How to Register a Trademark

Registering a trademark can be a time-consuming and confusing process. However, it can greatly benefit your business.

In this guide, we will walk you through the basics of what is entailed in registering a trademark by covering the following topics:

• Understanding the Basics of Trademarks
• What Do you Need to Know Before Filing an Application?
• The Application Process: A Detailed Walk-Through
• What Should You Expect After Submitting Your Application?
• What Will Happen Once Your Trademark Has Been Registered?
• What If You Want to Make Changes to Your Registered Mark?
• Reasons Why You Should Register a Trademark?
• Examples Of When You Should Use a Trademark

Understanding the Basics of Trademarks

What is the USPTO?

The United States Patent and Trademark Office, or USPTO, is a federal agency that oversees the granting of registered trademarks and patents. The USPTO is in charge of receiving and reviewing all applications for trademarks for federal registration and makes decisions as to whether or not the applicant qualifies for and fulfills the requirements for federal registration. The USPTO does not determine whether an applicant has the legal right to use a mark, which is a separate issue from the right to register. A business owner can use any mark used to identify the source of their goods or services, even without registering. When a registration is issued, enforcing the rights of the mark is the responsibility of its owner as established by the framework of ownership of a federal registration.

What differences are there between trademarks, patents, and copyrights?

A trademark is a word, phrase, symbol, logo, or design used to identify one party as the source of their particular goods or services. It serves to distinguish its owner from other parties as a unique and readily recognizable entity. A patent is a property right that exists for a set period of time and is applied to inventions. The USPTO grants patents for inventions in exchange for the invention's public disclosure. A copyright is an exclusive legal right that provides protection to authors of "original works of authorship." Copyrights are applicable to published and unpublished intellectual works that include artistic, literary, musical, and dramatic formats, amongst others.

What are the differences between a trademark and a service mark?

A specific type of trademark called a service mark identifies its owner as a party that distinctly provides services as opposed to goods. Service marks are used to identify services that are provided and performed by their owners. Services are not physical products but activities that are performed by a person or company, in exchange for monetary compensation or not, for the benefit of another person, groups, or other companies. rademarks are used to identify goods made accessible by the trademark's owners. Goods are defined as any physical products or commodities that can be naturally occurring, manufactured, or produced. These goods are sold, distributed, or shipped through interstate commerce.

What Do you Need to Know Before Filing an Application?

The first step in applying for federal registration would be conducting a basic trademark search. A basic trademark search searches the USPTO database for pending, rejected, canceled, abandoned, and registered trademarks. Next, a comprehensive trademark search would be conducted, which includes searching the USPTO database, state and federal databases, and a common law search. InCorp can help you receive a comprehensive trademark search for you and, once completed, a PDF document detailing your results. However, there is no guarantee that the specific mark you wish to register will be approved. The USPTO can make a determination that the mark does not meet the qualifications for federal registration and may reject it.

The Application Process: A Detailed Walk-Through

What does the trademark application process entail?

Step 1 – Filing Your Application

The first step in the trademark application process is filing an application with the USPTO. The date that the USPTO receives your application is the filing date.

Step 2 – USPTO Review and Responding to Office Action Letters

Once your application has been filed, an examining attorney with the USPTO will review your application. Usually, it takes about three months from the filing date until your application is reviewed. When the examining attorney begins to review your application, it may take up to a month for them to determine if federal laws will allow the registration of your trademark. After the USPTO has examined your application, the examining attorney may approve the trademark for publication, allowing the public to dispute the application. If the examining attorney does not approve your mark, they will issue an Office Action letter specifying the reasons why the USPTO may deny the mark for registration.

Step 2(a): In the case of the examining attorney at the USPTO issuing an Office Action letter, in most circumstances, the applicant will have six months to respond to the letter. If the USPTO does issue an Office Action letter, InCorp does not offer legal advice or services and cannot correspond with the USPTO regarding an Office Action letter. Legal representation from an attorney is not required to respond to an Office Action letter. However, having legal counsel when addressing concerns revolving around receiving an Office Action letter is preferred by most applicants. Receiving an Office Action letter usually means that an issue regarding the mark has been recognized by the examining attorney, which may result in the USPTO denying the application.

Step 2(b): If an applicant receives an Office Action letter, and they respond within the appropriate time frame, and provide sufficient counter-responses to the issues addressed by the examining attorney at the USPTO, the mark could be approved for publication.

