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.