MEMO
To: Client
From: MasurLaw
Re: The Trademark Application Process
This guide is meant to give you a
better understanding of the process and costs involved in obtaining a
registered mark with the United States Patent and Trademark Office
(“USPTO”). You may not rely on it as
legal advice. A lawyer is needed to
improve your chances of obtaining a registered mark.
The first step in applying for your
proposed mark is determining whether to apply for the mark on a use basis (currently being used
commercially) or on an intent to use
basis (reserving a trademark for future use). While the search and
application process is largely the same for both categories, the distinction
will be important when filing the actual trademark application.
For all marks, 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. The USPTO groups the types of goods or
services into a variety of “classes”. Currently, there are 45 established International
Classes and an application must be categorized according to class. One of our attorneys will work with you to
carefully and affordably craft your application to make sure that you register
in the classes, which offer the broadest protection. When your goods or
services do not fit precisely within one International Class, we will work with
you to help determine the appropriate classes and optimize the description of
your goods and services to sufficiently protect your mark.
After determining whether your proposed trademark is
for a current or future product/service and in which classes you intend to
file, the next step is for MasurLaw to perform a preliminary search to
determine whether the trademark is available. This search will be conducted by
one of our attorneys, at their standard hourly rate. A typical preliminary trademark search
generally takes about an hour or two (per mark) to perform. Its purpose 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 significant conflicts
with your desired trademark, we will advise you on the likelihood of your
success, should you choose to proceed, and we will provide guidance on how to
best approach the filing. In some circumstances, we may suggest that you choose
another mark. If there are no obvious conflicts, we might deem it advisable to
order a full U.S. search from a third party provider, Thomson CompuMark. This
comprehensive search examines trademarks and trade names from a number of
databases. We have found that obtaining a comprehensive search is particularly
effective in identifying unexpected and complex potential conflicts. The cost
of the full U.S. Thomson CompuMark search is $570 (searches with an
international scope costs more depending on the territories searched) and takes
approximately one week to receive the results report. The report must be
reviewed and analyzed by our attorneys and, depending on the results of the
report, the review and analysis can take several hours to complete.
Assuming that the search reveals no previously used third party marks or applications that we feel would pose a serious threat to the registration of your chosen mark, or that you have decided to pursue the mark despite potential obstacles, we will proceed with filing your application with the USPTO. The application fee for each class for each mark is $325. Once filed, it takes roughly four to six months for the USPTO to assign your application to an examining attorney for review. Once reviewed, one of two things will happen: either the examining attorney will accept your application and publish your trademark for opposition, or he or she will file an “Office Action.”
An Office Action sets forth the reasons why the examining attorney believes your application should not move toward registration as filed. Depending upon the reasons given, the Office Action may include the examining attorney’s suggestions as to how the application should be amended or corrected to allow registration. Common reasons given by examining attorneys for their refusal to register a mark as set forth in the application are that there is a pre-existing mark with which your mark might be confused (e.g., “BURGER QUEEN” could be confused with “BURGER KING”), the mark itself is descriptive of the goods or services offered (e.g., “COMFORTABLE SHOES” for footwear), or that the description of the goods and services needs to be adjusted in some way to narrow its scope.
There are two types of Office Actions: non-final and final. A non-final office action raises new issues and usually is the first phase of the examination process. Trademark examiners are notoriously inconsistent in their responses to applications and may file Office Actions for unexpected reasons; similarly, in some cases, expected obstacles to registration are not cited by the examining attorney. An examining attorney will issue a non-final office action after reviewing the application for the first time. This allows you to amend the application and/or make arguments for why your application should be registered. We will draft responses to Office Actions on your behalf. Many times this is as simple as revising the description of the goods and services for which you have applied or clarifying the application for the examining attorney. In other cases, particularly when you have proceeded knowing that a likely conflict exists, a strong legal argument must be made distinguishing your mark from the potentially conflicting mark. If a non-final Office Action is filed against your proposed mark, you are eligible to respond within six (6) months of the mailing date of the Office Action.
If a new issue arises after the applicant responds to the first non-final Office Action, or the examining attorney is not satisfied that the response appropriately addresses the issues raised in the first Office Action, the examining attorney will issue another non-final Office Action that sets forth the new issue(s) and continues any issues that remain outstanding.
A final Office Action is the last Office Action that an examining attorney issues. It makes “final” any outstanding issues. An applicant’s only responses to a final office action are a) to comply with the requirements or b) to appeal to the Trademark Trial and Appeal Board.
Once all issues have been resolved, the application is “published for opposition” in the Trademark Gazette. This is how the USPTO 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. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, a USPTO administrative tribunal. Ultimately, many opposing parties settle over a disputed trademark use. Should anyone oppose your trademark at this stage, we will counsel you on your options, which include, among other things, working out a settlement with the opposing party. 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.
If you have filed on an “intent-to-use” basis, prior to registration, the Office will issue a Notice of Allowance directing you to file a Statement of Use ($100 per class) 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 ($150 per class), which will extend the time period by another six months. You may file for up to five successive extensions of six months each, giving a maximum time period from the date of the Notice of Allowance to the filing of a Statement of Use of three years. If you have extended for three years and cannot file a Statement of Use, your application will be deemed abandoned. In order to maintain rights in the mark, you will need to file a new application, which will be examined in full again from the start of the process, and you will lose the original “priority date” of filing. This means that if a third party filed an application for a conflicting mark between your original filing date and the date of your new application, the third party would have superior rights. At the appropriate time after the issuance of a Notice of Allowance, we will help you make the filings to complete the registration of the mark or reapply if necessary.
If the publication period passes, your mark is not opposed (and you have filed the Statement of Use if necessary), you will be granted a registration in the mark and issued a Certificate of Registration. You now have a registered trademark and can use the ® symbol. Congratulations!
Now that
you have a registered trademark, you should maintain its strength by continuing
to use it in commerce (i.e. selling goods or services using the registered
mark), taking appropriate actions to prevent unauthorized use of your mark by
third parties, and making the appropriate filings to keep your registration in
force. Between the fifth and sixth year
after the date of registration, you must file a Declaration of Use and Incontestability ($300 per class). This
declaration is a sworn statement by the owner of the mark averring that the
mark has been continually in use since registration. The Declaration may be
filed one year prior to the filing due date or during the 6-month grace period immediately
after the filing due date. Between the
ninth and tenth year after the date of registration, and every 10 years
thereafter, you must file a Declaration
of Use and Renewal ($500 per class), again stating that the mark is still
in use, and renewing the registration for another 10 years.
The entire process of registration,
from application to issuance of a Certificate of Registration can take roughly
12-14 months if the application is made on a use basis, no Office Actions are
issued, and no third party files any opposition. If the application is filed on
an intent-to-use basis or there are any hurdles to overcome in the process,
registration may take several years. Prior to the formal registration of the
mark, you should use the “™” symbol in conjunction with the mark to put third
parties on notice that you are claiming trademark rights in the mark.
While registering a trademark can be
complicated and filled with surprises for some, MasurLaw has over 15 years of
experience in successfully registering trademarks, and can smoothly guide you
throughout the process both in the United States and internationally. If you
have any further questions regarding the trademark process, please do not
hesitate to contact us at (212) 931-8220.
