Search

The first step in the process of filing an application to register a trademark is typically clearance of the mark. This office always recommends performing a search of the Federal Trademark Register for registered marks and pending trademark applications to determine the availability of the trademark. The objective of the search is to find marks that are likely to cause confusion with the proposed trademark. In addition, the applicant may desire that a common-law trademark search be performed. A common law search is a search of trademarks that are used locally, or even nationally, but no application has been filed to register the trademark with the United States Patent and Trademark Office.

Preparation and Filing of Application

An application to register a trademark can be filed on the basis of use of the mark in commerce, or alternatively, by on the basis of bona fide intent to use the mark in commerce. In the event that the trademark is already in use in commerce in the United States, the applicant must indicate the date of first such use. In addition, the applicant must provide specimens evidencing such use of the mark in commerce. If the application to register the trademark is based on intent to use, proof of the use of the mark in commerce will occur later in the process. Moreover, the applicant may file an application to register the trademark in standard character form which is a claim to trademark rights in the wording of the trademark, and makes no claim to design, color, font, size, logo, or the like. Alternatively, the applicant may file the application to register a logo or design mark, or a word mark in stylized format. Furthermore, the applicant must recite the goods and/or services in conjunction with which the trademark is used or is intended to be used. The application should recite all of the goods and/or services that in conjunction with which the applicant uses or intends to use the trademark, because the United States Patent and Trademark Office will not permit later broadening of the recitation of goods and/or services. The application to register a trademark with the United States Patent and Trademark Office is typically filed electronically. An application number is received immediately.

Office Action

A Trademark Examining Attorney usually examines the application within approximately five to six months. If there are no issues with the application, the Examining Attorney will issue a Notice of Publication. On the other hand, the Examining Attorney may raise issues with the application and issue an Office Action. The applicant must respond to the Office Action by the deadline set forth, typically six months, or the application will become abandoned. An Office Action may raise a variety of issues. The most common issues are: likelihood of confusion with another registered trademark or pending trademark application, the mark is merely descriptive of the goods or services recited in the application, requirements for disclaimers, and/or objections to the recitation of goods and/or services.

Notice of Publication

Once the Trademark Examining Attorney determines that a trademark is eligible for registration, the trademark is published for opposition. The Unites States Patent and Trademark Office publishes the trademark on its website and in its Official Gazette. The purpose of the Notice of Publication is to allow any member of the public who feels that he/she may be damaged by the issuance of the registration to file an Opposition.

Notice of Allowance

In the event that the application was filed on the basis of intent to use (filing basis 1B), and no Opposition has been filed pursuant to the Notice of Publication, a Notice of Allowance should issue. From the mailing date of the Notice of Allowance, the applicant has six months to allege and show evidence of the use of the mark in commerce. If the applicant cannot do so within the six-month deadline, the applicant can request a six-month extension of time to file a Statement of Use.

Q: Do I REALLY need to hire an attorney to file an application to register my trademark with the United States Patent and Trademark Office?
A. The simple answer is no, you are not required to hire an attorney to file an application to register a trademark with the USPTO. You are permitted to file an application yourself and the filing can be done electronically. There is no law which requires an applicant to hire a lawyer to represent the applicant with the USPTO. In the same manner of thinking, one is almost never required to hire legal representation for any type of legal matter. You are permitted, in most cases, to represent yourself in a murder trial.

The better question is this. Is it advisable to represent yourself at the USPTO. In the opinion of this writer, it is not. An experienced trademark attorney can advise the client with respect to the particular needs of the case. Furthermore, in many cases, it ends up being less expensive to hire a trademark lawyer to file the application properly at the outset, than to pay the lawyer later to amend an application that was improperly filed. Furthermore, a properly filed application is more likely to result in a trademark registration that issues at an earlier date that an improperly filed application. Moreover, in many cases, the Trademark Examiner prefers to deal with a trademark attorney rather than a pro se applicant who is not familiar with the law and the process and who tends to be more emotionally involved with the case. Finally, if your application is so filed sufficiently incorrectly, it may result in the application being denied and no registration resulting.