General knowledge about the process of applying for, receiving, and maintaining a U.S. registration of your trademark or service mark (generally, your mark) is helpful for planning your product branding and making your marketing plans. The process itself is relatively straightforward: You submit an application, and an examiner, after determining that your mark is or is not registrable and seeing to it that your application complies with the rules, either approves or refuses registration. Approved, your application is published for opposition. Then, unless a third party opposes your registration — you and the Trademark Office being the first and second parties — your registration will issue sometime later, the time depending on you and the basis on which you filed the application. As relatively simple as that is, however, the process us fraught with enough technical issues that a business usually is best served by having someone with experience shepherd the application through it.
Months after you file your application, the Examining Attorney will perform a search to determine that there is no conflict between your mark and a currently registered or previously applied-for mark. Nothing requires you to have done this search prior to submitting an application, but it makes good sense to do, or to have done for you, a thorough search of everything that may possibly affect your use of your mark in commerce before you file your application.
The application for registration requires you to state what your mark is, provide a drawing of the mark, describe your goods and/or services, identify yourself accurately, and swear that you believe you have the right to use the mark. If you claim that your mark is already in use in interstate or international commerce, you also have to provide an authentic specimen showing the way you are using it and give the dates of its first use. In all cases you have to pay at least the basic filing fee. The application is given a serial number and a tentative filing date as soon as the Trademark Office receives it. Later, if it turns out that you indeed fulfilled the minimum requirements, the date of receipt in the Office will become the application’s official filing date — the date that establishes its place in line with respect to other applications — otherwise your application is sent back, and you start over. Still later, when your application is examined, certain other errors can cause you to have to re-apply entirely, including payment of another filing fee.
Applications can be submitted on the basis of your use of the mark in interstate or international commerce, on the basis of your intention to use the mark in interstate or international commerce, or on the basis of reliance on a foreign application and/or registration in a country with which the United States has a treaty relationship regarding trademarks. The filing basis, however, doesn’t usually affect the processing of your application through its examination.
Substantive examination of your application includes a search for conflicting registrations and prior-filed applications and a determination of whether the mark itself meets the statutory requirements for registration. At the same time the examiner will determine whether the application is in order, considering such things as the acceptability of your description of the goods and services. If the examiner rejects your application or finds it defective, he or she will contact you.
Refusal of your mark for registration can be made on any of the five statutory bars to registration, the most commonly cited of which are “likelihood of confusion” with a previously registered mark and a determination that your mark is “merely descriptive” of some aspect of your goods or services. Initial refusals often result from a misunderstanding or misreading of your application, and you always have the opportunity to respond and persuade the examiner, and to correct most shortcomings. Even when a refusal to register your mark is made final, you have several avenues of appeal, up to and including the Supreme Court of the United States.
If your application is finally approved, it can then go in one of two directions. A mark to be registered on the Supplemental Register proceeds directly to registration; you get your Certificate of Registration and you’re done for a few years. For a mark that qualifies for the Principal Register, the application must then be published for opposition. If you are relying on a foreign registration, you must first submit a copy of the foreign registration before publication or registration on the Supplemental Register.
Matters that have consequences for the general public are published for public comment, and the decision to register a particular trademark or service mark affects both sellers and buyers in the marketplace. So every Tuesday throughout the year the Official Gazette of the United States Patent and Trademark Office makes public trademark applications that are about to be registered or allowed for registration. For a period of 30 days from the date of its publication, anyone may oppose registration of your mark. Although most oppositions are brought by businesses who believe the new mark is confusingly similar to their own registered or unregistered mark, anyone may oppose registration of any mark on the basis of any factor that would cause the mark to be unregistrable. An opposition to a registration is usually first tried before the Trademark Trial and Appeal Board, an administrative court in the Trademark Office, and may be taken on appeal to Federal court.
Unless you have relied on a foreign registration of your mark, an application filed and published under an intention to use the mark does not proceed to registration until you attest to use of your mark in interstate or international commerce in connection with the goods and services that you described in your application. Otherwise, your mark will be allowed for registration, but not registered.
After allowance, you will have, initially, six months to submit your affidavit and evidence of use of your mark in international or interstate commerce. If necessary, and as long as you can justify the delays, you can ask for additional time for filing your affidavit of use. Extensions of time are given in six month increments for up to a total of three years from the date of allowance, and there is a fee associated with each six-month extension. However, as long as your application remains active, no one else may register the same or a similar mark for related goods and services, so that anyone who filed for registration of such a mark after you did has to wait for you.
Whatever path brings you to the point of registration of your trademark or service mark in the U.S. Patent and Trademark Office, the benefits of registration are clear and valuable. The most visible advantage of registration is represented by the ? symbol of a registered trademark that is the outward sign a registered mark. The simple fact of this symbol usually deters others from taking up identical or similar marks in the first place, preventing most conflicts before they arise. Probably the most valuable result of obtaining your registration is the legal presumption of the validity of your rights in your trademark or service mark — meaning that, if you become involved in a conflict over trademark rights, the other party has the burden to prove that you don’t have the exclusive right to your mark.
With he benefits of registration, of course, come responsibilities. In order to keep your mark, your use of your mark must be reasonably continuous in interstate or international commerce. You must also see to the proper use of your mark — that it is used only with your goods and services or, under license, with goods and services the quality of which you control. And you must see to all of the administrative actions that are required under the rules to maintain your registration.
Your rights in your mark continue for as long as you use your mark in commerce, but registration of your trademark or service mark is not automatically forever. The renewable term of registration is currently ten years, but from time to time you will be required to file documents in the Trademark Office, during the sixth year of registration to avoid cancellation, and before the end of each ten-year term to avoid expiration of your registration.
In addition to taking the administrative actions that maintain your registration, you must also remain vigilant and defend your trademark rights and your registration in the marketplace. When you fail to take action to prevent others from using an identical or “confusingly similar” mark to brand similar goods and services (infringement) or from using your mark as a generally descriptive term (dilution), you set yourself up to lose some or all of your trademark rights and your registration as well.