- One of your trademarks can’t be registered by itself due to competing trademarks, or
- Your trademark is descriptive and thus cannot be registered by itself
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Submit your question with your emailTo open in a new tab, click: Classification of Goods and Services in a Trademark Application (class headings)
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Submit your question with your emailSTEP 1
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?STEP 2
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:STEP 3
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.STEP 4
Examination 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. Office action? 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?STEP 5
Publication 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.STEP 6
Allowance 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:STEP 7
Registration If you filed your application based on “actual use,” and your mark has not been opposed by any parties, you will receive a registration certificate with a new registration number for your mark approximately six weeks after the end of the opposition period. If you filed your application based on “intent to use,” and you have filed a Statement of Use, and that Statement of Use has been accepted by the USPTO, your mark will proceed to registration. A registration certificate, with a new registration number for your mark, will issue approximately four to eight weeks after your Statement of Use has been accepted. The whole process takes 8 months to over 2 years! Best scenario – 8 months Worse scenario – 2 years or longer Now that your trademark is registered, you can put registered mark symbol ®. Please check these posts and cartoons about proper use of a registered trademark: When and how can I use my trademark symbols? and How not to invalidate your trademark: proper trademark usage rulesSTEP 8
Post-Registration Maintenance After your mark has been registered, you must “maintain” your mark to keep it active. Other than continuing to use your mark on all of the goods listed in your application, you must also file a Section 8 declaration between the 5th and 6th year after your mark has registered. You may want to also consider filing a Section 15 declaration at this time, although it is not required. Finally, you must file another Section 9 declaration to renew your trademark between the 9th and 10th years after your mark has been registered. To read more about Section 8 and Section 15 declarations, please check out this article: What is a Section 8 Affidavit of Use? It is important to use your trademark properly in order not to invalidate it. Please check these posts and cartoons on the topic: How do I lose my trademark protection? Fees The government filing fee to file a Section 8 declaration is $325 per class. The government filing fee to file a Section 15 declaration is $250 per class. The government fee to file a Section 9 renewal declaration is $325 per class.Conclusion
As the trademark registration process in the U.S. can take over a year, we strongly suggest that you consider filing for your mark sooner rather than later. There have been instances where a client has waited to file for a mark until it was in “actual use,” and during that time, a competitor had filed for a similar mark. This forced our client to file for a different mark and to order new packaging reflecting this new mark. For more information about registering your trademark, please take a look around our site, particularly the FAQ section. If you’re ready to file for your mark and begin the trademarking process, we are available via chat and email and look forward to working with you to protect your brand. Updated on Dec 30, 2024To open in a new tab, click: Steps to US trademark registration
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Submit your question with your emailTrademark Angel is a trademark registration firm with over 23 years of experience. We handle Canadian, US and International trademark requests.
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