The first step in registering a trademark is to determine whether to apply for the mark on a use basis (if currently being used commercially) or an intent to use basis (reserving the mark for future use).
Regardless of the type of application you file, you will need to determine the types of goods or services you are currently selling in connection with the mark and/or those for which you intend to use it. These are referred to as “classes.”
After determining whether your proposed trademark is for a current or future product/service and which classes you intend to file, you must perform a preliminary search to determine whether the trademark is available. The purpose of this search is to determine if any previously registered mark or applications would act as a significant obstacle to the registration of your mark. If there are conflicts to your desired trademark, you may need to choose another mark. If there are no obvious conflicts, it is advisable to order a full U.S. search from a third party, who will examine trademarks and trade names from a number of databases. This step is important in order to safeguard against any unexpected and complex potential problems.
Assuming that the search reveals there are no serious threats to the registration of your mark, then you should proceed with filing your application with the United States Patent and Trademark Office (“USPTO”). Once reviewed by the USPTO, either the examining attorney will accept your application and publish it for opposition or he or she will file an Office Action, which sets forth the reasons why the examining attorney believes your application should not move forward toward registration as filed.
If all issues have been resolved, the application is published for opposition, which gives the public notice of your application and gives anyone with a potentially conflicting mark the opportunity to file an opposition to the registration of your mark. If no one files an opposition to the registration of the mark within thirty days of its publication, the trademark will advance to registration, or in the case of an application filed on an “intent to use” basis, a Notice of Allowance will be issued, which will direct you to file a Statement of Use that states how you are using the mark commercially within six months of the mailing date of the notice. If you are not yet using the mark within the six-month period, you may apply for an Extension to File a Statement of Use, which will extend the time period for another six months. You may do this for up to five successive extensions of sixth months each. If you have extended for three years and cannot file a Statement of Use, your application will be deemed abandoned, and in order to maintain rights in the mark, you will need to file a new application.
If the publication period passes, and your mark is not opposed (and you have filed the Statement of Use if necessary), you will be granted a mark and issued a Certification of Registration. You now have a registered trademark and can use the ® symbol.
The entire process of registration can take roughly 12-14 months if the application is filed on an “in use” basis, no Office Actions are issued, and no third party files any opposition.