This post is Part 2 of Trademark Basics/Trademark Registration FAQ. Take a look at Part 1 here on selecting a trademark. You may also be interested in Part 3 on "Intent To Use" and Part 4 on "Post Registration."
How does the trademark application process work?
- Develop a list of possible names and discuss this list with your trademark lawyer.
- Your trademark attorney will conduct a trademark search or "knockout" to exclude any existing marks that are identical or confusingly similar and to assist in determination if the proposed mark may be generic or descriptive.
- Determine the scope of your goods and services.
- Prepare and submit an application. It may take four to six months before the USPTO will respond to your application.
- If there are any procedural or substantive changes requested/a refusal issued by the trademark examiner (an Office Action), you will then have six months to respond.
- If the refusal is overcome, or if no refusal issued, the mark will move to publication.
- If the mark is published and no oppositions are filed, the mark will be registered if it was filed as a "Use" application. If it is an "Intent To Use" application, a Notice of Allowance will issue and the mark must be used in interstate commerce within a certain allotted window of time.
What is required to file a federal trademark application?
You must be using your trademark or service mark in interstate commerce (that is outside the borders of a single state) or have an intention to use the mark in interstate commerce before you can apply for a federal trademark with the United States Patent and Trademark Office.
How do I file a state trademark application?
You must be using your trademark or service mark within the state in order to file an application. The Secretary of State or Corporations Section of most state governments handle their state’s trademark registry.
Does filing a federal or state application guarantee a registration?
No. Filing an application does not guarantee that either the United States Patent and Trademark Office (USPTO) or the applicable state will grant you a registration.
Do I have to secure a state or federal trademark registration to own a trademark?
No. Rights in a trademark are obtained only through commercial use of the mark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.
Do I need a lawyer to file a trademark application?
There is no requirement that you use an attorney to file your trademark application.
Why should I use a lawyer to file a trademark application?
A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.