Selecting and Protecting a Trademark – Step by Step

A strong trademark is essential to the identification and public perception of your brand. Trademarks connect your company’s identity with the products and services you offer. While you can use a trademark without registering it, that is not recommended. The relatively low time and cost involved in clearing and registering your trademarks is well worth the legal protections you receive. Follow this step-by-step guide to learn how to select a trademark and secure valuable rights to your trademark through registration with the US Patent and Trademark Office (USPTO).

Step 1: Choose your mark.

You may already know what mark you want to register, but is it a good choice? Your trademarks (which may include brand names, slogans, and logos) identify the source of your products and services. In choosing a mark, you should evaluate whether the mark is likely to be registrable and assess the “strength” of your mark, which is its ability to hold up in a legal dispute.

Step 2: Identify your mark format, as well as your goods and services.

Because your trademark relates to specific goods and services, you must clearly identify those exact goods and services in your trademark application. Identifying the precise goods and/or services with which your mark will be used is an important step in proper trademark strategy. Your mark format is how your trademark appears or will appear in relation to your brand’s offerings. The manner in which your mark appears will dictate whether to seek protection for standard characters, a stylized mark or design, or both. For businesses that have a brand name and a logo, it is good practice to seek to protect both the literal and the design elements of the brand.

Step 3: Perform a trademark search.

It’s critical that a trademark search be conducted before filing a trademark application. A trademark search helps give you an understanding of the landscape relative to the use of identical or similar marks that already exist in the marketplace. Through a trademark search, you might discover someone already claiming rights to a mark that is identical or confusingly similar to yours. If an identical or confusingly similar mark is being used in association with related goods or services, you may need to rethink your choice of trademark. It is difficult (and often impossible) to secure a federal trademark registration for a mark that is similar to an existing registration in the USPTO trademark database.

Step 4: Know your basis for filing.

You have two choices for your filing basis. If you’ve already been using the mark you intend to register, you should file your application on an “actual use in commerce” basis. If you haven’t yet used the mark but you intend to use it in the future, you should file on an “intent to use in commerce” basis. It is almost always a sound approach legally to file your trademark application as early as possible, so filing on an “intent to use” basis is usually a good option.  Be aware, however, that when you file on an “intent to use” basis, you must pay an additional fee later down the road when you submit proof of actual use in commerce.

Step 5: Organize the information for your application.

The key details of your application include the name and address of the mark’s owner, a description of the mark, first use dates (if any), and (as mentioned above) a clear description of your goods and/or services. There are filing fees and (assuming you’re using a lawyer to file your application) legal fees that must be paid.  Most applications are filed online through the Trademark Electronic Application System. After filing, make sure your contact information is kept up to date so your attorney and the USPTO can communicate with you regarding any changes, updates, or requests.

Step 6: Expect communications from your examining attorney.

US trademark examiners are called “examining attorneys”. Assuming you’ve met the minimum filing requirements, the USPTO will assign an examining attorney to your application. The examining attorney will review your application to check for a wide range of issues, including conflicts with applicable rules, statutes, and existing marks. You or your trademark lawyer may need to correspond with the examining attorney if he or she determines there is a need for minor corrections to your application, or altogether refuses your application.

Step 7: Receive your response.

The process of filing, communicating with an examining attorney, and receiving a response can take 5-6 months or longer. In certain situations the examining attorney will issue a refusal along with an explanation of the reasons for the refusal. If there are no objections, the USPTO will list your mark in an official publication to make it known that you’ve been approved by the examining attorney. This is known as the “publication” phase, and it gives anyone in the public an opportunity to file an opposition to your application if they believe they will be harmed by the registration of your mark. Assuming your mark survives the publication phase, your trademark will register. Trademarks stay registered as long as you keep up with the required maintenance documents.

The USPTO recommends hiring a trademark attorney to help you through the application process. Contact The Law Office of Chris Clark, PLLC for reliable assistance with your intellectual property concerns. We would be happy to walk you through the registration process, answer your questions, conduct your trademark searches, and prepare and file your trademark applications.

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