Search And Clear The Trademark
Before we file for trademark protection we’ll need to make sure your mark can be registered. That means searching for others who may have already registered a similar mark and assessing whether your mark meets the other requirements for registration with the United States Patent and Trademark Office (“USPTO”).
The Basis For Filing
Your trademark application must be based on either (i) use in commerce or (ii) intent to use in the future.
A use-based application means that, at the time of the application, you’ve already been using the mark in commerce or in connection with the goods and services we list in your trademark application. Please note that your use of the mark can’t have been only for the purpose of reserving trademark rights, but rather must have been done in the ordinary course of trade. If your use-based application is accepted, we’ll have successfully registered your mark.
An intent to use application means that, at the time of the application, you have not yet used the mark in commerce but have an intent to do so in the future. If the intent to use application is accepted, the USPTO will issue what’s referred to as a Notice of Allowance. At that point, in order to succesfully register your mark, we’ll need to file evidence (along with a Statement of Use) showing that you’ve used the mark in commerce or in connection with the goods and services listed in your application.
The Contents Of A Trademark Application
A trademark application must contain the following information to be considered complete:
- The applicant’s name and address. The applicant should be the owner of the trademark. For example, if a corporation owns the trademark, the applicant should be the corporation.
- The applicant’s type of legal entity and citizenship. (e.g., corporation, partnership, LLC, etc.)
- Name and address. This information should be of the person or legal representative (i.e., The Phoenix Trademark Attorney) who will communicate with the USPTO regarding your trademark application.
- A drawing of the mark. If the mark we are seeking to register on your behalf is merely a word or phrase without any design element, then it is considered a standard character mark and we will need to type in the letters of the word or phrase.
- A description of the mark. We will need to provide a description of the mark if the mark is not a standard character mark, such as a mark that has design elements, color, sound, etc. Our descriptions are typically concise yet thorough in describing the significant elements of the mark.
- A list of goods and services covered by the application. We must list each good and/or service the mark is, or will be, used with. While you may want us to include as many items as possible in order to have the widest protection possible, keep in mind that filing fees are based on the number of classes in the application, and so your application can get very expensive. Once we’ve narrowed down the items to include, we will make sure to describe them in a concise but specific way.
- Classes of goods and services. Trademark classes are a way for the USPTO to organize the goods or services used in the application, assess fees, and aid in searching their database of registered and pending trademarks. All goods and services are classified or organized into broad categories of goods or services, and each category of goods or services is assigned a number from 1 to 45. There are many items listed in each class; however, goods and services are never in the same class. Keep in mind that the more classes we select, the more you will pay in filing fees, as filing fees are calculated based on the number of classes contained the application.
- The dates of first use of the mark and a specimen of use. This is only a requirement for use-based applications. We will need to list the date that the mark was first used and then provide a specimen, such as photos of the mark, showing its use in connection with your goods and/or services. If you sell goods, we could include a label bearing the mark. If you provide services, we could include a page from your website showing the mark and referencing the services you provide.
- A verified statement or declaration. We will date and sign a declaration on your behalf, which in essence attests to the truth of the application submitted.
- The filing fee. The amount of the filing fee will depend on which type of application we file on your behalf and how many classes are included in your trademark application. The filing fee will be at least $225, but it could be more if there are a number of classes of goods and services.
Filing The Trademark Application
Confirm Filing And Monitor Status On Your Behalf
Once we file your trademark application, it will be processed, and we’ll receive a receipt from the USPTO summarizing the information we submitted. We’ll also receive a serial number for your application. We will use this number to monitor your application. There is no need to check the status of your application as we will take care of this to make sure everything is in order.
Respond To Office Actions On Your Behalf
Once the USPTO receives your trademark application, it will assign it to an examining attorney who will then review it. This review process can take up to 6 months to complete. If the examining attorney finds any issue with the application, he or she will issue an office action, denying the registration and including his or her reasons for the denial. We are uniquely qualified to provide persuasive reasons/arguments typically based on prior cases to convince the examining attorney to accept your application.
Publication Of The Mark
If your application is approved by the examining attorney, it will be published online in the USPTO’s Official Gazette for 30 days. During this period of time, any party may oppose registration of the mark if it believes it would be damaged by it being registered. If any opposition is made, a court-like proceeding will take place in order to resolve the dispute.
If, however, no opposition is made, then the USPTO will register your trademark and issue you a certificate of registration, so long as we submitted a use-based application on your behalf. It may take several months after the publication period is over for the certificate of registration to issue. If we submitted your application on an intent-to-use basis, then the USPTO will issue a Notice of Allowance, which requires us to take an additional step of submitting evidence of use of the mark in commerce.
Submit A Statement Of Use
If we receive a Notice of Allowance, we must file a statement of use within six months, along with evidence showing that you’ve used the mark in commerce. You must also pay a filing fee with the statement. The filing fee is approximately $100. If you still have not used the mark at the time your statement of use is due to be filed, we can ask for a 6-month extension of time on your behalf. We can do this up to 5 times in total, but you must pay a $125 filing fee for each request for extension. Assuming the examining attorney approves the statement of use, then your mark will be registered and a certificate of registration will be issued. This can take several months, so don’t be alarmed if you don’t receive a certificate of registration right away.
Maintaining the Trademark Registration On Your Behalf
Finally, we will need to maintain your registration or we’ll risk losing it. We will need to file certain documents and pay fees every sixth and tenth year. Every sixth and tenth year, we will need to file a Declaration of Continued Use, along with a current “specimen” of use, or a Declaration of Excusable Nonuse. These filings are also referred to as Section 8 Declarations. In addition, every tenth year, we will need to file a Renewal Application, which is also referred to as a Section 9 Renewal Application. So, to recap, every sixth year we will need to file a Section 8 Declaration, and every tenth year, we will need to file both a Section 8 Declaration and a Section 9 Renewal Application. If we fail to do so, your trademark registration will be canceled.