The Trademark Process

As we said previously, many different items can function as trademarks, such as names, logos, color schemes and product designs. When we go to file the trademark application, we must describe the goods or services offered under that trademark. The trademark statute has 45 classes of goods and services, and we must figure out what class your mark belongs in.

Thus the first step is to figure out your business model and finances and determine the most appropriate type of registrations. You may want to register only the words in your logo or only the logo itself - or both. You may want to claim a color. Or not.

Then you must determine if the proposed trademark is likely registrable (ie not too generic or otherwise unregistrable) and, if so, perform a preliminary, general internet search and search of the federal and/or state trademark database to make sure it doesn’t infringe an existing mark. Similar or identical marks can be used simultaneously in different classes (think DOMINO’S sugar and DOMINO’S pizza; SMITHFIELD’S CHICKEN ’N' BARBECUE restaurant and SMITHFIELD FOODS pork producer or DOVE shampoo and DOVE chocolate). If your proposed use would fall into more than one class, additional filing fees will be required and collected in advance. We can usually identify this issue up front.

If there appear to be many similar marks in similar classes, we will suggest that you purchase a more detailed search of the trademark database from a third-party vendor that will show identical and similar federal registrations, state registrations in all 50 states, common-law uses (Dun and Bradstreet, phone books, yellow pages, online databases, etc.) and domain name/internet uses. This search is not required, but is considered the best practice. It protects a trademark adopter from unknowingly adopting a pre-existing trademark and protects him from a finding of bad faith (which in turn would force you to forfeit profits earned from using the infringing mark and pay the other side’s attorney’s fees). We recommend the full, 50-state search even if you are going to register in one or more states, just so we have the full picture of the legal liability.

Once you are satisfied with the registrability of the proposed trademark, you file a trademark application electronically with the US Patent and Trademark Office. The application requires a filing fee of up to $350 per trademark per class. You can file with examples of how you are using the trademark in commerce, or for a federal application, you can state that you intend to use the trademark, but aren’t using it yet. This is called an intent-to-use application.

Federal applications can take well over a year to be approved. After they are submitted, it can take 3-6 months before a trademark examiner reviews the application. The examiner will either approve the application, or send an “office action” that is a preliminary rejection of the application. Office actions can be routine technical matters, or more substantive legal denials. If an office action is sent, we will have six months to respond. Once the application is approved, the proposed mark is published in the Official Gazette. Owners of pre-existing trademarks have 30 days to oppose the registration of the proposed mark on the grounds that it is likely to cause confusion with their pre-existing mark. Once the opposition period ends, the mark will be registered.

If you filed on an intent-to-use basis, you will have 6 months after publication in the Official Gazette to file an affidavit proving you have begun using the trademark in commerce, or you can file a request to extend the time. You can file up to five extension requests if you are in R&D, working on marketing or distribution or otherwise not selling goods or services under the trademark application.