How to Trademark Something
How to Trademark a Something is part of our How to Trademark series.
The following information will help you understand the necessary steps in the trademark application process and give you an idea of what to expect after submitting your application.
The first step in trademark protection is always to do a trademark search. This is because your trademark may already be in use, and if this is the case, there’s a chance you could lose the registration fee without gaining any protection for your brand.
Keep in mind that a promising search – meaning no similar trademarks were found to be in use – does not guarantee that you’ll receive trademark registration. The USPTO will still have to conduct its own review which will include a much better trademark search than you can do yourself. For this reason, we also suggest that you hire a trademark lawyer to perform the trademark search for you.
Our fee for a trademark search is $300.
Applying for a Trademark
Once you’ve gone through the process of performing a trademark search and ensuring your trademark is registerable, your trademark application journey begins. The USPTO’s Trademark Electronic Application System (TEAS) allows you to file a trademark application online. The application page offers three choices: TEAS Plus, TEAS RF and TEAS Regular. The cost of trademarks will vary dependent on which application you file.
The fees related to registration depend on the strictness of the filing requirements. TEAS Plus has the lowest fee – $250 per class of goods or services – but has more requirements. You’ll need to agree to email communications and to use the trademark office’s pre-approved descriptions of goods and services.
After filing for registration and paying the fee, you should do or expect the following:
Monitor Application Status
Although you should receive updates on your trademark application, the USPTO still recommends monitoring its status to be on the safe side. Once you submit your application, check the Trademark Status and Document Retrieval (TSDR) database every three to four months. This will ensure you don’t miss any deadlines.
Work with USPTO Trademark Attorney
Once your trademark registration is received, it will eventually be forwarded to an examining attorney. If there are similar trademarks in use, you made a mistake, or other technical issuess arise, you’ll receive notification of this usually in an office action. Make sure you respond to any requests in a timely manner and if you don’t your application will abandon.
Approval and Publication
If there are no issues with your application – or you satisfy the additional requirements requested – your requested trademark will be published in the Official Gazette. This begins a 30-day period in which a third party can file a trademark opposition. If someone feels that the granting of your trademark would violate their rights, they can request a hearing before the Trademark Trial and Appeal Board (TTAB).
A third party may also request an extension on the time to oppose. Once the opposition period expires, though, it becomes much more difficult for someone to remove your trademark. Their next best move would be to file for trademark cancellation. This process, would occur after your trademark has registered.
If your application faces no opposition – or if you overcome that opposition – it will register if the trademark is already being used in commerce. If it isn’t, meaning that you filed on an intent to use basis, you’ll be issued a notice of allowance. You’ll need to use the trademark in commerce within six months of this period and file a statement of use (SOU), or you’ll need to request an extension of six months to file the SOU.
While registration will provide the best protection against trademark infringement, this isn’t a permanent safeguard. You’ll need to submit trademark renewals to the USPTO five to six years after registration, nine to ten years after registration, and then every ten years after that.
How Hard is it to Trademark Something?
If you’re just learning how to trademark something, it probably seems like an overwhelming process. If you would rather not try to file a trademark application on your own, of course we can assist. You can see our trademark registration page for more information.
Here are some of the problems you may encounter that will make it much harder to trademark something:
Similar Trademarks in Use
One of the biggest issues you could run into is the existence of a similar trademark already in use. The USPTO is focused on preventing a likelihood of confusion among consumers, and if your trademark is similar to another, you’ll probably have difficulty with the registration process.
It’s worth noting that, just because your trademark is similar to another in use, it doesn’t mean you can’t claim rights over it. The USPTO and federal law don’t typically view similar trademarks in different industries as conflicting. This is why the fast food giant McDonald’s can exist in the same world as a company named McDonald’s Computer Repair.
If there is no likelihood of confusion due to differing industries, you may still be able to attain registration.
Notice of Opposition
As discussed earlier, a notice of opposition can slow down or derail your entire registration. A tribunal before the TTAB can turn costly and time-consuming. Even if you eventually prevail in your case, having to deal with oppositions greatly increases the difficulty of registering a trademark. After registration, there remains a threat in the form of a petition to cancel.
