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The Trademark Registration Process in 5 Steps

reading about the trademark registration process

Jump in with me today where we are talking about the trademark registration process in five steps.

Step 1: The Search.

You must do a trademark clearance search. For me, the trademark registration process begins with a search 98% of the time. Every once in a blue moon, a client really really really does not want me to. And even then, I will coach a client through the reasons why to do a trademark search. And here’s why!

A good trademark search will show:

  • The likelihood that you will succeed with registering your trademark;
  • Whether you can protect your trademark; and
  • Whether you can use your trademark.

Remember that in the US there’s something called “common law” trademark rights. And that means that you don’t have to register your trademark in order to have some rights. So a good search will look — yes, on the Trademark Office website — but also everywhere, to make sure, okay, is there any risk if I continue to use this trademark? Does someone else have more solid rights in this trademark than I do?

Step 2: The Prep.

If the clearance search comes back a-Okay, then the next step of the trademark registration process is gathering materials. We need proof that you are using the trademark in connection with your services. (Like, say, podcasting services.) We need information about the owner: name, address, blah, blah, blah. And we take all of that information along with a good specific list of the services or products that you offer, and put it into the application.

Step 3: The Filing.

Of course, the trademark registration process all depends on actually filing an application! So step 3 is, we file.

Step 4: The Wait.

Step four: we wait… and wait… and wait.

Why? Because nobody at the Trademark Office is going to look at that application for at least three, three-and-a-half months, depending on how backed up the Trademark Office is.

Step 5: The Publication Period.

During the trademark registration process, there is a 30-day period called the “publication period.” In that 30-day period, anyone that feels that they would be damaged by the successful registration of your trademark can file what’s called an “opposition proceeding.” It’s like a little mini lawsuit that takes place completely within the Trademark Office, online. But that 30-day window exists so opponents can either file one, or file an extension so they assess whether they actually want to oppose. So long as no oppositions are filed, the trademark moves on to successful registration!

Recap of the 5 Steps in the Trademark Registration Process

So 1) search, 2) gather materials, 3) apply, 4) wait, 5) publication period. And then you are good to go. It’s super rare that a trademark wouldn’t proceed to registration after that.

Now, there are a few little things that might change up those five steps. If you’re not yet using the trademark, or if the application is rejected, those can cause a little bumps in the road.

But I hope that this explanation helps you understand the trademark registration process in the US, and I’ll see you next time.

Trademark Toolkit: An Educational Resource

trademark toolkit from spear ip

It’s no secret that trademark is one of my favorite topics. Trademarks are everywhere we look — from your Apple TV home screen to your Pinterest feed. In this trademark toolkit, we’ll talk about what exactly is a trademark, the nitty gritty on trademark searches, and things like domain names and trademark registration. Of course, this is educational. If you have a specific legal question, please reach out to a trusted attorney before making a decision.

What is a Trademark

What good is a trademark toolkit without a primer on what a trademark is? A trademark is a word, symbol, or phrase that identifies the source of a product or service. It can even be a non-traditional thing like a sound — you know, like that NBC chime that’s popping into your head just because of this sentence.

The NBC chime is a registered “sound mark” trademark.

When a consumer sees a particular trademark, she automatically associates a certain quality with that brand. That association is based on her experience with the brand. Trademark law ultimately exists to protect the consumer from confusion. How could you make an accurate purchasing decision if there were more than one Jeni’s in the ice cream section, or more than one Better Made in the snack section?

{Trademark Toolkit Checkpoint: What trademarks are reflected in my business?}

Trademark Search vs. Google Search

A Google search is not the same as a trademark search. (Although, it is better than nothing!) A trademark clearance search is a process that looks into similar trademarks used in connection with similar products or services. Yes, S-I-M-I-L-A-R. That means it could be the same word, but spelled differently. Or a related, but not identical, industry.

A thorough search should include the U.S. Trademark Office database and the broader Internet. Remember, a mark doesn’t have to be a “direct hit” to be a problem. If two products are kinda-sorta related, but travel in the same marketing channel, those could be considered too likely to “cause confusion” in the marketplace to coexist.

When I conduct a trademark search, it’s about a 3-ish hour process. I pull all of the results and do an analysis with three main questions in mind:

  1. Does the mark seems likely to be registered without any issues (like rejection by the USPTO)?
  2. Are there risks posed by other trademark owners if my client were to proceed in using her mark, even if it’s unregistered?
  3. Is the mark protectable?

By the way, How Do Domain Names Fit In With Trademark Availability?

It’s a good sign if a top-level domain name is available! But searching for and purchasing your domain name are not the same as a trademark search. 

{Trademark Toolkit Checkpoint: Have I had a thorough trademark search done for my brand name?}

The Benefits of Registration

There are a ton of benefits to registering a trademark.

First, only the owner of a federally registered trademark can use the ® symbol. (So, that’s cool).

Federal registration creates a public record of the information in the trademark application.

Owners of federally registered trademarks also benefit from certain remedies. (Think of a remedy as something you ask for because of the harm that’s been done to you, like money or an injunction).

Owning a federally registered trademark entitles you to special damages. Those include a) the ability to block imports that infringe upon your mark (a great one for fashion brands), b) the potential to recover triple or “treble” money damages for infringement, and c) the ability to file a lawsuit in federal court.

