Trademark registration

The Trademark Process: What should you expect?

Protecting Your Brand: Understanding the USPTO Trademark Process.

The Trademark Process:  What should you expect?


You have decided to file a Federal trademark application to protect your brand. Congratulations!  That was a smart move.  But, what comes next?  

While all trademark filings are somewhat different, the approval process is fairly standard. That is the subject of this article. 

The best trademark protection is obtained by registering at the Federal level with the United States Patent and Trademark Office in Washington, DC (USPTO).  While you may also register at the state level, state protection is limited to a specific state.  And, common law protection, a third type that derives simply from using a name, logo or slogan without registration, is limited to the specific geographic area in which your business operates, such as your neighborhood or city.  So, if you are serious about protecting your brand, you should register it at the Federal level, which offers nationwide protection.

You begin the process by completing an online application with the USPTO.  As you complete the application, it will force you to make key decisions.  First, you must decide what to trademark; namely, a name, logo or slogan.  Second, you must decide whether to register a name, logo or slogan together or separately.  By registering them separately, you may change your logo or slogan at a later date, without disrupting the protection you have for the name.

Third, you must specify whether your registration covers existing use (i.e., current, actual use of a name, logo or slogan) or future use (i.e., intent to use them in the future).  If your filing is for existing use, you must submit a specimen of use (i.e., example) with your application.  A specimen may consist of a website, advertisement or packaging showing the use of a name, logo or slogan to sell your products and services.  If, however, you intend to use a mark in the future, you must submit a specimen of use within six (6) months from the date that your mark is approved by the USPTO.  In other words, you cannot preserve use of a registered mark in perpetuity without use.

Fourth, you must decide which of the 45 product and service categories at the USPTO in which to register your mark.  For example, one category covers musical instruments (category 15), another covers vehicles (category 12), another covers machinery (category 7), and so on.  And, if your product or service includes more than one (1) category, you may file it under both.  For example, if you sell clothing on the internet, you may seek protection under clothing (category 25) and technological services (category 42).  But, if you do that, you must pay a separate filing fee (i.e., generally $250) for each category, so choose wisely.

After you file your application, it will be assigned to an attorney at the USPTO for review within 4 to 8 months.  Upon review, the USPTO will either approve your application (i.e., if it complies with US Trademark law), or issue an action letter in which it rejects or suggests changes to it (i.e., to comply with US trademark law).

If the USPTO approves your mark, your application will pass to the next phase of the approval process known as “publication” (please read on).

Conversely, if the USPTO rejects or suggests changes to your mark, it will issue a written “action letter” that explains its concerns with your filing, and gives you 6 months to respond in writing.  The issues identified in an action letter may range from exceedingly simple ones (i.e., you forgot to check a box in the application), to complex ones (i.e., your proposed mark is “confusingly similar” to a previously registered mark owned by someone else).   An experienced trademark lawyer will know how to address the USPTO’s issues.

The most common USPTO objection is that your proposed mark is confusingly similar to a previously registered mark filed by someone else for the sale of similar goods and services.   In this scenario, you must convince the USPTO that your products and services are different.  Or, you may agree to amend your application to eliminate any overlap between your product and service offerings and those contained in a prior registrant’s.  These are just a few ways that you may address an action letter premised upon the existence of a similar, pre-existing mark.

Another standard USPTO objection is that your proposed mark is “merely descriptive” of your products or services.  For example, if you seek to register the name “Rent a Coop” (i.e., because you rent chicken coops), the USPTO will object to your filing because it merely describes what your business does (i.e., renting of chicken coops), but is not a name that can be registered under US trademark law.

Another USPTO objection is that an applicant failed to attach a written consent of a person whose name appears in the proposed mark.  For example, let’s assume that you want to register the name “Colonel Fred Lewis’ Country Fried Chicken” for the sale of fried chicken.  If there is a real Colonel Fred Lewis who licensed you his recipe, and whose name you seek to use for your product, you must submit a written declaration from Mr. Lewis confirming his consent to the use of his name.