Your trademark is meant to distinguish your brand from others. Unfortunately, your desired trademark may not be effective in doing so. If your trademark is a surname, geographical location or descriptive word, it may be denied registration. It’s also worth noting that generic and descriptive trademarks may be more difficult to defend in the long run.
The best way to avoid any of these problems is to create a more unique trademark. KODAK, for instance, was a name created specifically for the camera company. It’s possible for a descriptive trademark to reach acquired distinctiveness over time, but this usually only occurs after significant time and investment.
Even if you encounter no issues in the trademark registration process, you should still expect the process to be drawn out. It can take several months before a trademark attorney at the USPTO ever reviews your application. Between monitoring your registration status and responding to requests for additional information, anyone without assistance has many months ahead of them.
How Long Does It Take to Trademark Something?
After submitting a trademark application, most individuals receive a filing receipt almost immediately. Unfortunately, this quick turnaround time isn’t indicative of the entire process. It typically takes around four months for the application to be assigned to an examining attorney, and the initial response to the registration is usually received soon thereafter. If everything goes smoothly in this stage – meaning the examining attorney had no objections to your application – you’ll receive a notice of publication.
Publication in the Official Gazette begins the 30-day opposition period. Even if your application got through the examining attorney easily, the opposition period can prove more challenging. There are more than 4,000 trademark lawsuits filed in federal courts each year. This shows people are quick to respond to perceived dangers to their trademark.
If no opposition or request to extend the opposition period is received, your trademark will register within four months of the notice of publication. This means that a trademark application with no issues may still take nine months or more. Unfortunately, the following issues can slow things down.
- Examining attorney objections: If an examining attorney doesn’t feel your trademark is registerable as is, or if you made a mistake in your application, they’ll issue a letter (i.e. office action) explaining the issue.
- Your timely response: After receiving an office action, you have six months to respond. If six months passes with no response, your application will abandon.
- Opposition extensions: Anyone who opposes your trademark application can file for multiple extensions. This can add several months to the process.
- Opposition: If a third-party files a notice of opposition, the TTAB will give you a deadline to respond and set discovery and trial dates. Only 3 percent of oppositions make it to the proceedings stage.
- Non-use in commerce: If you’ve never used your trademark in commerce, you’ll have six months to file a statement of use or extension. If you are not ready, you’ll have an opportunity to file up to five 6 months extension requests.
There’s no simple answer for how long it takes to trademark something. A variety of factors can affect your individual outcome. When everything goes perfectly, you could have a registration within nine months. If problems arise, however, the process could take years.
Trademark Office Action
When the examining attorney feels that your trademark cannot be registered, they’ll send you an Office Action. It’s important to remember that this isn’t a final rejection of your application. Any part of your application may be referenced in these actions, and they could stem from something as simple as an error describing your company. Below are the types of office actions you may receive:
- Nonfinal office action: This is the first office action you’ll receive raising legal issues. You’ll need to deal with these problems correctly the first time or you risk having your trademark abandon.
- Final office action: If your response doesn’t satisfy the examiner’s concerns, you’ll receive a final office action. This provides an opportunity to deal with any potential legal issues one last time. Your chances of overcoming an objection after receiving a final office action are very small. If you’re unable to do so, your registration will abandon.
- Examiner’s amendment: Simple issues that arise might be able to be handled over email or phone. An examiner’s amendment simply confirms these changes in writing. This can speed up the registration process.
- Suspension Letter: Letters of suspension are issued when something outside of the examination process must occur for your trademark to be approved. For example, if a prior pending application may block your application. These are reviewed every six months, but you can contact the examiner earlier if you feel an issue has been resolved.
Office actions mean your desired trademark is in danger of not being registered. You generally have six months to respond to office actions, but it’s important to be as timely as possible when doing so. Deadlines can also be shorter in some instances, so make sure to read your office action thoroughly.
Trademark Office Action Response
A trademark office action response is your opportunity to deal with any issues the examining attorney has brought to your attention. You must file your response prior to the stated deadline. Otherwise, your application will be considered abandoned and your application fees will not be refunded.
Some budding entrepreneurs choose to stop seeking registration at this point. They rightfully believe that there are common law protections for certain trademarks. By doing this, however, you are foregoing significant trademark rights.
If you are interested in trademarking something, please feel free to contact us today.