There are 3 phases to the federal trademark registration process:
1. Research & Analyze Your Trademark
2. Prepare & File the Registration Application
3. Respond to any Trademark Office questions and issues.
Research & Analyze Your Trademark
You should undertake research and analysis of any trademarks you are developing and considering using to identify your business. These include any names of products or programs, any logos and any sounds.
In this stage, you research whether there are any existing marks or other factors that would preclude registration of the mark and engage in an analysis of the likelihood of that you will be successfully registering the mark with the U.S. Patent and Trademark Office.
This is the most important stage of the process because it tells you how viable your intended business name or logo is as an enforceable trademark. I highly recommend hiring an attorney to research your mark and provide you an opinion and analysis of any issues you face. If costs then require you to file it yourself, you are equipped with a professional analysis of what to expect and what mark gives you the best chances of success.
If you know you need to understand what will be the strongest trademark for your business before you invest in your branding, click here to hire me to research & provide an analysis of your trademark.
Prepare & File Your Application for Registration
After you’ve determined that you have a high likelihood that your chosen trademark can be registered, the next step is to prepare and file an application for registration.
Applications for registration can be prepared and filed online, and the Trademark Office gives you an incentive to file electronically with reduced filing fees. The application requires the registrant’s business information, the date the mark was first used, a description of the type of goods or services provided under the mark (called a class description) and a specimen of use.
Deciding which classification and description of your goods and services is most strategically advantageous for you is the most important part of this stage. It can make the difference between successfully registering your mark or not. Particularly in increasingly crowded fields like wellness and personal growth and development.
That is why, when we work together, I break this stage down into 2 parts.
Respond to Questions or Issues Raised by the Trademark Office
(or the Owners of Other Trademarks).
The registration process after you’ve submitted your application for registration can be a bit of a waiting game.
The Office Action
It takes the Trademark Office approximately 3 months to review the application and determine whether it would like to request more information from us. If it does, it will issue an Office Action to me, and I will notify you of the need to answer. From the date of the Office Action, we have 6 months to respond.
It is common for the Trademark Office to issue an Office Action on a routine issue. It will only issue an Office Action requiring a substantive response if it finds that there is possible impediment to registration, and in the majority of instances, we will have discussed these possible issues during the research and analysis stage of the trademark registration process, which is what makes the research stage of the process so important. Once and a while, the Trademark Office will issue an Office Action on an issue that is a surprise—in other words, the Office will come to a different, unanticipated conclusion. It doesn’t happen often, but it happens.
Publication for Opposition
If the Trademark Office does not issue an Office Action—or after it is satisfied with the response to its Office Action—it will publish your trademark in what’s called the Official Gazette.
(Note that the notification of clearance for publication could come anywhere between approximately 3 months and 12 months after filing your application depending upon the Office Action requirements.)
The purpose of the publication is to allow the owners of other marks who believe that registering your mark would harm their mark object to the registration. The objection period lasts 30 days.
Certificate of Registration
If there are no objections, the Office will register the mark and issue a certificate of registration within 12 weeks (or 3 months) after the 30 day objection period has closed.
If there is an objection, you will have the choice and the chance to respond.
You should anticipate that the registration process will take 9 to 12 months.
© 2012 Rebecca Prien, Esq.