What are the steps to filing for a trademark? The steps involved in filing a trademark include deciding the need for a trademark, selecting a suitable mark, submitting an application for registration, and cooperating with the examining attorney in processing the application.

What Is a Trademark?

A trademark refers to a name, symbol, or design used by a business to distinguish its products or services from those of others. Customers immediately recognize a product and form certain expectations in their mind about its quality when they see a trademark. Quite often, a trademark is the same as the brand name of a product.

A service mark is also like a trademark, but instead of goods, it applies to services.

Benefits of Registering a Trademark

A USPTO registered trademark offers the following principal benefits:

  • It serves as a public claim of your ownership over a given trademark.
  • It establishes a legal presumption of your ownership over a given trademark.
  • It gives you an exclusive right to use the trademark for said products and services.
  • It enables you to take legal action on an issue concerning the given trademark.
  • It enables you to use the federal registration symbol on your product labels.
  • Your mark gets registered in the USPTO database.

However, a registering a trademark does not give you permanent ownership over it. You must comply with certain formalities to maintain it. The registration remains valid as long as you continue to file the post-registration maintenance documents on a timely basis.

The Trademark Registration Process

1. Pre-Registration

Before deciding to register a trademark, ask yourself whether you really need it. You are not legally required to register a trademark. It's an additional step businesses take to protect their products and services. In most of the cases, registering a business name would suffice to establish your identity, while sometimes, you may want to trademark your business name if you don't want anyone else to use it.

2: Mark Selection

Once you decide to apply for a trademark, you should choose a unique mark that communicates your brand message and emotions to the customers. In order to be eligible for trademark protection, your mark must be distinctive or unique, and it must be used in commerce.

There are four different categories of marks:

  • Arbitrary or fanciful
  • Suggestive
  • Descriptive
  • Generic

A descriptive mark can be trademarked only if it has acquired a secondary meaning in the minds of the consumers. Generic marks cannot be registered as trademarks.

3. The Application Form

After having finalized a mark for registration, you must prepare to file an application. You must base your application on either of the following two grounds:

  • Use in commerce: If you are already using the mark, provide a proof of its use.
  • Intent to use: If you are planning to use the mark in future, support your claim with some convincing facts.

You can file the initial application by visiting the USPTO website. TEAS or the Trademark Electronic Application System allows you to file your application directly online. Alternatively, you can also file an application on paper along with a processing fee of $375.

USPTO offers three different options for filing an application, each with different processing fees:

  • TEAS Regular with a filing fee of $325
  • TEAS Plus with a filing fee of $225
  • TEAS Reduced Fee with a filing fee of $275, especially meant to promote electronic processing.

Filing an application does not mean that your trademark will be registered. You will have to forego the fees if your trademark application is unsuccessful.

4. Evaluation Period and Verdict

USPTO evaluates your application and publishes notification in the Official Gazette before issuing a certificate of registration.

USPTO assigns an examining attorney to review your application. It's important that you cooperate with the assigned attorney in processing your application. The examining attorney may directly contact the applicant for rectification of minor errors and deficiencies. If the examining attorney decides to refuse the registration, he will issue an office action specifying the reasons for rejection.

Processing a trademark application usually takes about 12 months if there are no issues found with the application.

After the examining attorney signifies his approval, a notification is issued in the Official Gazette, a weekly publication of USPTO, giving a period of 30 days to oppose the registration. In case of an opposition, the Trademark Trial and Appeal Board carries out the proceedings. If there is no opposition, the USPTO will register the mark and issues a certificate of registration.

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