How to obtain federal trademark registration

I am frequently asked how to obtain and maintain federal trademark registration. Here are the steps:

1. Identify several potential trademarks. Try to be creative, and avoid marks that are descriptive of the products or services being sold. Marks that are merely descriptive are not registerable on the principal trademark register of the Patent and Trademark Office (PTO), and they are more difficult to protect and defend.

2. Run a knock out search on all of the potential marks identified. The knockout search should include google searches, and a search of the PTO database. Remember that the PTO will not register trademarks that are confusingly similar to other trademarks registered in the PTO, or which have been previously in use in the United States. Likelihood of confusion extends well beyond identical marks, so the failure to find an identical mark to one of the marks you are considering does not mean the potential mark is acceptable to use.

3. From the marks that make it past the knockout search stage, select the best one. Have a comprehensive search done for the selected mark. Comprehensive searches are a critical step to avoiding infringement on others’ marks, and avoiding refusals to register by the PTO. However, they are also expensive. That’s why knockout searches are done first to limit the field of potential trademarks. Comprehensive searches are not perfect, and there is room for error, but they can significantly reduce the risk of infringement and refusal to register a trademark.

4. File an application for registration. An application may be an “intent to use” application, if the mark is not already in use, but the applicant has a bona fide intent to use the mark, or an “actual use” application, if the mark is already in use in commerce. Applications filed for goods and services must fall into one of the predetermined categories or classes of goods and services. The filing fee is based on the number of classes the goods and services fall under for a particular trademark.

5. Wait for a response from the PTO, and respond to office actions. The PTO will conduct a substantive examination of the trademark application. The examining attorney may determine that the application is fine, and the application will proceed to the next step toward registration. Alternatively, the examining attorney may find some procedural or substantive issues in the application, and issue a formal or informal office action. Office actions require a response within six months of the date on which the office action is issued. If no response is filed, the application will be abandoned by the PTO.

6. The trademark will be published in a government publication called the Official Gazette, after the examining attorney has completed the review process, and all issues raised by the examining attorney in one or more office actions have been resolved. Publication in the Official Gazette puts the world on notice that the trademark will be registered. Anyone who believes that he or she will be damaged by registration of the mark may file an opposition proceeding during the thirty day publication period. If an opposition proceeding is filed, the applicant must respond and work through the opposition proceeding process, which is essentially a mini-litigation or administrative proceeding.

7. Notice of Allowance and registration. After publication, and assuming either an opposition is not filed or any opposition proceeding has been favorably resolved, if the application was an “actual use” application, the trademark will be registered. If the application was an “intent to use” application, the examining attorney will issue a notice of allowance, which triggers a six month period during which the applicant must submit to the PTO evidence of use of the trademark.

8. Declarations of continuous use and incontestibility. Between the fifth and sixth years after registration, the applicant (now registrant) must file a section 8 declaration certifying that the trademark is still in use. If the section 8 declaration is not filed, the PTO will cancel the registration. In addition, during the same time period, the registrant may file a section 15 declaration seeking incontestability of the trademark. If the trademark meets the requirements for a section 15 declaration, the registered mark becomes incontestable, this means that the registration of the mark may not be challenged, except on limited grounds.

9. Renewal of Registration. Between the ninth and tenth years after registration, and between the ninth and tenth years thereafter, a section 8 declaration must be filed to avoid cancellation of the registration by the PTO, and a section 9 declaration must be filed to renew the registration of the trademark.

There is obviously much more to choosing and registering a trademark, but these are the fundamental steps and process.

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