{Trademark Toolkit Checkpoint: Is trademark registration right for my brand?}

Post-Registration

Nobody likes to be a bad guy. I get it. The words “cease and desist” can sound scary and official. But policing a trademark is important to maintaining your rights. In other words, registration is not the end-all, be-all. You have to be diligent in making sure others aren’t getting all up in your business (literally) by using a trademark similar to yours in connection with their similar business. Trademark monitoring provides you with an update on any newly-filed applications or new websites (depending on the package you select). At the very least, you can set up a few Google alerts using your brand name and your industry.

{Trademark Toolkit Checkpoint: Have I looked into trademark monitoring or set up a Google alert for my trademark?}

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online. 

Trademark Scams and How to Avoid Them

avoiding trademark scams spear ip

Becoming the owner of a registered trademark has its perks. Plus, the U.S. Patent and Trademark Office mails you a fancy certificate with a gold seal. In recent years, though, along with that certificate, the USPTO started sending out warnings. Warnings of trademark scams.

Usually sent on an orange piece of paper along with the registration certificate, the notice warns of “misleading offers and notices from private companies.” The fact that the USPTO sends these warnings certainly helps those who aren’t aware of trademark scams, but now scammers are reaching out to applicants right after the application has been filed.

Scammers use the data in your trademark application (which is public record) to get to you. So how do you spot a scammer and avoid falling victim to trademark scams?

Here are some telltale signs of trademark scams:

  • Look for an offer. Some offer legal services, some offer to “record” your trademark in a “private registry” or other registry. The USPTO is not going to make you offers. If you receive an offer, it’s not an official trademark matter.
  • Check the address... The United States Patent and Trademark Office is in Alexandria, Virginia. Any correspondence coming from elsewhere might smell like a trademark scam.
  • …and the email address. All USPTO email correspondence comes from email addresses with the “@uspto.gov” handle.The name sounds official…but isn’t the USPTO. A lot of so-called “agencies” may sound official. If they are not the United States Patent and Trademark Office, though, you know you can discard the message without worry.
  • Fees, fees, fees. In the U.S., you pay 1) a filing fee when you file the application, 2) a statement-of-use filing fee if the application is filed based on intent-to-use, 3) a fee between the fifth and sixth year from the registration date to maintain your registration, and 4) a fee between the ninth and tenth year from the registration date to maintain the registration. So if someone is asking for a fee to “register” or “record” your trademark… raise that red flag.
An excerpt from the USPTO’s notice on trademark scams.

Offers, asking for fees, shady names and addresses… trademark scams can come under any number of disguises. But now you have some education behind you so that you can spot the scams and recycle those unofficial “Official” notices.

What’s next? Click here to download your [free] Essential Legal Checklist from Spear IP.

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Why Register A Trademark? A Look At Registration

Why Register A Trademark

Along with “how does the trademark registration process work?” one of the most common questions that I hear over and over is, “why should I register a trademark?” Your rights to your trademark or service mark begin the minute you first use of the mark “in commerce” (legalese for, essentially, public offering of your goods or services), regardless of whether you register. And, the current fee charged by the Trademark Office per class of goods or services in an application ranges from $225-$275 per class, which can add up if you are in the business of offering several types of goods and/or services. So why register? Because trademark registration comes with some hefty benefits.

The ® Is For Registered.

If you register a trademark with the United States Patent and Trademark Office (or “USPTO”), you will enjoy a variety of perks. Federal registration allows you to use the  ® symbol, which is reserved for federally registered marks, and lets the world know that you consider this mark to be your brand, thus working to ward off infringers.

The Public Record.

Registration also creates a public record of your ownership of the mark and date of registration and date of first use. This can be important if you find yourself arguing with an infringer that attempts to claim his use of a similar brand predates yours.

Also, this public record prevents infringers from claiming their adoption of a similar mark was done in “good faith.” (In other words, “We didn’t know you existed” doesn’t really work as a defense if you have a registered trademark.)

The Potential Remedies.

Other benefits to registering your mark with the USPTO are the remedies available to a brand owner if infringement happens. Think of “remedies” as the things that you ask for in a lawsuit because of the harm that has been done to you. Remedies in general range from things like money damages in the form of lost profits, to non-monetary remedies such as a temporary injunction.

Owning a federally registered mark entitles the owner to the following:

  • Certain statutory damages in cases of counterfeiting, including the potential to block imports that infringe upon your mark;
  • Potential to recover triple or “treble” damages; and
  • The ability to file a lawsuit in federal court (as opposed to state court).

These benefits are important weapons to have in your arsenal when policing your brand against unauthorized users.

Also, knowing that you’re entitled to the remedies listed above could make an infringer more cooperative. How so? Well, they don’t have to respond to your cease-and-desist letter. But the thought of being on the hook for a tripling of your monetary damages? That’s a powerful motivator to respond and work something out.

The Territory.

When you register a trademark with the Trademark Office, you get to enjoy protection in all of the United States. Without registration, you have basic rights. But an opponent could argue that your rights are limited to the states in which you actually operate. (This can leave some gaps in protection!)

The Point: A little investment now can go a long way. Familiarize yourself with these benefits and think about whether your brand could benefit from federal trademark protection.

What’s that? Free info? Yes, please. Click below to learn four things you can do right now to protect your business online.