Step 1: Determine If Trademark Protection Is What You Need
- There are subtle differences between trademarks, patents, copyrights, domain names, and business name registrations, so the first step is to figure out if a trademark is the right protection for your situation. Essentially, a trademark protects a brand’s name and logo that is used on goods and services. The goal of a trademark is to correctly identify the source of a good or service to prevent consumer confusion. A patent, on the other hand, protects an invention, and a copyright protects original works. If you still think that a trademark is what you need, move on to step 2.
Step 2: Identify Which Mark You Need To Apply For
- Before filing your trademark application, you will need to determine whether the mark you want to register is registrable, and how difficult it will be to protect your mark based on the strength of the mark that you select. If you decide that it will be worth it to have trademark protection, you will need to identify which mark you will need to apply for. There are several different marks, but some include:
Word Mark: A distinct, text-only typographic display of the name of a company, institution, or product. This mark is always registered in standard typeface, which means that you will have to apply for a figurative mark if there’s a specific logo that you would like to protect
Figurative/Design Mark: A mark that consists of a figure or a figure combined with a word. This includes a specific font in black or white colors. If you are looking to protect a logo, this is the mark for you. An image must be submitted within the application showing the design that you would like to protect.
Color Mark: If you are looking to apply for a certain color for your trademark, you must make that clear in your application. For instance, if you are looking to protect a logo with specific colors, you will want to apply for a color mark. In order to do this, you must provide a short description of the colors in words (i.e. this mark is in blue, green, and yellow). The protection from this mark is only guaranteed for the colors stated in the application, so if you would like to protect more colors, a new application must be submitted to the USPTO.
Three-Dimensional/Shape Mark: A product or packaging that has a particular shape may be suitable for a three-dimensional mark. This could include a liquor bottle, or unique packaging that is non-obvious. In order for the mark to be approved, the shape must be distinctly different from what is “common” on the market. For this mark, you will need to include a drawing that clearly depicts the shape.
Sound Mark: A sound that is specific to your brand may be protected by a sound mark. This includes a sound or melody that is recognizable by the average consumer. In order to be protected, the sound must be reproducible graphically (i.e. using notes). An example of a sound mark would be NBC’s distinct chime.
Scent/Olfactory Mark: A mark that protects a distinctive scent. For this mark, you must submit substantial proof of distinctiveness and offer a sample of the scent.
Motion Mark: A mark that protects a motion. This mark includes moving images, which can combine colors, sounds, and product designs. For example, the Lamborghini scissor doors would be an obtainable mark.
Taste/Gustatory Mark: A less used mark that protects a specific taste of a product/brand. This mark requires that the taste me represented graphically (which is difficult to distinguish differences by). Typically, brands will protect the taste of their product as ‘trade secrets’ and not through trademarks.
Touch/Tactile Mark: Though rarely used, a touch mark protects the way that a product or packaging feels to consumers that may distinguish it from a competitor.
Step 3: Figure Out What the Basis Is For Filing a Trademark Application
- There are several types of applications for trademarks and it’s very important that you understand the differences between them and what you will need in order to receive the protection that you’re looking for:
Use-based Application: This is filed if you are looking for protection/using the mark in U.S. commerce specifically
Intent-To-Use Application: This is filed if you have intent to use the mark in the U.S. in the future, but the mark will not be fully registered until you can prove use (i.e. start selling the product within the U.S.)
Section 44 Application: This may be filed if you are a foreign citizen who has intention to use the mark in U.S. commerce and has applied to register, or has registered in your country of origin
Section 66 Application: This may be filed via the Madrid Protocol and it is an extension of protection from the International Registration with the World Intellectual Property Organization – thus, this type of mark is not filed with the USPTO.
Step 4: Prepare and Submit Your Trademark Application
- Once you understand what type of mark you should be applying for and what basis the application will be, the next step is to submit your application. You can file the application online through the USPTO’s Trademark Electronic Application System (which will involve a non-refundable processing fee).
- Once you’ve applied, you can monitor the status of your mark through the USPTO’s Trademark Status and Document Retrieval System (TSDR). You should check the status of your mark every 3-4 months after the initial filing of the application (to avoid missing a filing date).
- Make sure that you update your correspondence address (including email address) in order to enable to USPTO to continue the process.
Step 5: Work with the Assigned USPTO Examining Attorney
- After you submit your application to the USPTO, they will review the application to determine that you’ve met the minimum filing requirements. Once they decide that you have, an application serial number will be assigned to your application and it will be forward to an examining attorney (this process will take a few months at least). The examining attorney then reviews the application to make sure that it complies with all rules and regulations, and that the proper fee has been paid. This search will also include a conflict search to ensure that there is no infringement by accepting your mark.
- If the examining attorney decides the mark should be registered, they will publish the mark. If the examining attorney decides the mark should not be registered, they will issue a letter (Office Action) that explains any reasons for refusal, or technical/procedural issues with the application.
- If you are issued an Office Action, you must respond to the action within six months of the mailing date, or your mark will be declared abandoned.
Step 6: Receive the Final Judgment of Your Application
- If the examining attorney decides that your mark should be accepted, it will be published in the USPTO’s weekly “Official Gazette.” Anyone who believes that they will be damaged in some way by the registration of the mark then has 30 days from the publication date to file an opposition to registration, or a request to extend the time to oppose. If this happens, the case will be brought before a Trademark Trial and Appeal Board (TTAB) and they will decide if the mark should be published or not. If no opposition is filed (or the opposition is unsuccessful), then the application enters the next stage of registration. You can monitor the status of your mark using the TSDR.
- If the mark is published and there are no issues with opposition, then you will be issued a notice of allowance about eight weeks after the date of publication. A notice of allowance is a written notification from the USPTO that your mark has survived the opposition period, but this does not mean that your trademark has been registered, but it is instead another step in the registration process. You then have six months from the date of the issuance of the notice of allowance to either: use the mark in U.S. commerce and submit a statement of use, or request a six-month extension of time to file a statement of use.
Step 7: USPTO Reviews Your Statement of Use
- As mentioned above, once you have received a notice of allowance from the USPTO, you will need to issue a Statement of Use (SOU). The SOU must meet minimum filing requirements before an examining attorney reviews it. If the SOU meets the minimum requirements, then the examining attorney will determine if it is acceptable to permit registration for your mark. If they determine that the mark SOU has some issues that would prevent registration, the examining attorney will issue another Office Action describing what must be done in order for the mark to be registered. This is similar to the Office Action process above in Step 5, except if the issues are resolved, then the USPTO will issue a registration within approximately two months. If issues are not resolved, then the mark will be deemed abandoned.
Step 8: Maintain and Protect Your Trademark
- Within two months after your SOU is approved, the USPTO will issue a registration. In order to keep your registration ‘live,’ you will need to file various maintenance documents. Failure to keep up-to-date with these maintenance documents will result in a cancellation or expiration of the registration. If this happens, all you can do is file a new trademark, starting the process from the very beginning.
- Be sure to continually monitor your registration on an annual basis with the TSDR system. This is specifically important between the fifth and sixth year as well as between the ninth and tenth year after the registration date.
- Also be sure to update your correspondence address if there are any changes to your owner address or email address.
- Protection of your trademark lies solely on your shoulders. If there are any other parties that you think have infringed on a trademark, it’s best to talk to a trademark lawyer to figure out your best steps and if legal action will be the most pertinent move.