To distinguish the goods and services of one company from those of other companies, businesses need to protect their brands by registering a trademark. As stated by the United States Patent and Trademark Office (USPTO), a trademark is a word, phrase, symbol, design, or a combination of these things that identifies your goods or services.
To register a trademark in the US you will need to submit a trademark application. You can submit a hard copy of the application or send it online (the latter is usually faster). You can submit an online application using TEAS (Trademark Electronic Application System) on the USPTO website. As an example, in 2020 over 88% of applications were processed electronically.
Trademark Search
Prior to the filing application process, you need to conduct a trademark search. Avoiding this stage may result in financial losses, if an individual or a company is already using a business name you want to register, for instance.
First, go through existing trademarks at the USPTO’s Trademark Electronic Search System (TESS). To ensure an effective search use tips presented by the USPTO. To search for similar designs, use the USPTO Design Search Code Manual.
Requirements to Proceed to Registration
Your application should consist of the following:
- The applicant’s name;
- An address to which the USPTO will send correspondence;
- A drawing of the mark;
- A specimen that indicates goods and/or services that are or will be sold or offered in connection with the mark;
- The filing fee for one or more classes of goods or services.
Types of Mark Drawing and a Specimen
As mentioned earlier, your application must contain a drawing of the trademark you want to register. Then the USPTO will be able to assign the application a filing date and move it toward registration. This also implies that the records will be publicly available via TESS and the Trademark Status and Document Retrieval (TSDR) databases.
You have to apply for one of the following types of drawings:
Standard character drawing shows a mark in the text format. You can register words, letters, numbers or combinations with no particular font style, size, or color. In this case, your drawing has to include typed letters, numbers or punctuation.
Special form drawing shows a stylized or design mark, meaning that it has stylized words, letters, symbols, logo numbers and so on. You’ll have to submit a .jpg file that represents the mark.
If you want to register unique scent, sound, color, shape or other types of non-traditional marks, learn more here.
A specimen of your mark indicates how you use/are going to use the mark in connection with your goods and services.
For instance, you can show a picture of your mark attached to a tote bag. For services, you may send a brochure or an online ad comprising your mark. The same applies to non-conventional marks.
To accurately identify and describe the goods or services associated with your mark use the USPTO’s Trademark Manual of Acceptable Identification of Goods and Services.
Trademark Filing Basis
You must include one or more bases in your application. Make sure your mark meets one of the following requirements:
1. Use in commerce basis — you’re already using your mark in commerce with your goods and/or services at the time the application is filed.
2. Intent-to-use basis — you have genuine intent to use the mark in the United States in near future. However, to register it, you’ll have to begin using the trademark and provide a specimen.
3. Foreign registration basis — you own a foreign registration of the same trademark for the same goods and/or services from your country of origin. You have to include all the necessary information in the current application with a copy of the foreign registration certificate.
4. Foreign application basis (foreign priority basis) — you have a foreign application that you filed within six months of your U.S. application for the same mark and the same goods and/or services. For more details read the USPTO’s guide.
What’s Next?
Usually, the application is examined within three to four months after filing. If there are issues regarding, for example, confusion with other similar marks on the USPTO register, you’ll be notified. You must respond within six months before your application can move forward. Otherwise, your application will be treated as abandoned.
After the issues are addressed and resolved, your application will be published in the Trademark Official Gazette. It’s a weekly USPTO publication that shows recently published, canceled or renewed registrations. Any company or a person that believes the registration of the mark can harm their brand may oppose the application.
If no one opposes your registration, or if a claim of a third party isn’t approved by the USPTO, your mark will then be registered.
Basically, to register your trademark you’ll need about 9 to 12 months in the best-case scenario. To speed up the process, file your documents electronically and conduct a thorough search of similar trademarks to avoid confusion.
Do You Need an Attorney?
The USPTO informs that if you’re domiciled in the US, you’re not required to hire an attorney. However it’s strongly recommended, so a U.S.-licensed attorney can guide you through the registration process.
On the other hand, if you are a foreign-domiciled trademark applicant, you must be represented by a U.S.-licensed attorney.
You can find an attorney who is licensed to practice law in the United States on the iPNOTE platform. Choose professionals based on their rating, pricing and reviews.
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