Step 1 – Trademark Clearing Search and Registrability Analysis

The first step, in the typical selection, adoption and registration process of a trademark, is conducting a trademark search. A trademark search is a search of various trademark databases for the purpose of identifying identical or potentially similar/conflicting trademarks, their status, and their owners. The reliability of the trademark search results depends on the number and the quality of the databases searched, the experience of the trademark searcher and on the search techniques used (wild cards, Boolean operators, phonetic searches, etc.).

Is a trademark search needed? For most businesses, whether they are for-profit or non-profit, the answer is yes. It is wise to decide to invest in the promotion of a business name, product or service name, logo, or slogan only after you have a comfortable degree of certainty that the name or the logo is yours. Or at least, you should know the trademark risk you assume, before spending money and other resources with the advertising and registration of a particular trademark.

What’s the risk of not conducting a trademark clearing search? That is the risk that someone else already applied for, or registered the same or a similar trademark, which may result in the registration being denied by the USPTO and the loss of the filing fees, among other things. In addition, it is the risk that someone else can claim rights in your trademark, or even worse, that someone else can claim superior rights to yours. If someone else can claim rights in your trademark, obviously your trademark is a weak mark. Furthermore, if someone else has begun using the trademark before you did, he is a senior user, and therefore, he may have superior rights in the trademark. A senior user may force you to stop using the trademark, oppose your trademark application, cancel your registration and may sue you for trademark infringement. This is especially true when the senior user has the financial means to do so (e.g., a large corporation, etc). The legal costs associated with defending such legal actions cannot be underestimated.

Therefore, a trademark clearing search should be conducted, preferably, before starting to use the trademark in commerce or before applying for registration, whichever occurs first. The scope of the search depends primarily on the budget available to the trademark owner. In other words, the scope of the search is a question of how much security the trademark owner can buy upfront. At minimum, the owner of the mark should conduct some preliminary online searches via the USPTO website and search engines, such as Google. Of course, we recommend engaging a trademark law firm like ours to (1) conduct a trademark search and (2) have a trademark attorney analyze the search results for registrability of the mark and provide you with advice on how to move forward (e.g., whether to adopt and pursue the mark or not). We offer various trademark searches, the gold standard for U.S. being the comprehensive trademark clearing search, which comprises searches on the USPTO database, trademark databases of all 50 states, common law trademark databases (e.g., DBAs) and domain names databases.

Note that we can be engaged online via this website for a trademark search and registrability analysis service.

Step 2 – Trademark Registration Application

The second step, in the typical registration process of a trademark in U.S., is preparing and filing a complete trademark registration application with the United States Patent and Trademark Office [USPTO]. While the trademark owner may attempt to do this by himself, or pay for a filing service that will only review the application for clerical errors (not for legal errors), we recommend engaging a trademark attorney to conduct a review and clarification of the information provided by the trademark owner, and then prepare and file the trademark application.

The review by a trademark attorney is very important as it can uncover obvious flaws or inconsistencies in the information provided by the trademark owner. These flaws, if undiscovered, may it more likely that a USPTO trademark examining attorney will subject the application to a rejection. Here are examples of common flaws, which may cause trouble later during the examination/prosecution of the trademark application: the trademark is descriptive of the goods and services; the mark drawing or the specimen are inappropriate; the filing basis is wrong; the description of goods or services is indefinite; the claimed date of use in commerce is not supported by interstate activities. A prior/preliminary review by a trademark attorney of the information provided by the trademark owner helps spot and address these flaws before the application is filed. It should be noted that a flawed trademark application not only subjects the application to rejection by the USPTO trademark examining attorney, but may also subject any registration obtained to cancelation by a competitor on the basis of fraud on the USPTO by the trademark owner.

Note that we can be engaged online via this website for a trademark application preparation and filing service.

Step 3 – Trademark Application Examination and Prosecution before USPTO

The third step, in the typical registration process of a trademark in U.S., is the trademark application examination and prosecution step. It comprises such actions as responding timely to any communications from the USPTO examining attorney in regards to the status and/or the deficiencies, if any, of the application or more importantly, the basis for a rejection of the application. Typically, 3-4 months after the filing of the application, a USPTO attorney/examiner will review the application, and if no deficiencies of the application or, more importantly, no conflicts with other trademarks are found by the trademark examiner, the application is allowed to move forward. From here, assuming that the application was filed on use-in-commerce basis and that no one opposes the trademark application within the 30 days allotted window, it is generally only a matter of time (typically 2-3 months) before the certificate of registration is received by the trademark owner/applicant. If the application was filed on intent-to-use basis, a Specimen of Use, showing how the trademark is used in commerce, will have to be filed with a fee before the registration can issue.

However, if the examiner finds that, for example, the proposed trademark is similar and thus conflicts with another registered or pending trademark, or that the proposed trademark is descriptive of the goods or services associated with the trademark, he/she issues what is called a non-final Office Action. A timely response to the Office Action, with arguments and/or evidence, addressing all the issues raised by the examiner, has to be prepared and filed with the USPTO in order to avoid abandonment of the application. If the examiner is persuaded by the response, he/she will allow the application to proceed toward registration. Otherwise, he/she will issue a final Office Action. From here, typically, the options are to file a Request for Reconsideration and/or an appeal with the Trademark Trial and Appeal Board (TTAB).

Step 4 – Certificate of Registration

Finally, once the trademark application passes examination by the trademark examining attorney at the USPTO, it will be published for opposition for 30 days, and again, if no one opposes the registration of the trademark, the registration will be granted by the USPTO and a registration certificate will be mailed to the trademark owner. Typically, from the time the application is filed to the time the registration certificate is issued, it takes approximately 7-9 months.