The Trademark Process
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The first step in the trademark process is to select a distinctive trademark that is capable of strong trademark protection. Once you have selected a suitable trademark, it is critical to make sure that the mark is available for use. If another company is already using a similar mark, you may be committing trademark infringement if you start using your selected mark. A trademark search attempts to identify any similar marks being used for the same or related goods/services, in a manner that may lead to consumer confusion. A simple search for exactly the mark verbatim is not good enough. You need to make sure that similar names, names with unusual spellings, and even misspelled words are all included. This is a difficult task, and it is often well worth the expense to have an attorney conduct the search.
Once you have started the application process, you will need to fill out a questionnaire that will help us gather all the necessary information needed to prepare the application. You can find the Questionnaire here.
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After the application is submitted, it is assigned a serial number and a trademark examining attorney. The examining attorney will review your application to make sure it meets all the legal requirements and that your trademark is registrable. As part of this review, the USPTO will search their database of registered and pending trademarks to determine whether your trademark conflicts with any of them. They will also research whether your trademark has any meaning in your particular industry, review your identification of goods or services, and ensure the application complied with the filing basis requirements. If the examining attorney determines your application meets all the legal requirements for registration on the Principal Register and there are no substantive issues, such as no conflicting trademarks in our database, the examining attorney will approve your trademark for publication.
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If the examining attorney determines the trademark isn’t registrable, the examining attorney will issue an office action. This official letter explains why registration is being refused and includes any suggestions for fixing the application, if available. We must respond to the office action and correct the problems listed within the letter by the stated deadline. If our response corrects all the problems, the examining attorney will approve your trademark for publication.
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After the trademark is approved for publication, the trademark is published in the USPTO’s weekly online Trademark Official Gazette. The trademark hasn’t yet registered. Publication begins a 30-day period during which any member of the public who thinks they’ll be harmed by the registration of your trademark may oppose it. They may file a Notice of Opposition. If no one opposes your trademark during the publication period, the application proceeds to the next stage of the registration process. It still hasn’t registered. It can take three to four months from the time your trademark publishes to when we receive official notification that the trademark has either registered or moved to the next stage.
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If your application is based on an intent to use the trademark in commerce, your trademark will not register after the publication stage. Instead, the USPTO will issue a Notice of Allowance, which means you must submit a Statement of Use (SOU) by the deadline. An SOU must include a specimen showing how you use your trademark in commerce. Once we submit an acceptable SOU, your trademark will register. Learn more about what we need to file a correct SOU here.
If your application is based on use in commerce, then your trademark will register after the Notice of Publication.
Once the trademark is registered, the USPTO will update their system with the registration information. In addition, the USPTO will send out electronic registration certificates for you to keep for your records.
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You must do these things to maintain your registration:
•Continue to use your trademark in interstate commerce.
•File your registration maintenance documents with us, and pay the required fees, at the required times.
•Keep your correspondence information updated.
If you don’t continue using your trademark in interstate commerce, you won’t be able to file the required documents to keep your registration alive.
We will keep you up to date on the status of your trademark and give you notice ahead of time when these fees are due. You can see the maintenance fees and their descriptions here.
What is a Trademark?
A trademark is most commonly either a company name (e.g., MICROSOFT® Corporation), or a product name (e.g., RAZOR® scooters). The mark enables consumers to recognize the source of the goods and/or services that they purchase, and refer friends to the same company. If a consumer buys a RAZOR® scooter and is happy with the purchase, he or she can tell others to buy a RAZOR®, as well as return to buy more themselves. Nobody else can use the name RAZOR®, or any other mark that is close enough to cause “consumer confusion” as to the source of the goods.
The most valuable asset owned by your company is invisible. If you haven't taken the necessary steps to protect the asset, you can easily lose it, or worse, be sued for infringing the rights of others. That asset is your Trademark. True, the mark may have little value when it is first introduced to consumers, but after even a few short years of use in commerce, the value of the mark becomes incalculable. It embodies the very heart and soul of the company. Over time, patents expire, new products come and go, even owners and executives may change, but the value of the mark just grows and grows, as long as the company takes care of its customers.
Why Get a Trademark?
Trademark FAQs
How much does a trademark application cost?
We charge $1250 for a trademark application which includes a clearance search as well as the government filing fee for one class. If you are filing in multiple classes, there is an additional $350 for each class.
Do I need to have the trademark search done?
We highly recommend doing a trademark search for all applications which is why we include it in our standard application package.
What is the difference between an "in use" and an "intent to use" application?
An “in use” trademark application means that the mark is currently being used in commerce. To file an “in use” application, we will need a photo of the mark in use on the goods or services as well as the first date of use.
An “intent to use” trademark application means that the mark is not being used in commerce. This is the most common application we file, but it is important to note that you will have to eventually show proof of use in order for the mark to be registered.
Are there additional fees?
Yes, the initial application fee only covers the search and filing of the application and does not include any future fees such as maintenance fees, fees to file the Statement of Use, etc.
Please click here for additional information on Trademark Maintenance fees.
What is the Statement of Use?
The Statement of Use (SOU) is one of the final steps before registration. This is when you must prove that you are using the mark in commerce by providing photo evidence. For detailed information on the Statement of Use and what is needed to file, please click here.