This rule will not to a proposed trademark based on the name of a fictional character such as Aunt Jemima, as she is not alive to sign a declaration.  Yet, you still must ensure that some else has not already registered the name Aunt Jemima, which you must do for every trademark filing.  For those of you who are curious, the name “Aunt Jemima” was originally registered by the Quaker Oats Company in 1906, and remains protected today.

While there are many possible objections that the USPTO may raise to a proposed mark, it would take too much time to list and explain each of them. 

Simply stated, your chances of registering a mark improve if you seek to protect a name, logo or slogan that has never been registered, or if you seek registration for completely different products and services from those used by another registered user.  For example, if you seek to register the name Screaming Meanie for a new line of guitars, while a previous applicant has registered the name for car parts, chances are that the USPTO will not object to your registration of the name Screaming Meanie, as a consumer would not confuse the owner of a line of guitars with the owner of a car parts business (i.e., the source of the goods is readily distinguishable).

Also, it is important to understand that the USPTO will find names to be “confusingly similar” if they are spelled differently, but sound the same.  For example, if you seek to register the name “Daisy” for women’s clothing, but someone else has previously registered the name “DayZee” for hats, shorts and pants, the USPTO will object to your use because the consuming public will be confused as to the source of goods, as they sound the same and cover similar type of products.  To avoid this result, you must conduct a thorough trademark search before you use a name and get too far down the road with branding.

If the USPTO issues an action letter, you will be given 6 months to file a written response.  In it, you may disagree with the USPTO and explain why it is wrong, or you may agree to the changes they suggest, or you may withdraw your application altogether and pick a new name, logo or slogan (i.e., if addressing the USPTO’s objection seems futile).

If the USPTO disagrees with your analysis, you may appeal its decision to the USPTO’s appeal board.  This is a costly process, and the outcome is uncertain.  Conversely, you may abandon your application and select a new mark, but if you do so, you must start the process anew (i.e., there is no skipping the line).

Once the USPTO approves your mark, it will pass to the next stage of the process known as “publication.”  During this phase, your proposed mark will be published for opposition in an online journal maintained by the USPTO.  During this time, the holder of a similar looking or sounding mark may object to your application on the legal grounds discussed above or others that are available.  In this instance, you must each file legal briefs with the USPTO, who will decide whose position is correct.  If you are dissatisfied with the decision, you may appeal it to the USPTO’s appeal board.

Alternatively, you may negotiate an arrangement with the objecting party over how you may each use the mark in non-competing ways.  For example, you or they may agree to use the mark with only certain colors.  Or, you or they may agree to use the mark for only certain products and services.  Any such agreement must be reduced to writing and will be enforceable as a written contract.  These types of agreements eliminate the expense and uncertainty of litigation.  Moreover, the USPTO will generally approve such arrangements as long as no other registered trademark holders are affected.

If your mark survives the publication process, your trademark will register.  And, within 3 to 4 months, you will receive an ornate certificate from the USPTO that is worthy of framing.

If your application is uncontested at all stages of this process, it will take a minimum of 8-12 months to register your mark, as the USPTO is inundated with filings.  (At last count, the USPTO has more than 600 lawyers reviewing trademark filings).  However, if you suffer opposition, the process will take longer.  And, the only way that you may expedite the process if by responding promptly to action letters instead of waiting the permitted 6 months.

If you filed your mark as “intent to use” (i.e., future use), you must file your specimen of use within 6 months from the date of its registration, or your mark will be abandoned.

After your mark registers, you must make periodic filings with the USPTO.  Each so-called “maintenance filing” requires the payment of a fee, which is usually under $200.

Finally, and most importantly, upon registration, you may use the famous ® symbol above the last letter of your registered name or slogan, or to the right of your logo, demonstrating that your mark has been registered with the USPTO.

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