This article explains the steps you need to take in the order listed to file for a do it yourself federal trademark or service mark. Although the process appears to be relatviely straight forward, there is much more to filing for a trademark or service mark than simply “filling the application squares.” The following warning is taken from the website of the U.S. Patent & Trademark Office:
“The trademark registration process is a legal proceeding that may be complex and require you to satisfy many requirements within strict time deadlines (based on Eastern Standard Time); therefore, you should consider hiring an attorney before starting the process.
Filing a trademark application at the USPTO starts a legal proceeding. Most applicants hire an attorney who specializes in trademark matters to represent them in the application process and provide legal advice. While a USPTO trademark examining attorney will try to help you through the process even if you do not hire a lawyer, no USPTO attorney may give you legal advice.
A private trademark attorney can help you before, during, and after the trademark application process, including policing and enforcing any trademark registration that may issue. While you are not required to have an attorney, an attorney may save you from future costly legal problems by conducting a comprehensive search of federal registrations, state registrations, and “common law” unregistered trademarks before you file your application. Comprehensive searches are important because other trademark owners may have protected legal rights in trademarks similar to yours that are not federally registered. Therefore, those trademarks will not appear in the USPTO’s Trademark Electronic Search System (TESS) database but could still ultimately prevent your use of your mark. In addition, trademark lawyers can help you during the application process with several things that could seriously impact your trademark rights, such as determining the best way to describe your goods and services and preparing responses to refusals to register that an examining attorney may issue. Finally, a private attorney can also assist in the policing and enforcement of your trademark rights. The USPTO only registers trademarks. You as the trademark owner are responsible for any enforcement.”
Although many people do file do-it-yourself trademark applications, we as trademark attorneys recommend that you hire us because a trademark can be a very valuable intellectual property asset and you want to make sure that it is done correctly. Don’t be penny wise and pound foolish. The consequences from improper federal trademark applications range from weak or unenforceable marks to becoming a defendant in a trademark infringement lawsuit.
How to Hire a Trademark Attorney
To hire a trademark attorney to prepare and file your application for a federal trademark or service mark, follow these simple steps:
- Call trademark attorney Adam Stephenson or Paul Johnson at 480-264-6075 to get free answers to your trademark questions.
- Complete our online Trademark Application Questionnaire.
- Pay your $897 legal fee (excludes the $275 or $325 filing fee for one trademark class) with your Visa, MasterCard, American Express or Discover credit card in our secure online store.
Initial Steps for a Do-It-Yourself Trademark Application
STEP 1: Determine whether you need trademark, patent, or copyrightprotection.
STEP 2: Determine whether you should hire a trademark attorney.
STEP 3: Identify your mark format: a standard character mark, a stylized/design mark, or a sound mark.
STEP 4: Identify clearly the precise goods and/or services to which the mark will apply.
STEP 5: Search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration.
STEP 6: Identify the proper “basis” for filing a trademark application.
STEP 7: File the application online through the Trademark Electronic Application System. View trademark fee information. REMINDERS: (1) The application fee is a processing fee that is not refunded, even if ultimately no registration certificate issues; that, is, not all applications result in registrations; and (2) All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address.
STEP 8: USPTO Reviews Application. After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
STEP 9: USPTO Issues Letter (Office Action). If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant’s response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned.
STEP 10: Applicant Timely Responds to Letter. If the applicant’s response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
STEP 11: USPTO Publishes Mark. If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
STEP 12: Registration Certificate Issues for Applications Based on Use, Foreign Registrations, and International Registrations. A certificate of registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about eleven (11) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.
STEP 13: Notice of Allowance Issues for Marks Based on an Intent-to-Use the Mark. If the mark is published based upon the applicant’s bona fide intention to use the mark in commerce and no party files either an opposition or request to extend the time to oppose, the USPTO will issue a notice of allowance about eight (8) weeks after the date the mark was published. The applicant then has six (6) months from the date of the notice of allowance to either: (1) Use the mark in commerce and submit a statement of use (SOU); or (2) Request a six-month extension of time to file a statement of use (extension request).
A notice of allowance is a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette, and has consequently been allowed; it does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have been filed based on an intent-to-use a mark in commerce under Trademark Act Section 1(b).
STEP 14: Applicant Files Timely Statement of Use or Extension Request. The Applicant has six (6) months from the mailing date of the notice of allowance in which to either file a statement of use or file an extension request. Please review the additional information for the statement of use and extension request processes.
If the applicant is not using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must file an extension request and the required fee(s) to avoid abandonment. Because extension requests are granted in 6 month increments, applicant must continue to file extension requests every 6 months. A total of 5 extension requests may be filed. The first extension request must be filed within 6 months of the issuance date of the notice of allowance and subsequent requests before the expiration of a previously granted extension.
If the applicant is using the mark in commerce on all of the goods/services listed in the notice of allowance, the applicant must submit an statement of use and the required fee(s) within 6 months from the date the notice of allowance issued to avoid abandonment. Applicant cannot withdraw the statement of use; however, the applicant may file one extension request with the statement of use to provide more time to overcome deficiencies in the statement of use. No further extension requests may be filed.
STEP 15: Applicant Does Not File Timely Statement of Use or Extension Request. If the applicant does not file a statement of use or extension request within six (6) months from the date the notice of allowance issued, the application is abandoned (no longer pending/under consideration for approval). To continue the application process, the applicant must file a petition to revive the application within two (2) months of the abandonment date.
STEP 16: USPTO Reviews Statement of Use. If the minimum filing requirements are met, the statement of use is forwarded to the examining attorney. The examining attorney conducts a review of the statement of use to determine whether federal law permits registration. The applicant cannot withdraw the statement of use and the filing fee(s) will not be refunded, even if the application is later refused registration on legal grounds. If no refusals or additional requirements are identified, the examining attorney approves the statement of use.
If refusals or requirements must still be satisfied, the examining attorney assigned to the application issues a letter (Office action) stating the refusals/requirements. This is the same process that occurs prior to publication of the mark if the examining attorney determines that legal requirements must be met. The process and timeframes remain the same, except that if issues are ultimately resolved and the statement of use is approved, the USPTO issues a registration within approximately 2 months. If all issues are not resolved, the application will abandon.
STEP 17: Registration Certificate Issues. Within approximately 2 months after the SOU is approved, the USPTO issues a registration. To keep the registration “live,” the registrant must file specific maintenance documents. Failure to make these required filings will result in cancellation and/or expiration of the registration.
STEP 18: Monitoring Status. Throughout the entire process, you should monitor the progress of your application through the Trademark Status and Document Retrieval (TSDR) system. It is important to check the status of your application every 3-4 months after the initial filing of the application, because otherwise you may miss a filing deadline. Please review the additional information on checking status to ensure you understand this important step in the overall registration process.
STEP 19: Protecting Your Rights. You are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.