Initial trademark search
The team at Trademark Angel strives to make the trademark registration process as cost- and time-efficient and smooth as possible. For this reason, we offer to conduct a free trademark search for your proposed mark to give you an idea of how registrable your mark is in the country/countries you’d like to file.
We have talked extensively about benefits of doing an initial trademark search in other articles. In short, failing to search for similar marks prior to registration is quite risky and can result in additional business expenses that could have been avoided. For example, we have aided several clients who came to us after starting the process themselves, without conducting a thorough trademark search. These clients had already paid for products or packaging that displayed a mark that ultimately could not be registered as there were registered marks that were too similar to our clients’. These products and/or their packaging then had to be completely re-branded at great expense. This could have easily been avoided by an initial trademark search.
For more information about trademark searches, feel free to check out this article: Why conduct a trademark search?
Preparing your application
If the search results are positive and the mark looks registrable, we can start preparing your trademark application.
To help us prepare your application, we’ll need to know:
- Who the trademark owner will be
- If we are filing for your word mark or your logo (we usually make suggestions during the search)
- What goods and/or services you’d like to include, and
- If you’d like to file under intent to use of your mark or actual use of your mark
Intent to use vs Actual use
If you are already selling your goods or offering your services in the US, you can file for those goods and/or services under “actual use.” To prove your claim of actual use, you will need to provide what is called a specimen – in other words, an unedited photograph – which clearly shows your mark on the goods and/or services or the product packaging. A specimen is required for each class of goods/services you file for. In addition, you will need to provide the date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen.
If you are filing for goods and/or services you plan to sell in the near future, you will file for those goods and/or services under “intent to use.” After your application has received a “Notice of Allowance” (see below), you will be required to file a Statement of Use attesting to the fact that you have started using your mark on all of the goods and/or services listed in your application.
To read what’s required in order to file a trademark application, please check this post: What’s required in order to file a trademark application in the US?
To read more about specimens of use and what specimens are acceptable, please check these posts: What is use in commerce (in the US)?, What is a specimen of use?, When do you need to submit specimens of use?, How do I find an acceptable specimen of use?
The cost to file an application in the US depends on how many classes you would like to include in your application. The government filing fee is $275 per class, and is NOT included in our packages.
Filing your application
Next, your application will be filed with the USPTO and we will email you a confirmation of the filing. At this time, you will also receive a trademark application number. You can check the status of your application at any time on the USPTO website with this application serial number.
Please note, we cannot change the mark that you register for, or the goods listed in your application once you file. For this reason, the goods listed in your application must be an accurate description of your actual products. We will always send you a draft of how your application will be submitted and ask that you approve the draft prior to submission. We ask that you provide us with clarifications regarding your products if the descriptions we list are not accurate.
Approximately three to four months after your application is filed, the application will be assigned to an Examining Attorney at the USPTO. This Examining Attorney will make decisions whether your application can move on to the next step of the process.
If the Examining Attorney finds that changes must be made to your application (for example, the description of your logo must be amended to be more clear, or to clarify certain goods and/or services included in your application), or that your mark is confusingly similar to another prior-filed mark or registered mark, an office action will be issued.
A response to the office action must be filed within 6 months of the date on which the office action has been emailed. The failure to respond to all of the changes required by the Examining Attorney will be considered an “incomplete” response and may jeopardize your application.
To read more about different types of office actions, please check out this article: What are office actions?
After office actions have been responded to and all outstanding issues have been resolved, the Examining Attorney will approve your mark for publication in the Official Gazette. This does not mean that your trademark has registered; rather, your mark will be published for potential third parties to oppose your mark if they believe your mark conflicts with one of their own marks.
Receiving an opposition is quite rare, but if this does occur, we will happily refer you to an attorney with extensive experience in this field.
If no oppositions are filed against your mark within the 30-day publication period, your mark will proceed to the next step in the registration process.
If you filed your application based on an “intent to use,” approximately six weeks after the end of the publication period, your mark will receive a “Notice of Allowance.”
A Notice of Allowance indicates that your mark has been approved to proceed to registration pending the filing of a Statement of Use. The deadline to file this Statement of Use is six months from the mailing date of the Notice of Allowance.
Within this six-month period, you must prove to the USPTO, through the filing of a Statement of Use, that:
- You are using your trademark on all of the goods and/or services listed in your application, and
- Your mark is being used in commerce.
To accomplish this, you must provide:
- Specimens – in other words, unedited photographs – of your product which clearly show the product and your mark on the product or the product packaging. You must provide at least one specimen per class listed in your application.
- The date of your first out-of-state sale if you are a U.S. citizen, or the date of your first sale in the U.S. if you are a non-U.S. citizen. If you listed any services on your application, the relevant date would be the first date you offered those services.
To read more about Statement of Use, please check this article: What is a Statement of Use in a trademark application?
The government fee to file a Statement of Use is $100 per class, per mark. In addition, if, for any reasons, you cannot file a Statement of Use within the six-month period following the issuance of the Notice of Allowance, you mus