What to Expect When You Register a Trademark

Sophi Robbins

Share Post:

The process of protecting your intellectual property can be daunting, especially for first-time business owners. However, a legal expert can navigate the nuance of trademark law and get you an application without too much headache or strain on your pocketbook. Any successful company has trademark registrations. If you go through this process at the onset, it is much less expensive than spending a lot of time and money branding your company only to realize that you are infringing upon someone else’s mark and must rebrand. The following steps are laid out to explain the process of registering a trademark.

Ensuring Success

The first step when filing a trademark application is to research potential competition and threats to the success of your marks. This is referred to as a Knock-Out Search. Your attorney will do a comprehensive search of the current and pending trademarks within your industry, as well as anything else that could pose a threat to your ability to register your mark. The search will look for similar words, shapes, and spellings. It might be the case that your intended applications aren’t strong contenders, and though disappointing, it’s best to make rebranding choices at this early stage of the process before time and resources have been spent on a name that you will eventually have to change.

Filing for Registration

Once you’ve worked with your attorney to determine what marks you will file, it’s time to file your application for registration with the United States Patent and Trademark Office (USPTO). You can file the mark after having used it in commerce as a 1(a) application, or you can file a mark that you intend to use as a 1(b) application. The process is largely the same, with a few small differences that your attorney can walk you through. For a use-in-commerce application, you must show proof that you are currently using the mark on the goods specified in your application. For an intent-to-use application, you can provide that evidence later.

Waiting It Out

Once your attorney has filed your application, an examining attorney from the USPTO will review your application. If they do not identify any problems, the mark will be published for opposition. If the examining attorney does identify an area of concern, an Office Action will be issued. Often, the reason for this is a likelihood for confusion with a prior registration, a mark being merely descriptive, or the need to disclaim part of the mark like the words “bar & grill” from a restaurant’s name. There are numerous reasons why an application would be initially rejected, and office actions are not uncommon. In the case of an office action, there is typically 6 months from the date of issuance to respond.

If the PTO examiner determines there are no reasons to object to your mark, they will approve it for publication, and it will be published in a public-facing gazette. Third parties will have 30 days from the date of publication to file an opposition or extension of time to oppose the registration of your mark. This is relatively rare, but it does come up in 3-4% of cases. If it should occur, your mark will take a detour from the typical registration process and your attorney will walk you through those steps.  

If a mark passes opposition, you should have very few obstacles between you and the finish line! A 1(a) mark which has passed will be placed in a queue to be officially registered, without you or an attorney needing to take any additional action. Again, with the current back-ups, this could take several months. A 1(b) mark which passes opposition will eventually be issued a Notice of Allowance (NOA), which indicates that as soon as you can prove your use in commerce, the mark can be registered. From the date of NOA, you have 6 months to file a Statement of Use, which includes specimens of your mark. If you are still not using the mark at that time, extensions can be filed every 6 months up to 5 times (or 3 years from the date of NOA.) If you don’t use the mark in that time frame, you’ll lose the application and be required to start over again if you later change your mind.

Registration at Last

When your mark finally reaches registration, you will have exclusive rights to the use of the mark. This is when you will begin using the ® symbol. Your responsibilities now are to maintain documentation and file periodic renewals. The first deadline is in between the fifth and sixth anniversary of the date of registration, followed by renewals every 10th year. It is also a good idea to keep a “watch” on your mark so that if other marks are published, which you might want to oppose, you are alerted. There are automatic services that will notify you of such activity, and your attorney’s likely use something of the sort.

So, Are You Ready for the First Step?

Knowing what you’re up against will prepare you but having the right team to work with is essential. Whether you’re a first-time small business owner or part of a growing company that’s ramping up its product lines, relying on a strong legal team is going to make the trademark process much more approachable. If you are interested in starting this process with your own marks, reach out to us and we’ll be happy to answer any questions.

ABOUT THE AUTHOR

OFFICE ASSISTANT

Sophi has a background in office management and small business management and has had the pleasure of seeing multiple small companies grow with her. Since graduating with a BA in Environmental Studies and Business Marketing, she has worked in both office jobs and the service industry, finding ways to learn new skills and gain responsibilities. She puts those skills to good use with her own small business, an etsy craft store. She is also a skilled barista and mixologist, and enjoys trivia games and baking (she usually doesn’t even use a recipe, thanks to her time managing a bakery).

More Articles

Work-Life Balance

A D-Day Wake Up Call

Travel and reflection, particularly when it takes us out of our comfort zone, strengthens our ability to empathize with others, improves our self-awareness and helps us better understand our place in the world; both as humans and as lawyers. We return to our roles more informed and better able to connect with our community and serve our clients in an ever more challenging world.

Read More »
Business & Corporate Law

Navigating the SBA’s Collection Efforts on COVID-19 Loans

During the height of the COVID-19 pandemic, the Small Business Administration (SBA) launched various loan programs, such as the Paycheck Protection Program (PPP) and the Economic Injury Disaster Loan (EIDL) program, to support businesses grappling with unprecedented economic challenges. These programs were lifelines for many, providing essential funds to keep businesses afloat. However, as we move forward, the SBA has started to collect on these loans, leading to new challenges and questions for borrowers.

Read More »
Business & Corporate Law

The Best-Laid Plans of Lawyers and Businessmen

As a transactional attorney, I focus my practice on helping clients plan for and react to business events much more so than I do on interpreting statutes or legislation. Sometimes, however, a statutory change or judicial ruling will have a wide-ranging—and retroactive—impact that is impossible to ignore.

Read More »