This is detailed further in Step 3 below. If an applicant fails to respond in a timely manner, their application will be considered "abandoned." At this point, the application process will be concluded, and the USPTO will not federally register the mark. If the applicant does respond within the necessary timeframe but does not provide an adequate counter-argument to the issues identified by the examining attorney, then a final Office Action letter will be sent by the USPTO. The applicant can respond to a final Office Action letter by (1) providing sufficient arguments that overcome the reasons presented by the examining attorney for refusal or (2) making an appeal to the Trademark Trial and Appeal Board within six months of receiving the final Office Action letter.

Step 3 – Publication of a Mark

If an examining attorney at the USPTO determines that your mark is permitted by federal law to be registered, the mark will then be approved for publication in the weekly publication known as the Official Gazette ("OG").

The Official Gazette is the USPTO's official online publication that serves to notify the public that the USPTO is planning to issue a federal registration. Publication in the Official Gazette begins a 30-day time period that allows any party to file an objection (opposition) with the Trademark Trial and Appeal Board regarding a published mark. A party could file an objection within that time frame if they believe it would be harmed or incur damages as a result of a mark being registered. When an objection is filed, the USPTO will take no further actions regarding the mark until the opposition meets a resolution.

Step 4 – Mark Federally Registered

After three months of the mark being published, the USPTO will officially issue the mark a federal registration if no objections are filed.

If any objection was filed during that period and was unsuccessful, the mark's registration will be issued after the Trademark Trial and Appeal Board officially dismisses the objection.

What information is required to be on a trademark application?

Typically, every trademark application will include the following:

Owner Information

This information includes the name and contact info of the party who owns the mark.

Mark Information

This includes specifying the type of mark on the application (i.e., standard characters, special form, or a sound mark). Additionally, any other statements that need to be brought into consideration by the USPTO (for instance, a special disclaimer, a translation, a claim of prior registration, consent of a person, or concurrent use of a claim) must be provided. An example must also be included which depicts the mark.

Goods and Services Information

Every application must identify and detail the goods or services that the mark will be used to identify. This also includes designating each type of class under which these goods and services fall.

*** this area may need correction ***Assigned Filing Basis

There are four different options for selecting a filing basis: Currently using the mark in commerce.

(1a) (must include an example that shows the mark being used in commerce) Not yet using the mark, but there is an intention to use

(1b) A foreign application exists for the same goods or services (44d) A foreign registration exists for the same goods or services (44e)

Signature and Verification

How long does it usually take for a trademark to get registered?

There is no "set amount of time" for a trademark to get registered. However, it's not uncommon for the USPTO to take 12 months from the date you submit the application to the date the USPTO officially registers a trademark; this includes applications where no Office Action letter is issued. In the event that an Office Action letter is issued, this could prolong the registration process by an additional 2-12 months. Additionally, the USPTO will not approve all trademark applications, and there is no guarantee that a registration will be granted when an application is filed.

What Should You Expect After Submitting Your Application?

What is a statement of use?

If the applicant submits an application with an "Intent to Use" basis, and the USPTO approves it, they will send the applicant a "Notice of Allowance." From the date that the Notice of Allowance was mailed, the applicant will have six (6) months to file a "Statement of Use" or request an extension. The "Statement of Use" serves as a way to show the USPTO that the mark is being utilized in commerce in conjunction with all of the goods or services designated within the Notice of Allowance.

After you submit your application, how will it be monitored?

Our trademark service provider can monitor the progress of your application until the entire process has been completed. If the USPTO's examining attorney takes any action (i.e., "Office Action"), the USPTO will directly notify you, and our trademark service provider will also send you a notification. If you have hired an attorney to help you with your USPTO application, the USPTO will only communicate directly with your attorney.

Can your application be amended once it has been filed?

Yes, after you have submitted your application, it can be amended, but only for a limited amount of reasons, such as the following:

• Modifying your listed goods or services in an existing class or the deletion of an existing class.
• Inserting another statement, such as a disclaimer, consent to register a person's name, or a translation into another language.
• Submitting a higher quality image or submitting a drawing that is in compliance with the U.S. drawing requirements.
• Correcting any applicant or entity information, e.g., giving the applicant's country of organization or incorporation.
• Submitting an additional payment for a fee.
• Submission of a signed declaration if you suspect that you did not correctly sign the original declaration.

