How to File a Trademark Application

USING TRADEMARKS TO PROTECT YOUR BUSINESS

As mentioned in an earlier post, a trademark is a recognizable symbol, figure, slogan, or mark that is used by manufacturers or entrepreneurs to distinguish their product from competitor’s products. Trademark protection ensures that only the owner of the mark can use the trademark with the designated goods or servies. Trademarks protect your business by preventing others from using confusingly similar slogans, logos, or names.

SELECTING A MARK, SLOGAN, OR LOGO

Trademark procurement can be a very powerful investment in the long run. The process starts when you identify your products with a distinctive mark- a word, slogan, or logo that you use or plan on using with your goods or services.The more unique and abstract, the better your chances are at obtaining registration. Marks that are descriptive are more likely rejected, so are marks that include a surname or a geographic location.

PERFORMING A TRADEMARK SEARCH

Once you have selected a mark, the next step is to perform a trademark search to make sure your mark does not already exist; you should always conduct a trademark search of the federal registry, but it is also advised to perform state-wide trademark searches as well as searches of business names in any areas in which you ultimately plan on doing business in. Adopting, using, and registering a trademark, without doing so, can be a risky and ultimately expensive mistake. Tens of thousands of applications are filed with the USPTO every year, and even more trademarks are used without a registration. Unregistered trademarks, however, do not have the same rights and advantages as a registered federal trademark, but even unregistered marks may prevent registered mark owners from using their registered mark within a particular geographic location. Make sure to ask your trademark attorney if their search includes a local search of the area you plan on expanding your business into, in addition to a search of the federal registry. Of course, when you are starting a business, if you have a limited budget, it makes sense to focus your search to where you plan on selling your goods or services; the more extensive trademark searches can be time consuming and therefore expensive.

PREPARING THE TRADEMARK APPLICATION

After conducting a search, and establishing that a mark will be safe to use with the goods and services you are selling under the mark, or intend to use under the proposed mark, the next step is to file a trademark application. Filing a trademark is not very difficult since you are required only to provide the word or words, and/or the drawing or logo you intend to use as your mark. You also have to provide ownership information such as an address and contact information. Moreover, you will be asked to provide identifying information for the class of goods or services. Since you cannot broaden the class of goods or services in a trademark application at a later time, make sure to go through the list and pick every class that matches your intended use or actual use. Similarly, you will be asked to identify whether you will be filing for a mark that you are currently using or intend to use. Finally, you will be required to sign your application, submit it to the USPTO, and pay the fee- usually between $275 and $325 per class of goods or services. It is always advisable to contact an attorney, but if you decide to file a trademark application on your own, carefully follow the instructions provided.

PROSECUTING THE TRADEMARK APPLICATION

Once the USPTO receives the trademark application, a government attorney will examine it. During that examination process the examining attorney will perform their own search and see if there are any conflicting trademarks. A trademark is considered a conflicting mark if it has either registered before your mark or applied for before you have applied for your mark, and if the mark is considered confusingly similar. Although the test of whether marks are confusingly similar involves a long list of factors, which I wont include in this post, basically, confusingly similar marks are similar (for example, in the way they look and sound) and cover the same class of goods or services. Additionally, the examiner will look to see if the mark is primarily descriptive, includes a surname or geographic location- all basis for a rejection. If none of these issues are found with your mark, the examining attorney will allow your mark to register. Often, a trademark attorney at the USPTO will identify one or more issues with your trademark application that will require one or several responses to overcome the rejection- sometimes, these rejections may even have to be appealed. That is, your mark will be rejected unless you persuade the trademark attorney that your application should be allowed to register into a trademark. If you receive one of these rejections, and the mark is important to your business, contact us or get in touch with your trademark attorney to avoid abandonment of your application.

CONTACT A TRADEMARK ATTORNEY

This process of applying for a trademark is called trademark prosecution. While filing the trademark application itself is not a particularly complicated procedure, responding to a trademark office action can be tricky- more importantly, failure to respond properly may cause you to loose rights you may otherwise be entitled to. If at any time during this process you get confused, have any questions, or are unsure about how to respond to an office action, please contact us or your trademark attorney to guide you through the process. At JLG we are experienced in drafting trademark applications and responding to office actions in trademark matters- let us guide you and make sure your brand is adequately protected.