steps. You may first wonder: Why should I even register a trademark? The answer is simple. A valid trademark registration significantly improves your ability to protect and enforce your brand and can be critical to protecting the goodwill of your company. Valid U.S. trademark registrations provide additional legal rights that strengthen your trademark.
So how can you register your trademark? The process is simple, but it does require some legal knowledge about how trademarks work. So we recommend that you use an experienced trademark lawyer. Here are four simple steps to registering your trademark.
1. The first step is to do a trademark search. A trademark search helps you determine whether or not someone else has already registered the same mark or a similar mark. It may also help you discover if someone else has been using a conflicting trademark before your date of first use. This way you avoid adopting and investing in a trademark that someone else can later keep you from using.
A trademark search can range from a basic search focused on federally registered trademarks to a more comprehensive search covering federal and state registries, as well as common law usage. While you can do a basic trademark search yourself using the U.S. Patent & Trademark Office’s trademark database, we recommend that you use an experienced trademark lawyer. A trademark lawyer will have the experience to ensure your search is thorough and can provide meaningful feedback regarding the implications of your search results.
2. The second step is to prepare and file a registration application. After a trademark search has been conducted and you have settled on a trademark, you will want to have a trademark registration application prepared and filed with the U.S. Patent & Trademark Office. The trademark application can be filed electronically through the U.S. Patent & Trademark Office’s website. The filing fee for a trademark application charged by the U.S. Patent & Trademark Office (in addition to any attorneys’ fees), will either be $325 or $275 per each class of goods or services described in the application, depending on how you choose the description.
It is important to remember that the trademark application includes a number of legal and procedural requirements. Do not be fooled by the simpleness of the process. Legal subtleties overlooked at the time the trademark application is filed can weaken your application, make it more difficult to prosecute it, and even prevent the application from registering, causing you to re-file the application and lose your original filing fee. As stated on the United States Patent & Trademark Office’s website: “because the trademark process requires you to satisfy many legal requirements within strict time deadlines, attorneys (not associated with the USPTO) who are familiar with trademark matters represent most applicants.
3. The third step is to prosecute your trademark application. Filing a U.S. trademark application does not automatically give you a trademark registration. The trademark application process involves review and examination of the application by a trademark examiner (also known as an examining attorney) at the U.S. Patent & Trademark Office. It is common for trademark applications to initially be refused based on technicalities or legal concerns raised by the trademark examiner. Concerns raised by the trademark examiner will be communicated in what is called an “Office Action.” Do not be deterred if your trademark is initially refused registration by the trademark examiner. You may be able to overcome the issues raised in the Office Action and still obtain a trademark registration.
It usually takes at least three months for a trademark application to be assigned to an examining attorney at the USPTO, so you will not likely receive an Office Action until sometime after that. The process of overcoming technicalities and legal concerns raised in an Office Action is called “prosecution.” (Some have also referred to this as “monitoring” the trademark application, but “prosecution” is more accurate.) Having an experienced trademark lawyer prosecute your trademark application can make a significant difference in the success of your application and possibly in the resulting strength of any trademark registration issuing from your application.
4. The fourth step is obtaining the Certificate of Registration. Once you have resolved all of the technical and legal concerns raised by the U.S. Patent & Trademark Office, then the examining attorney will approve the application for publication. Prior to receiving the trademark registration, your application must be published in the Federal Register for thirty days, during which time third parties have the opportunity to oppose registration of your trademark if they believe that they have superior rights and that registration of your mark would injure them. However, if the thirty day opposition period passes without any opposition, then you will receive a Certificate of Registration from the United States Patent and Trademark Office. The Certificate of Registration should contain instructions on how to maintain your trademark registration active.
In sum, registering a trademark can be done in the four simple steps of: (1) doing a trademark search; (2) preparing and filing a trademark application; (3) prosecuting the trademark application; and (4) obtaining your Certificate of Registration. But remember that these steps include a number of legal and procedural requirements that are best navigated by an experienced trademark lawyer to ensure you have the best chance of getting a strong, effective trademark registration.