You may not make amendments such as changing the applicant or holder or the address of the applicant or holder. Amending the mark, even in non-materials ways, is also not allowed.

What Will Happen Once Your Trademark Has Been Registered?

After your trademark has been registered, do you need to do anything?

Yes, once your registration has been issued, in order to keep your registration "alive" and valid, the owner must submit certain documents (such as Section 8 and 9 Declarations) and pay all necessary and regular fees when due. The deadlines for submitting these documents are determined by the registration date, which is indicated on your registration certificate. If you fail to submit these documents on time, your registration will be canceled or expire.

Can my trademark ever expire once it is registered?

Yes, federal trademark registrations that were issued on or after November 16, 1989, will be valid for ten years. Once this timeframe has elapsed, they can be renewed every ten years, according to the filing of Section 8 Declaration and Section 9 Applications for Renewal. Those trademark registrations that were issued or renewed before November 16, 1989, will remain valid for 20 years and then can be renewed every ten years.

What is a certificate of registration?

Once the USPTO has approved a mark for federal registration, they will issue a physical certificate of registration, which is sent via mail to the owner of the mark. At this point, the registered mark's owner will have the legal right to use the (R) symbol next to their newly registered mark. Trademark experts can help you acquire a new certificate of registration from the USPTO under the circumstances that your certificate of registration happens to be misplaced or lost.

What If You Want to Make Changes to Your Registered Mark?

Once you have a registered trademark, can you amend it?

Yes, as an owner of a trademark, you can file a Section 7 request to correct or amend your registration at any point. However, the amendment cannot make material changes to the mark or add additional goods or services. With the exception of an error on behalf of the USPTO, a fee will also be required to be paid for any corrections or amendments you would like to make.

Do you need to amend your trademark if you have changed your goods or services?

Yes, a "Request to Divide Registration" form will need to be submitted in order for the registration to be divided based upon an application according to Section 1 or Section 44 of the Trademark Act if the registration ownership has been modified in regards to some, but not all, of the goods/services. In order for the "Request to Divide Registration" form to be successfully processed, the owner will need to record an assignment with the Assignment Recordation Branch and must also pay a $100 divisional fee for each separate registration being created by the division of the registration. If the "Request to Divide Registration" form is incomplete, an Office Action letter will be issued by the Post-Registration examiner, that will request the missing information. The USPTO will dismiss the request to divide if the trademark owner does not respond within six (6) months.

Can your registered trademark be transferred to someone else?

Yes, as an owner of a registered trademark, you have the right to transfer or assign your trademark to a new owner. It is suggested that the new owner record this transfer/assignment with the USPTO. Then, if desired, the new owner could obtain a new registration certificate but must file a separate request that confirms the USPTO has recorded the transfer/assignment.

Reasons Why You Should Register a Trademark?

If you have recently created a brand that is associated with your specific goods or services, you should consider registering a trademark. Whether you are already using your brand to sell goods or services or plan to in the future, you can still submit an application to receive a registered trademark. If you feel that you have a great business name, logo, or slogan that could help distinguish your company 's goods or services and set you apart from competitors, then applying for a trademark is a good idea.<

The following reasons serve as examples of why you should consider registering a trademark for your business:

• Brand Protection
• Prevents Confusingly Similar Registrations
• Legitimizes Your Brand
• Increases The Selling Value of Your Brand
• You Can File a Lawsuit In Federal Court If Your Brand Is Infringed Upon

Examples Of When You Should Use a Trademark

Trademarks can help protect your brand identity in a number of ways. Suppose you have unique branding that you feel distinctly represents and identifies the goods or services you provide and that this separates you from other businesses. In that case, a trademark can help secure your brand identity. The following examples are some instances where you can use a registered trademark to help safeguard the recognizability and individuality of your business:

• Your Company Has a Catchy or Highly Effective Name
• Your Logo is Very Eye Catching and Creative
• You Created a Unique Sound, Tone, or Jingle Associated with Your Brand
• You Have a Unique Phrase or Slogan Associated with Your Business
• You Use a Distinct Color or Color Scheme That Helps Identify Your Company

Next Step to Register a Trademark

Ready to move forward with a trademark application? Take the first step with the help of InCorp to connect with trademark experts that can guide you through he process.

View Trademark Service